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
Applicant filed an amendment on 12/19/25. Claims 1, 2, and 5-15 are pending in this application, claims 3 and 4 having been cancelled. Claims 1, 10, and 14 are independent claims. Claims 1, 5, 10, and 14 are amended as discussed below. After careful consideration of applicant arguments and amendments, the examiner finds them to be moot and/or non-persuasive. This action is a Final Rejection.
Claim interpretation
Claims 1, 10, 15 are amended to contain “the class of apparatus” On reading applicant specification 0022-25, it appears that class of apparatus is equivalent to type of machine that is allowed or capable of producing the digital item in physical form. An example of art work for example is given.
This appears to be similar to a specification that indicates a manufacturing process or machine within the specification.
Claim Objections
Claim 1 is objected to because of the following informalities: “a class of apparatus” is followed by the class of apparatus and “that class of apparatus”, followed by the class of apparatus. Are these the same or different class of apparatus? For the purpose of examination, they will be interpreted to be the same class of apparatus Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2, 5-15 are directed to an abstract idea without more
Claims 1, 10 and 14 (Method, apparatus and machine readable medium) are directed to statutory classes of invention.
However, the independent claims are directed to an abstract idea which is to manage digital rights which is a fundamental economic practice.
The abstract elements (claim 1 exemplified) include;
“receiving a request to produce an item…”
“determining from the content of the digital right if the user has permission to produce the item in physical form” “When the user has permission to produce the item, instructing … produce the item..”
By amendment; determining if the permission is a permission associated with a class of apparatus and, when the user has permission to produce … on the class of apparatus, instructing that class of apparatus to … in physical form, wherein the class of apparatus corresponds to a specification indicated by the digital right.
Currently the judicial exception is not integrated into a practical application.
Here the non abstract elements including “apparatus to produce” and “item in physical form”. The non abstract elements amount to essentially applying generic elements to an abstract idea.
However it is noted that claim 3 contains a print apparatus, which generically is another piece of hardware. Applicant specification includes 2d printing and 3d printing which are forms of technical elements.
In regards to claims 1, “instructing to produce” is utilized instead of producing the item. It’s unclear if the item is actually produced or not.
Claim 10 is also not clear if the item is actually produced.
Claim 14 likewise does not appear to produce the actual item, only determines production instructions.
Currently the claims recite elements at a high level of generality such that they amount to no more than mere instructions to apply the exception using a generic computing component. Accordingly these additional elements when considered separate or as an ordered combination do not integrate the abstract idea into a practical application because they do not impose meaningful limits on practicing the abstract idea.
The dependent claims 2,5-9, 11-13, and 15 are rejected because they do not correct the concerns of claim 1, 10 or 14 respectively.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-2,5-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over
US Patent Publication to Shapiro 20220309491 in view of US Patent Publication 2022/0075845 to Bowen
As per claim 1, Shapiro discloses; A method comprising, by processing circuitry:
receiving a request from a user to produce an item represented by data in a physical form
and Shapiro(0024)
an indication of a digital right associated with the item; (0024)
determining, from the content of the digital right, if the user has permission to produce the item in physical form; when the user has permission to produce the item, instructing a printing or manufacturing apparatus to produce the item in physical form. (0024)
Shapiro does not explicitly disclose what Bowen teaches;
and determining if the permission is a permission associated with a class of apparatus and,
when the user has permission to produce the item on the class of apparatus, instructing that class of apparatus to produce the item in physical form, wherein the class of apparatus corresponds to a specification indicated by the digital right. Bowen(0126-0128, a process to make things with a machine)
It was therefore have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the object production of Bowen and Shapiro for the motivation of applying “flexibility for users to customize articles of manufacture” (0003)
Claims 10, 14 are similar to claim 1 but broader. Claim 10 includes NFT which is found in Shapiro (0063)
As per claims 2,13 Shapiro discloses; A method according to claim I wherein the digital right is a Non-Tangible Token, NFT. Shapiro(0063)
As per claim 11, Shapiro discloses; A method according to claim 1wherein the apparatus is a print apparatus. Shapiro(0031, 3d printing which is a form of manufacturing)
As per claim 5 Shapiro discloses;
A method according to claim 1further comprising determining, from the content of the digital right, at least one instruction for the printing or manufacturing apparatus such that the item is produced with a property determined from the digital right.
Shapiro(0032-33, 0021 “printing in a physical medium … creative works associated with a NFT)
As per claim 6, Shapiro discloses; A method according to claim 5 comprising modifying the data representing the item prior to production based on data determined from the digital right.
