Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This Office Action in in response to the amendment filed 05/18/2026. In the instant Amendment, claim 8 was amended; claims 10-20 are new; claims 1, 8 and 9 are independent claims. Claims 1-20 are pending in this application. THIS ACTION IS MADE FINAL.
Response to Arguments
The claim interpretation under 35 U.S.C. 112(f) has been maintained.
The 35 U.S.C. 112(b) rejection regarding claim 8 has been withdrawn as per claim amendment filed on 05/18/2026.
Applicant’s arguments filed 05/18/2026 have been fully considered but they are not persuasive.
Applicant argues on (pages 10-13): that Weber and Clark do not individually disclose every claimed limitation.
The Examiner respectfully disagrees with the applicant. The rejection, however, relies on their combined teachings. References may not be attacked individually where the rejection is based on a combination. See In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck & Co., 800 F. 2d 1091, 1097 (Fed. Cir. 1986). Weber supplies the NFT-based data -management (Weber, [0010]), off-chain storage (Weber, [0060], and authorization architecture (Weber, [0047]) , (Also see Non-Final Rejection on 12/17/2025 on pages 7-9). Clark supplies cryptographic verification of NFT associated off-chain information (See Clark, [0023] & [0055]) (Also see Non-Final Rejection on 12/17/2025 on pages 7-9). A person of ordinary skill in the art would have applied Clark’s known verification technique to Weber’s off-chain datasets to detect alteration before granting access. Applying a known technique to improve a similar system in the same predictable manner is obvious under KSR International Co. v. Teleflex, 550 U.S. 398, 417 (2007).
Applicant argues on (pages 10-13): that the references must be physically combined exactly as illustrated is not persuasive.
The Examiner respectfully disagrees with the applicant. The inquiry is what their combined teachings would have suggested, not whether one reference can be bodily incorporated into another. See In re Keller, 642 F.2d at 425.
Applicant argues on (pages 10-13): that Weber merely teaches storing data on-chain or off-chain and does not teach that a public dataset is “included in” an NFT.
The Examiner respectfully disagrees with the applicant. This argument is not persuasive under the broadest reasonable interpretation of “including.” During examination, claims terms are given their broadest reasonable interpretation consistent with the specification and the understanding of a person of ordinary skill in the art.
Weber discloses in [0060], [0040] that a data NFT associated with a data source and containing information by which the associated data is identified, represented, located or accessed (See Non-Final Rejection on 12/17/2025 on pages 7-9).
Thus, Weber discloses an NFT that includes data or information corresponding to the associated dataset, at least in the form of metadata (Weber, [0035]), an identifier (Weber, [0035]), an address (Weber, [0035]), or other representation of that dataset (Weber, [0035]) (See Non-Final Rejection on 12/17/2025 on pages 7-9).
Claim 1 does not expressly require that every byte of the public dataset be embedded directly in the on-chain token data structure. Nor does claim 1 exclude inclusion through a reference, identifier, address, or metadata corresponding to the dataset. Applicant has not identified a definition in the specification that limits “including” to physical incorporation of the complete dataset into the NFT.
Applicant’s statement that off-chain metadata “cannot be part of an NFT” is also conclusory.
Applicant argues on (pages 10-13): that Weber’s “metadata reflecting the actual asset represented by the NFT” does not disclose a fingerprint corresponding to a private dataset.
In response, the Examiner respectfully disagrees with the applicant because Weber teaches a hash (Weber, [0033], [0005]), identifier (Weber, [0035]), content address (Weber, [0035]), or integrity-verification (Weber, [0053]). Clark teaches the use of a certified hash (Clark, [0024]-[0025]) or corresponding signature to verify the authenticity or integrity of information associated with an NFT (Clark, [0031], [0053]).
A cryptographic hash, content identifier or the equivalent value generated from a dataset reasonably constitutes a “fingerprint” because it is a value corresponding to the dataset and usable to verify the dataset.
Clark’s disclosure is not limited to verifying the NFT merely as an abstract token; it teaches comparing stored and generated cryptographic information associated with the token and it’s off-chain information (See Non-Final Rejection on 12/17/2025 on pages 7-9, specifically paragraphs [0031], [0051] and [0053]). It would have been obvious to use Clark’s hash-based verification technique with Weber’s private or access-controlled datasets because doing so would predictably permit verification that retrieved off-chain data corresponds to the data identified by the NFT and has not been altered. The combination applies a known integrity-verification technique to Weber’s known NFT controlled data-management system for predicted results.
