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 communication is a final action in response to amendment filed on 02/19/2026. Claims 1-20 are pending.
Response to Argument
Applicant’s argument directed to 101 rejection have been fully considered but are not persuasive.
Applicant argues that the use of smart contract does not render it a business method, but instead is an automated control architecture governing release of machine-adapted production instruction. (pages 7-8). Examiner respectfully disagrees. In this case, the smart contract, as name suggest, is a form of contract allowing a person to make a physical item based on pre-determined condition. While it might be a software protocol to implement agreement, the smart contract is merely used to be generated and that user interacts with it using unique key without any specific technical implementation being involved. Therefore, the claimed smart contract would be different from the limitations of Enfish and McRO.
Applicant further argues that the use of smart contract would improve the technology by reducing abuse of ownership rights and that it reduce effort, resources time and/or manual labor required to verify users are indeed the legitimate owners. Applicant goes on to argue that the claim improves instruction delivery and robustness and security. Examiner respectfully disagree.
As per authentication and conditional release of instruction by reducing processing storage and network over manual or centralized verification systems, this is improvements inherent from using a decentralized or smart contract system and therefore would not be considered an improvement over technology. As per improved robustness and security, Applicant states that this improvement is achieved by “optionally recording smart contracts and NFTs on a blockchain …” (page 9, lines 5-7, item 2 and its explanation). Examiner is also unable to find corresponding recording step in the claims so this alleged improvement is not even within the scope of the claim. Further, even if considered as part of the claimed scope, this transparency is also inherent to using blockchain technology.
As per Applicant’s argument related to Desjardins and MPEP 2106.05(a), please see above as these improvement are really just inherent advantages obtained from using decentralized system or a smart contract.
As per Applicant’s argument that the claim is a gate to determine instructions are released and would enable or preventing real-world production. Examiner notes Fig. 3 clearly shows providing instruction (308) is a separate step as production of physical item (312). Clearly the scope of the claim ends at instruction provided without requiring item being produced. As per the “gate” argument, that’s merely executing rules of contract.
Applicant goes on to argue Classen where applied information to physical immunization step were found eligible. Examiner respectfully disagree because Classen is eligible because of the physical immunization step being carried out. See at least MPEP 2106.04 (a) (2) III A where Classen recites a mental processes and MPEP 2106.05 stating such “immunization step” establishes an inventive concept, which is later explained in 2106.05(e). Therefore, examiner would further notes that in view of Classen, the physical production (or lack thereof) would be a key role in deciding whether claim is eligible.
As per Applicant’s further arguments, please refer to above.
Regarding Applicant’s arguments directed to art rejection, the arguments are moot. However, examiner disagree that the claimed “associating production instruction … with the unique key” would “binds a unique key to technical production instruction” (see paragraph at the end of page 11 to beginning of page 12 of Remarks). Association can be broadly interpreted to be having smart contract containing the production file (or link to the production file) being tagged or validated using the unique key. The unique key is not required to be binding to the production file.
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 1-20 are rejected under 35 U.S.C. 101 because they recite an abstract idea without significantly more.
Step 2A prong 1
As per claim 1, the following limitations recites abstract idea.
receiving a request, … , from at least one [client device] used by at least one user to produce at least one physical item corresponding to a digital asset of the at least one user;
transmitting a unique key …, the key is uniquely associated with the digital asset; and
obtaining production instructions adapted for production of the at least one physical item corresponding to the digital asset …. According to at least one of: attributes, parameters, and/or characteristics of the physical item
generating [a smart contract] associating production instructions for producing the at least one physical item with the unique key;
instructing the production of [the at least one physical item] by providing the production instructions to the at least one user based on authentication of the unique key;
wherein the at least one user interacts with the smart contract using the unique key to authenticate his ownership of the digital asset and receive the production instructions for producing the at least one physical item.
The above limitation describes a series of step for a user to receive production instructions for producing a physical item. It’s wroth noting that the series of steps are facilitated by a smart contract. Therefore, this is establishing a business relationship and following rules. Both of which falls within certain methods of organizing human activities. Therefore, claim 1 recites an abstract idea.
Step 2A prong 2
The additional elements of claim 1 are the computer hardware such as processor, network, client device, as well as smart contract. While claim language involves a physical item, the item is outside the scope of the claim as only “production instructions” for the physical item is involved. The computer hardware all generic computer components and are merely described to perform the abstract idea. They’re merely generally linking the abstract idea on a computer. Similarly, smart contract is merely generated and then being interacted on. This is also merely generally linking the abstract idea to a particular field of use. Even viewed in an ordered combination, they’re still merely generally linking the abstract idea to computer technology. Therefore, the additional elements do not integrate the abstract idea into practical application. The claim is directed to an abstract idea.
Step 2B
As discussed above in step 2A prong 2, of which the analysis still applies here. The additional elements, whether viewed individually or as an ordered combination, are nothing more than merely generally linking the abstract idea into a particular field of use. They wouldn’t provide an inventive concept. The claim is not eligible.
Claims 2-19 merely further limiting the abstract idea by introducing additional detail on the abstract idea and/or further limiting the field of use for the abstract idea (e.g. limiting the physical item to be textile so the instructions are further linked to textile). These claims would be ineligible over similar reason.