Shapiro(0032)
As per claim 7, Shapiro discloses; A method according to claim 1wherein the permission is associated with a number of permissible productions of the item.
Shapiro(0064, a specified quantity)
As per claim 8 Shapiro discloses; A method according to claim 1further comprising, by the processing circuitry, requesting that a blockchain is updated with an indication that a permission to produce the item has been utilized.
Shapiro(0198, awaits approval)
As per claim 15 Shapiro discloses; The machine-readable medium of claim 14 further comprising machine-readable instructions which, when executed by the processor, cause the processor to: verify the data indicative of a production permission associated with the item with a blockchain platform.
Shapiro(0198, awaits approval)
As per claim 9, Shapiro discloses; A method according to claim 1wherein determining if the user has permission to produce the item in physical form comprises requesting validation of the permission from a blockchain platform.
Shapiro(0058)
As per claim 12 Shapiro discloses; Apparatus according to claim 10 wherein the permissions module is to verify the reproduction permission by reference to a blockchain platform.
Shapiro(0061)
Response to Arguments
Applicant filed an amendment on 12/19/25. Claims 1, 2, and 5-15 are pending in this application, claims 3 and 4 having been cancelled. Claims 1, 10, and 14 are independent claims. Claims 1, 5, 10, and 14 are amended as discussed below. After careful consideration of applicant arguments and amendments, the examiner finds them to be moot and/or non persuasive. This action is a Final Rejection.
§102(a)(1) Rejections of the Claims
Claim(s) 1-15 were rejected under 35 U.S.C. 102 as being allegedly anticipated by US Patent Publication to Shapiro 20220309491. Applicant submits that the claims as amended herein are patentably distinguishable over Shapiro. (as noted 15-20 were not rejected)
Claim 1, as amended, recites:
A method comprising, by processing circuitry:
receiving a request from a user to produce an item represented by data in a physical form and an indication of a digital right associated with the item; determining, from the content of the digital right, if the user has permission to produce the item in physical form; [[and]]
when the user has permission to produce the item, instructing [[an]] a printing or manufacturing apparatus to produce the item in physical form; and
determining if the permission is a permission associated with a class of apparatus and, when the user has permission to produce the item on the class of apparatus, instructing that class of apparatus to produce the item in physical form,
wherein the class of apparatus corresponds to a specification indicated by the digital right.
Applicant pointed out a minor typo in the heading for overall claims rejected which is corrected.
Claim 1, as amended, includes the features of previously pending claim 4 and additional features. See above-emphasized features.
The amendment to claim 1, in part, defines that the class of apparatus corresponds to a specification indicated by the digital right. At least this feature is not taught in Shapiro. Support for this amendment can be found in at least [0023] of the originally filed specification.
With respect to claim 4, in the Office Action, the Examiner cites paragraph
[0102] of Shapiro. Essentially, this paragraph teaches that a "printing escrow agent" (i.e., a machine) can create a physical copy of a creative work while respecting a chain of custody. The printing escrow agent can do this by decrypting files and verifying ownership and permissions. Paragraph [102] of Shapiro, however, fails to teach the specific features added to claim 1.
During the above-summarized Examiner interview, the Examiner indicated that the above amendment to claim 1 would likely overcome the current prior art rejection. Accordingly, Applicant respectfully requests the withdrawal of the rejection of claim 1.
Applicant submits that independent claims 10 and 14 are patentable at least based on reasons analogous to those set forth above with respect to claim 1.
Applicant submits that dependent claims 2, 5-9, 11-13, and 15 are patentable at least by virtue of their respective dependencies from independent claims 1, 10, and 14.
Accordingly, Applicant respectfully requests that the Examiner withdraw the anticipation rejection of claims 1, 2, and 5-15.
Applicant arguments are moot in view of new grounds of rejection in view of amendment.
101 Rejections of the Claims – updated, the concept is abstract in the context that the mechanism to print is performed at a high level of generality.
In regards to 35 USC 101, the rejection is maintained because as claimed it’s not clear of the items are actually produced or just instructions and permissions to produce. Applicant should clarify that the items are actually produced by the class of apparatus in physical form.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
A permission generation and configuration method based on Rules and FP-Growth algorithm, IEEE 2021
Overprivileged Permission Detection for Android Applications, IEEE 2019
Applicant's amendment 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 BRUCE I EBERSMAN whose telephone number is (571)270-3442. The examiner can normally be reached 8:00 am - 5:00 pm Monday-Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRUCE I EBERSMAN/Primary Examiner, Art Unit 3693