Applicant argues on (pages 10-13): that Weber’s data NFTs and access-management teaches do not disclose authorization information identifying at least one member authorized to access a private dataset.
Weber discloses in [0053], data NFTs associated with data sources and [0012] granting or management of access to those sources. Access Management necessarily or expressly employs information specifying which account [0095], user [0090], wallet [0049] or permission information is “authorization information indicative of at least one authorized member [0047], [0053].” (See Non-Final Rejection on 12/17/2025 on pages 7-9). Claim 1 does not require a particular authorization table format or require the member’s human-readable identity to be stored directly on-chain.
Applicant’s distinction between access to a data source and access to a private dataset associated with a digital asset
The Examiner respectfully disagrees with the applicant because this argument is not persuasive because Weber’s controlled data source is the dataset associated with the data NFT (See Non-Final Rejection on 12/17/2025 on pages 7-9).
Applicant argues on (pages 10-13): that Weber does not distinguish which data is on-chain and which data is off-chain and therefore does not disclose a respective private dataset stored in an off-chain storage unit.
The Examiner disagrees with the applicant. Weber teaches that data associated with a data NFT may be stored off-chain (See Non-Final Rejection on 12/17/2025 on pages 7-9). Weber discloses the process of storing off-chain in paragraph [0060].
When a plurality of private datasets is stored in one or more off-chain repositories and each dataset is individually identified or associated with its corresponding data NFT, each repository storing a particular dataset satisfies the recited “respective” relationship. The claim does not require a physically dedicated storage appliance for each private dataset unless the term “each off-chain storage unit” is defined more narrowly in the specification. A logical storage location, database, object-store container, partition, node or addressable repository may constitute a storage unit under the broadest reasonable interpretation.
Applicant argues on (pages 10-13): that Clark only verifies authenticity of an NFT and does not teach check compliance of a private dataset against a fingerprint stored in the NFT.
The Examiner respectfully disagrees with the applicant. Clark teaches comparing a cryptographic value associated with off-chain information against corresponding verification information associated with the NFT, (See Non-Final Rejection on 12/17/2025 on pages 7-9, [0031] and [0053]; also see [0051]).
Weber teaches the association between the NFT and the corresponding off-chain dataset. When Clark’s verification process is applied to Weber’s architecture, the system retrieves or computes a fingerprint for the off-chain dataset and compares it with the corresponding value associated with the NFT. The claimed term “check a compliance” is broad and does not require any particular comparison algorithm. A determination that a calculated fingerprint matches the stored fingerprint is a check that the private dataset complies with the fingerprint and, consequently that the dataset has the expected content or integrity, (See Non-Final Rejection on 12/17/2025 on pages 7-9, paragraphs [0031], [0053]; also see [0051]).
Applicant’s argument treats Clark’s verification of NFT associated off-chain information as unrelated to the underlying data.
The Examiner respectfully disagrees with the applicant. The proposed combination instead uses Clark’s off-chain data identified by Weber’s data NFT. Thus the function for which hash-based integrity verification is known (See Non-Final Rejection on 12/17/2025 on pages 7-9).
Applicant argues on (pages 10-13): that Weber does not disclose granting access to the public dataset or private dataset based on authorization information stored in the blockchain network.
The Examiner respectfully disagrees with the applicant. Weber teaches in [0059]-[0060] NFT-based access management (also see Non-Final Rejection on 12/17/2025 on pages 7-9), while Clark and Wang teaches blockchain-maintained authorization or permission information, (See Non-Final Rejection on 12/17/2025 on pages 7-10, See Clark [0031] & [0053] and Wang, Pages 7-8).
It would have been obvious to condition access to Weber’s associated datasets on the authorization state stored or represented on the blockchain because this uses the blockchain’s shared state to enforce consistent access decisions among distributed participants. The proposed combination would have predictably improved auditability and reduced reliance on a single off-chain authorization database. The references need not use Applicant’s precise terminology so long as their combined teachings disclose or suggest the claimed subject matter. Applicant has not demonstrated that the references teach away from blockchain-based permission enforcement, that the proposed combination would render either reference inoperable, or that the combination would have produced an unexpected result.
Applicant states that claims 8 and 9 are allowable for the same reasons argued in claim 1.
The Examiner respectfully disagrees with the applicant. This argument is not persuasive because it does not separately identify a limitation of claims 8 or 9 that is absent from the applied combination. To the extent claims 8 and 9 recite method and computer-readable medium counterparts of the architecture of claim 1, the findings and rationale stated above apply equally.
Thus, Applicant’s arguments concerning claims 1-9 do not overcome the rejection because they primarily address Weber and Clark separately, apply an unduly narrow interpretation of “including”, “fingerprint,” “storage unit” and “compliance,” and do not account for the combined teachings identified in the rejection.
Applicant's arguments with respect to claims 10-20 have been considered
but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments (pages 13-14): Additionally, as to the dependent claims 2-7 and 10-20 the Applicant argues that the claims are dependent directly
or indirectly from a respective one of claims of independent claims 1, 8 and 9
and are therefore distinguished from the cited art at least by virtue OR allowable
at least based on of their additionally recited patentable subject matter.
The Examiner disagrees with the Applicant. The Examiner respectfully
submits that dependent claims 2-7 and 10-20 are rejected at least based
on the rationale and resource presented to the argument for their respective
based claims, and the reference applied to the dependent claims 2-7 and 10-20.
Therefore, in view of the above reasons, the Examiner maintains the rejection with the cited prior art references.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: blockchain orchestrator is configured to check/grant access (claim 1) and a publish/subscribe messaging module configured to route (claim 6).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Weber et al (“Weber,” EP4102386) and further in view of Clark et al (“Clark,” EP4174706).
Regarding claim 1, Weber discloses a data management system that manages access of a plurality of members to at least one digital asset, each digital asset being
associated with a public dataset and at least one private dataset, the data management system comprising:
a blockchain network, at least one off-chain storage unit, and a blockchain orchestrator; (Weber, [0012], [0008], FIG 1 describes a blockchain network, at least one off-chain storage unit, and a blockchain orchestrator)
wherein the blockchain network is configured to store, for said each digital asset: a respective non-fungible token including the public dataset corresponding thereto and, for each private dataset of said at least one private dataset, a corresponding fingerprint; (Weber, describes in [0012], [0015], [0060] a respective non-fungible token including the public dataset corresponding thereto and, for each private dataset of said at least one private dataset, a corresponding fingerprint)
and for said each private dataset corresponding therewith, authorization information indicative of at least one authorized member, among the plurality of members, authorized to access said each private dataset; (Weber describes in [0012], [0015], [0060] and for said each private dataset corresponding therewith, authorization information indicative of at least one authorized member, among the plurality of members, authorized to access said each private dataset)
wherein each off-chain storage unit of said at least one off-chain storage unit is distinct from the blockchain network and is configured to store at least one respective private dataset of said at least one private dataset; (Weber, [0035], [0060] describes wherein each off-chain storage unit of said at least one off-chain storage unit is distinct from the blockchain network and is configured to store at least one respective private dataset of said at least one private dataset)
and for each member of said plurality of members, grant access to one or more of
the public dataset and the at least one private dataset, based on the authorization
information stored in the blockchain network, (Weber, [0037], [0040]-[0041] describes
and for each member of said plurality of members, grant access to one or more of the
public dataset and the at least one private dataset, based on the authorization
information stored in the blockchain network)
Weber fails to explicitly disclose wherein the blockchain orchestrator
is configured, for said each digital asset, to check a compliance of each corresponding
private dataset of said at least one private dataset that is stored in said each off-chain
storage unit with the corresponding fingerprint stored in the respective non-fungible
token.
However, in an analogous art, Clark discloses wherein the blockchain orchestrator
is configured, for said each digital asset, to check a compliance of each corresponding
private dataset of said at least one private dataset that is stored in said each off-chain
storage unit with the corresponding fingerprint stored in the respective non-fungible
token; (Clark discloses [0031], [0051], [0053] wherein the blockchain orchestrator is
configured, for said each digital asset, to check a compliance of each corresponding
private dataset of said at least one private dataset that is stored in said each off-chain
storage unit with the corresponding fingerprint stored in the respective non-fungible
token)
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to combine the teachings of Clark with Weber
to include wherein the blockchain orchestrator
is configured, for said each digital asset, to check a compliance of each corresponding
private dataset of said at least one private dataset that is stored in said each off-chain
storage unit with the corresponding fingerprint stored in the respective non-fungible
token. One would have been motivated to provide long-term authentication of non-fungible tokens (NFTs) secured on a blockchain (Clark, [0001]).
Regarding claim 8, claim 8 is a directed to a method. Claim 8 is similar in scope to claim 1 and is therefore rejected under the same rationale.
Regarding claim 9, claim 9 is a directed to a non-transitory computer program. Claim 8 is similar in scope to claim 1 and is therefore rejected under the same rationale.
Claims 2-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Weber et al (“Weber,” EP4102386) in view of Clark et al (“Clark,” EP4174706) and further in view of Wang et al (“Wang,” “SoK: Tokenization on Blockchain, ACM, Pages 1-9, 2021).
Regarding claim 2, Weber and Clark disclose the data management system according to claim 1.
Weber and Clark fail to explicitly disclose wherein for said each member, the blockchain network comprises a respective node forming a member node, and wherein said each off-chain storage unit is connected to said member node, respectively, associated with the at least one authorized member corresponding to the each private dataset stored on said off-chain storage unit.
However, in an analogous art, Wang discloses wherein for said each member, the blockchain network comprises a respective node forming a member node, and wherein said each off-chain storage unit is connected to said member node, respectively, associated with the at least one authorized member corresponding to the each private dataset stored on said off-chain storage unit, (Wang discloses on Page 7, Under Section 5.2 to Page 8, Left Column, First Two Paragraphs wherein for said each member, the blockchain network comprises a respective node forming a member node, and wherein said each off-chain storage unit is connected to said member node, respectively, associated with the at least one authorized member corresponding to the each private dataset stored on said off-chain storage unit)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Wang with Weber and Clark to include wherein for said each member, the blockchain network comprises a respective node forming a member node, and wherein said each off-chain storage unit is connected to said member node, respectively, associated with the at least one authorized member corresponding to the each private dataset stored on said off-chain storage unit. One would have been motivated to provide tokenization on the blockchain (See Wang, Page 3, Section 2.2, Left Column)
Regarding claim 3, Weber and Clark disclose the data management system according to claim 1.
Weber and Clark fail to explicitly disclose wherein the blockchain network is further configured to operate under an Ethereum protocol.
However, in an analogous art, Wang discloses wherein the blockchain network is further configured to operate under an Ethereum protocol, (Wang discloses on Page 4, Section 3.3 under Section Non-Fungible Tokens describes wherein the blockchain network is further configured to operate under an Ethereum protocol)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Wang with Weber and Clark to include wherein the blockchain network is further configured to operate under an Ethereum protocol. One would have been motivated to provide tokenization on the blockchain (See Wang, Page 3, Section 2.2, Left Column)
Regarding claim 4, Wang and Clark disclose the data management system according to claim 3.
Wang further discloses wherein each non-fungible token is compliant with an ERC-721 standard, (Wang discloses on Page 4, Section 3.3 under Section Non-Fungible Tokens in wherein each non-fungible token is compliant with an ERC-721 standard)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Wang with Weber and Clark to include wherein each non-fungible token is compliant with an ERC-721 standard. One would have been motivated to provide tokenization on the blockchain (See Wang, Page 3, Section 2.2, Left Column)
Regarding claim 5, Weber and Clark disclose the data management system according to claim 1.
Weber and Clark fail to explicitly disclose wherein each digital asset is associated with a respective physical-to-virtual bridge including access management information to access the respective non-fungible token.
However, in an analogous art, Wang discloses wherein each digital asset is associated with a respective physical-to-virtual bridge including access management information to access the respective non-fungible token, (Wang discloses on Page 4, Left and Right Column under Section 3.1 Fungible Tokens wherein each digital asset is associated with a respective physical-to-virtual bridge including access management information to access the respective non-fungible token)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Wang with Weber and Clark to include wherein each digital asset is associated with a respective physical-to-virtual bridge including access management information to access the respective non-fungible token. One would have been motivated to provide tokenization on the blockchain (See Wang, Page 3, Section 2.2, Left Column)
Regarding claim 7, Weber and Clark disclose the data management system according to claim 1.
Weber and Clark fail to explicitly disclose wherein, for said each private dataset, the corresponding fingerprint is a result of applying a predetermined hash function to said each private dataset.
However, in an analogous art, Wang discloses wherein, for said each private dataset, the corresponding fingerprint is a result of applying a predetermined hash function to said each private dataset, (Wang discloses on Page 7, Under Section 5.2, Right Column to Page 8, Left Column, First Two Paragraphs wherein, for said each private dataset, the corresponding fingerprint is a result of applying a predetermined hash function to said each private dataset)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Wang with Weber and Clark to include wherein, for said each private dataset, the corresponding fingerprint is a result of applying a predetermined hash function to said each private dataset. One would have been motivated to provide tokenization on the blockchain (See Wang, Page 3, Section 2.2, Left Column)
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Weber et al (“Weber,” EP4102386) in view of Clark et al (“Clark,” EP4174706) and further in view of Nolan et al (“Nolan,” US 20190349733).
Regarding claim 6, Weber and Clark disclose the data management system according to claim 1.
Weber and Clark fail to explicitly disclose further comprising a publish/subscribe messaging module configured to route communication messages between the blockchain network, said each off-chain storage unit and the blockchain orchestrator.
However, in an analogous art, Nolan discloses further comprising a publish/subscribe messaging module configured to route communication messages between the blockchain network, said each off-chain storage unit and the blockchain orchestrator, (Nolan discloses further comprising a publish/subscribe messaging module [0102] configured to route communication messages [0190] between the blockchain network [0028], said each off-chain storage unit [0147] and the blockchain orchestrator [0028], [0075]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Nolan with Weber and Clark to include further comprising a publish/subscribe messaging module configured to route communication messages between the blockchain network, said each off-chain storage unit and the blockchain orchestrator.One would have been motivated to decentralize identification as they may provide agreement between devices regarding names and identities that are in current use (Nolan, [0097]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Weber et al (“Weber,” EP4102386) in view of Clark et al (“Clark,” EP4174706) and further in view of York et al (“York,” US 20210304157).
Regarding claim 10, Weber and Clark disclose the data management system according to claim 1.
Weber and Clark fail to explicitly disclose wherein the blockchain orchestrator is further configured to output an alert signal when a fingerprint received from an off- chain storage unit does not match the corresponding fingerprint stored in the respective non- fungible token.
However, in an analogous art, York discloses wherein the blockchain orchestrator is further configured to output an alert signal when a fingerprint received from an off- chain storage unit does not match the corresponding fingerprint stored in the respective non-fungible token, (York, [0048] describes the server off-chain storage application retrieving metadata for content stored as off-chain content, generating a test hash from that metadata, and retrieving the corresponding hash from the blockchain. The test hash is generated from metadata retrieved for the computer-readable content stored as off-chain content. The second hash is retrieved from a block in the blockchain using the transaction identifier; [0049] discloses comparing the test hash with the blockchain-stored second hash and, when they are not identical, generating and transmitting an alarm indicating that authenticity expectations cannot be met)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of York with Weber and Clark to include wherein the blockchain orchestrator is further configured to output an alert signal when a fingerprint received from an off- chain storage unit does not match the corresponding fingerprint stored in the respective non- fungible token. One would have been motivated to provide off-chain storage for blockchain (York, [0001]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Weber et al (“Weber,” EP4102386), Clark et al (“Clark,” EP4174706) in view of Takada et al (“Takada,” US 20200028688) and further in view of York et al (“York,” US 20210304157)
Regarding claim 11, Weber and Clark disclose the data management system according to claim 1.
Weber further discloses each private dataset stored thereon (see the rejection of claim 1 above).
Weber and Clark fail to explicitly disclose wherein the blockchain orchestrator is further configured to request each off-chain storage unit to compute and output a fingerprint associated with said each private dataset stored thereon,
However, in an analogous art, Takada discloses wherein the blockchain orchestrator is further configured to request each off-chain storage unit to compute and output a fingerprint associated with said each private dataset stored thereon (Takada, [0076] describes the management program receiving a response from the storage program after the management program’s storage request. The storage program manages the off-chain storage and responds to the management program; [0077] describes that the storage-program response includes a hash calculated from the content of the related data object. The hash value is the digital fingerprint and separate responses are provided for multiple data objects)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Takada with Weber and Clark to include wherein the blockchain orchestrator is further configured to request each off-chain storage unit to compute and output a fingerprint associated with said each private dataset stored thereon. One would have been motivated to provide off-chain blockchain storage with validation (Takada, Title, [0003]).
Weber, Clark and Takada fail to explicitly disclose and to compare each fingerprint that is received with the corresponding fingerprint stored in the respective non-fungible token.
However, in an analogous art, York discloses and to compare each fingerprint that is received with the corresponding fingerprint stored in the respective non-fungible token, (York, [0048]-[0049] describes the server off-chain storage application generating or obtaining a test hash, retrieving the corresponding second hash from the blockchain, and comparing the two hashes)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of York with Weber, Clark and Takada to include wherein the blockchain orchestrator is further configured to request each off-chain storage unit to compute and output a fingerprint associated with said each private dataset stored thereon, and to compare each fingerprint that is received with the corresponding fingerprint stored in the respective non-fungible token. One would have been motivated to provide off-chain storage for blockchain (York, [0001]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Weber et al (“Weber,” EP4102386) in view of Clark et al (“Clark,” EP4174706) and further in view of Khan et al (“Khan,” US 20230214392).
Regarding claim 12, Weber and Clark disclose the data management system according to claim 1.
Weber further discloses the private dataset (see the rejection of claim 1 above).
Weber and Clark fail to explicitly disclose wherein each off-chain storage unit is configured to update the corresponding fingerprint of said each private dataset upon modification of the private dataset and to output the corresponding fingerprint that is updated to the blockchain network.
However, in an analogous art, Khan discloses wherein each off-chain storage unit is configured to update the corresponding fingerprint of said each private dataset upon modification of the private dataset and to output the corresponding fingerprint that is updated to the blockchain network, (Khan in [0012] describes an off-chain repository containing one or more databases with the repository communicating with a blockchain system; [0030] describes that after database 203 is modified by update 211-1, the off-chain repository applies hashing function 209 to the updated database 203’ to generate a new hash 207-2. A subsequent update similarly produces another updated hash 207-3; [0030] describes recording new hashes 207-2 and 207-3 in blockchain system 109; FIG 2 shows the off-chain repository receiving database updates, generating new hashes, and recording those new hashes in the blockchain system)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Khan with Weber and Clark to include wherein each off-chain storage unit is configured to update the corresponding fingerprint of said each private dataset upon modification of the private dataset and to output the corresponding fingerprint that is updated to the blockchain network. One would have been motivated to provide for the use of a blockchain system to provide a secure mechanism by which off-chain data (e.g. data stored in a system other than a blockchain system) may be verified (Khan, [0011]).
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Weber et al (“Weber,” EP4102386) in view of Clark et al (“Clark,” EP4174706) and further in view of DeLuca et al (“DeLuca,” US 20240146523).
Regarding claim 13, Weber and Clark disclose the data management system according to claim 1.
Weber further discloses the public dataset and at least one private dataset (see the rejection of claim 1 above).
Weber and Clark fail to explicitly disclose wherein the authorization information indicates authorized actions that each member is authorized to perform on one or more of the public dataset and the at least one private dataset.
However, in an analogous art, DeLuca discloses wherein the authorization information indicates authorized actions that each member is authorized to perform on one or more of the public dataset and the at least one private dataset, (DeLuca, [0047] describes an access-control policy associated with a blockchain identity representing a user and containing permissions for that user; [0048] describes permissions defining actions or operations that the user may perform including viewing, modifying, creating, deleting, copying, downloading, and sharing content; [0049] describes that the permission apply to identified digital content or resources and may differ among particular items or groups of content)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of DeLuca with Weber and Clark to include wherein the authorization information indicates authorized actions that each member is authorized to perform on one or more of the public dataset and the at least one private dataset. One would have been motivated to provide a system for controlling access to digital content (DeLuca, [0003]).
Regarding claim 14, Weber, Clark and DeLuca disclose the data management system according to claim 13.
DeLuca further discloses wherein the authorized actions comprise one or more of read-only, read-and-write, and delete permissions, (DeLuca in [0048] describes permissions allowing a user to view digital content. A view-only permissions corresponds to read-only access. The system uses permissions to allow a user to view and modify digital content, thereby describing read-and-write access. The system identifies deleting digital content as an authorized operation).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of DeLuca with Weber and Clark to include wherein the authorized actions comprise one or more of read-only, read-and-write, and delete permissions. One would have been motivated to provide a system for controlling access to digital content (DeLuca, [0003]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Weber et al (“Weber,” EP4102386), Clark et al (“Clark,” EP4174706), Ramaswamy et al (“Ramaswamy,” US 20210091926) in view of Sardesai et al (“Sardesai,” US 20180248880) and further in view of Callan et al (“Callan,” US 20200336299).
Regarding claim 15, Weber and Clark fail to explicitly disclose the data management system according to claim 1.
Weber and Clark fail to explicitly disclose wherein one or more of in a permissioned blockchain network, the authorization information is managed by a single member, in a permissionless blockchain network, the authorization information is managed by said each member.
However, in an analogous art, Ramaswamy discloses wherein one or more of in a permissioned blockchain network, the authorization information is managed by a single member, in a permissionless blockchain network, the authorization information is managed by said each member (Ramaswamy, [0003] distinguishes permissionless networks, in which any participant may join without authentication, from permissioned networks in which peers require authentication and are known participants).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Ramaswamy with Weber and Clark to include wherein one or more of in a permissioned blockchain network, the authorization information is managed by a single member, in a permissionless blockchain network, the authorization information is managed by said each member. One would have been motivated to access permissioned blockchains and assessing a performance of a permissioned blockchain under network constraints (Ramaswamy, [0001]).
Weber, Clark and Ramaswamy fail to explicitly disclose wherein one or more of in a permissioned blockchain network, the authorization information is managed by a single member.
However, in an analogous art, Sardesai discloses wherein one or more of in a permissioned blockchain network, the authorization information is managed by a single member, (Sardesai in [0047] describes that read/write access for adding, removing or modifying permission entries in a shared ledger may be limited to an authorization server or one designed trusted node)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Sardesai with Weber, Clark and Ramaswamy to include wherein one or more of in a permissioned blockchain network, the authorization information is managed by a single member. One would have been motivated to grant permissions in a distributed environment (Sardesai, [0011]).
Weber, Clark, Ramaswamy and Sardesai fail to explicitly disclose in a permissionless blockchain network, the authorization information is managed by said each member.
However, in an analogous art, Callan discloses in a permissionless blockchain network, the authorization information is managed by said each member, (Callan, [0029] descries a plurality of network members acting as data owners with each member transmitting its own permission record to the blockchain to control access to data).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Callan with Weber, Clark, Ramaswamy and Sardesai to include in a permissionless blockchain network, the authorization information is managed by said each member. One would have been motivated to grant or revoke access via a medium of a blockchain (Callan, [0002]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Weber et al (“Weber,” EP4102386) in view of Clark et al (“Clark,” EP4174706) and further in view of Smith et al (“Smith,” US 20180308072).
Regarding claim 16, Weber and Clark disclose the data management system according to claim 1.
Weber and Clark fail to explicitly disclose wherein the blockchain orchestrator is a microservice executed on a back-end and acting as a blockchain-agnostic facade to blockchain network nodes.
However, in an analogous art, Smith discloses wherein the blockchain orchestrator is a microservice executed on a back-end and acting as a blockchain-agnostic facade to blockchain network nodes, (Smith in [0029] describes identifying a network microservice 205 that manages blockchain nodes and processes blockchain-network events; [0029] describes that the network microservice is blockchain agnostic and provides a generic interface for creating and interacting with resources on one or more blockchains; [0029] describes that the network microservice manages blockchain nodes and translates high-level instructions into native on-chain code; [0020]-[0022] describe a centrally controlled, microservice-based platform operating above decentralized storage and processing layers; [0063] identifies the server and computing environment executing the software)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Smith with Weber and Clark to include wherein the blockchain orchestrator is a microservice executed on a back-end and acting as a blockchain-agnostic facade to blockchain network nodes. One would have been motivated to provide a scalable, flexible, and extensible platform for building, deploying, and managing distributed applications that interact with multiple blockchain technologies (Smith, [0005]).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Weber et al (“Weber,” EP4102386), Clark et al (“Clark,” EP4174706), Wang et al (“Wang,” “SoK: Tokenization on Blockchain, ACM, Pages 1-9, 2021) in view of Sekniqi et al (“Sekniqi,” WO 2023069505) and further in view of Daubenschutz et al (“Daubenshutz,” “ERC-5192: Minimal Soulbound NFTs: Minimal Interface for Soulbinding EIP-721 NFTs, retrieved from https://eips.ethereum.org/EIPS/eip-5192, 2022, Pages 1-3).
Regarding claim 17, Weber, Clark and Wang disclose the data management system according to claim 4.
Weber, Clark and Wang fail to explicitly disclose wherein the each non-fungible token deviates from the standard by not using a public exchange feature for change of ownership.
However, in an analogous art, Sekniqi discloses wherein the each non-fungible token deviates from the standard by not using a public exchange feature for change of ownership, (Sekniqi in [0023] describes that the non-transferable token may function similarly to a non-fungible token and may be unique token not subdividable into smaller units; [0033] describes that the token owner may be restricted from moving or transferring the token. The limited-move value may be set to zero, making the token immovable by default; [0038] describes that a blockchain exchange platform may regulate or limit who interacts with the blockchain assets and may limit cryptocurrency swap functions base don possession of the non-transferable token; [0033] describes the non-transferrable feature that prevents ordinary marketplace or exchange ownership transfer)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Sekniqi with Weber, Clark and Wang to include wherein the each non-fungible token deviates from the standard by not using a public exchange feature for change of ownership. One would have been motivated to a blockchain exchange (e.g. cryptocurrency exchanges) that require credential verification based on non-movable digital credentials (Sekniqi, [0002]).
Weber, Clark, Wang and Sekniqi fails to explicitly disclose wherein the each non-fungible token deviates from the ERC-721 standard by not using a public exchange feature for change of ownership.
However, in an analogous art, Daubenschutz wherein the each non-fungible token deviates from the ERC-721 standard by not using a public exchange feature for change of ownership, (Daubenshutz describes on Pages 1-2, ERC-5192 defines a minimal interface for soulbound NFTs and requires the ERC-721 token standard. ERC-5192 adds a locked(tokenID) status to an ERC-721 token. When locked(tokenID) returns true, all ERC-721 functions that transfer the token from one account to another must throw)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Daubenshutz with Weber, Clark, Wang and Sekniqi to include wherein the each non-fungible token deviates from the ERC-721 standard by not using a public exchange feature for change of ownership. One would have been motivated to provide a minimal interface to make tokens soulbound using feature detection functionality of EIP-165 (Daubenshutz, Pages 1-2).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Weber et al (“Weber,” EP4102386), Clark et al (“Clark,” EP4174706) in view of Wang et al (“Wang,” “SoK: Tokenization on Blockchain, ACM, Pages 1-9, 2021) and further in view of Madhusudhan et al (“Madhusudhan,” US 20230070389).
Regarding claim 18, Weber, Clark and Wang disclose the data management system according to claim 5.
Weber, Clark and Wang fail to explicitly disclose wherein the respective physical-to- virtual bridge is a QR code.
However, in an analogous art, Madhusudhan discloses wherein the respective physical-to- virtual bridge is a QR code, (Madhusudhan, [0047] describes creating an NFT from a physical asset including creating a digital asset from the physical asset and minting the digital asset as an NFT; [0057] describes associating the physical asset with a physical identifier, including the QR code, RFID, or NFC tag, and using the identifier to retrieve information associated with the NFT; [0060] describes initiating a tag reader to read an identifier attached to the physical asset, matching that identifier o the NFT identifier, and validating the physical asset based on the match)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Madhusudhan with Weber, Clark and Wang to include wherein the respective physical-to- virtual bridge is a QR code. One would have been motivated to provide a system and method for creating a Non-Fungible Token (NFT) from physical assets and validating the authenticity of digital assets and physical assets associated with an NFT (Madhusudhan, [0001]).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Weber et al (“Weber,” EP4102386), Clark et al (“Clark,” EP4174706) in view of Wang et al (“Wang,” “SoK: Tokenization on Blockchain, ACM, Pages 1-9, 2021) and further in view of Fisher et al (“Fisher,” US 20160283920).
Regarding claim 19, Weber, Clark and Wang disclose the data management system according to claim 7.
Weber, Clark and Wang fail to explicitly disclose wherein the predetermined hash function is an SHA-256 hash function.
However, in an analogous art, Fisher discloses wherein the predetermined hash function is an SHA-256 hash function, (Fisher, [0016] describes acting on digital content with a hash algorithm to produce a unique signature representing the content; [0016] describes that the SHA-256 is applied to the digital document or digital content to produce the unique 256-bit signature).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Fisher with Weber, Clark and Wang to include wherein the predetermined hash function is an SHA-256 hash function. One would have been motivated to provide authentication and verification of digital data using blockchain technology (Fisher, [0002] & [0016]).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Weber et al (“Weber,” EP4102386) in view of Clark et al (“Clark,” EP4174706) and further in view of Mehedy et al (“Mehedy,” US 20190342084).
Regarding claim 20, Weber and Clark disclose the data management system according to claim 1.
Weber and Clark fail to explicitly disclose wherein each off-chain storage unit is associated with a respective member and is configured to safe-keep private datasets associated with the respective member.
However, in an analogous art, Mehedy discloses wherein each off-chain storage unit is associated with a respective member and is configured to safe-keep private datasets associated with the respective member, (Mehedy, [0032] describes storing peers 120 and 122 having respective off-chain storage components 121 and 123; [0065] describes that each storing peer includes an off-chain storage component controlled by that respective storing peer; [0033] describes encrypting a file, dividing it into file fragments, and distributing the fragments to the respective off-chain storage elements of the storing peers; [0053] describes encrypting each file share with the public key of the selected storing peer and transmitting that encrypted share specifically to the corresponding storing peer for storage)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to combine the teachings of Mehedy with Weber and Clark to include wherein each off-chain storage unit is associated with a respective member and is configured to safe-keep private datasets associated with the respective member. One would have been motivated to provide a system for managing data stored off of a blockchain and to a blockchain for on-chain management of off-chain storage (Mehedy, [0001]).
Conclusion
Applicant's amendment adding claims 10-20 necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES J WILCOX whose telephone number is (571)270-3774. The examiner can normally be reached M-F: 8 A.M. to 5 P.M..
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/JAMES J WILCOX/Examiner, Art Unit 2439
/LUU T PHAM/Supervisory Patent Examiner, Art Unit 2439
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