Claim 20 can be similarly analyzed as claim 1 and would arrived at the same conclusion.
Examiner notes scope of claim currently ends at production instruction being received; no physical item is being manufactured based on the instruction. Please see above regarding incorporating production of the physical item (e.g., step 312 in Fig. 3) into the claim as a way to overcome the above 101 rejection.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 4-6, 8-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shapiro (US 20220309491) in view of Ferenczi (US 20230034169)
As per claim 1, Shapiro discloses a method of distributing production instructions of physical items based on authentication of ownership of a corresponding digital assets by generating and deploying smart contracts, comprising:
using at least one processor (Shapiro 0144) for:
receiving a request, via at least one network, from at least one client device used by at least one user to produce at least one physical item corresponding to a digital asset of the at least one user (see Fig. 1, network 108. See relative relationship between fabricated work, file, creator and owner. See 0102, suer can purchase an NFT and render a transporter NFT. );
transmitting a unique key to the at least one client device, the key is uniquely associated with the digital asset (0066, “At 306, a physical tag with pre-programmed key pairs is created or obtained. At 308, the NFT and physical tags are purchased by and transferred to the owner. At 310, the physical tags are scanned by the owner to obtain the public key.”);
obtaining production instructions adapted for production of the at least one physical item corresponding to the digital asset by one or more production systems according to at least one of: attributes, parameters and/or characteristics of the physical item (see at least 0107, rendering file affects the expected rendering image output):
generating a smart contract associating production instructions for producing the at least one physical item with the unique key (0065, smart contract specify public key that proves ownership); and
instructing the production of the at least one physical item by providing the production instructions to the at least one user based on authentication of the unique key (see 0070 smart contract used to update file stored, which can be used to implement rendering. See 0065 with detail on smart contract and public key);
wherein the at least one user interacts with the smart contract using the unique key to authenticate his ownership of the digital asset and
While Shapiro strongly suggest accessing production file is in condition of validating using the unique key, it does not explicitly say so. Ferenczi nevertheless teaches using public key to verify ownership of an NFT smart contract (0010-0011).
Therefore, it would have been obvious for one ordinary skilled in the art before the effective filing date to combine Ferenczi’s public key verification scheme with Shapiro’s usage of public key on NFT for the purpose of providing additional contextual detail on how to implement public key authentication in NFT smart contract (Ferenczi: 0010-0011).
As per claim 4, Shapiro further discloses the method of claim 1, wherein the at least one physical item comprises a three dimensional (3D) item and the production instructions comprise instructions adapted for at least one 3D printer for printing the 3D item (0033 3D printer for visual creative work).
As per claim 5, Shapiro further discloses the method of claim 1, further comprising the digital asset comprises at least one digitally represented design associated with the at least one user (see Fig. 1, owner and 0070 owner can render work).
As per claim 6, Shapiro further discloses the method of claim 5, wherein the at least one digitally represented design is a member of a group consisting of:
a picture, a drawing, a symbol, an icon, a text, a slogan, a motif, and a pattern (0033, drawing).
As per claim 8, Shapiro further discloses the method of claim 1, wherein the smart contract is recorded in a blockchain controlled by a decentralized network of a plurality of computing nodes (0047, smart contract on a block chain).
As per claim 9, Shapiro further discloses The method of claim 8, wherein the unique key comprises a non-fungible token (NFT) recorded in the blockchain in association with the digital asset (0047, NFT).
As per claim 10, Shapiro further discloses the method of claim 1, wherein the unique key comprises a private key and a respective public key derived from the private key, the public key is included in the smart contract, the private key is used by the at least one user to encrypt at least one message decodable using the public key thus authenticating the user as the originator of the at least one encrypted message (0068 regarding relationship before private key and public key).
As per claim 11, Shapiro further discloses the method of claim 1, wherein the smart contract defines a maximal number of copies of the at least one physical item (see at least 0103, limited number of renders available).
As per claim 12, Shapiro further discloses the method of claim 1, wherein the production instructions further comprising instructions to print at least one authentication design on the at least one physical item, the at least one authentication design is defined by the smart contract (0022-0023, serial number is part of rendering).
As per claim 13, Shapiro further discloses the method of claim 12, further comprising the at least one authentication design encodes information defined by the smart contract (0022-0023, serial number is part of rendering).
As per claim 14, Shapiro further discloses the method of claim 12, wherein the production instructions define printing the at least one authentication design using at least one paint material visible to human eye (0022-0023, serial number is part of rendering).
As per claim 15, Shapiro further discloses the method of claim 12, wherein the production instructions define printing the at least one authentication design using at least one paint material invisible to human eye (0057, certificate of authenticity using code invisible to the eye printed on wood).
As per claim 16, Shapiro further discloses the method of claim 12, wherein the production instructions define printing the at least one authentication design such that the at least one authentication design is embedded in at least one design feature printed on the at least one physical item such that the at least one authentication design is indiscernible by human eye from the at least one design feature (0057, using code and that can be printed using UV code, which is invisible. Examiner notes “such that” is an intended use language).
As per claim 17, Shapiro further discloses the method of claim 1, wherein the production instructions further comprising instructions to encode information defined by the smart contract in at least one authentication device coupled to the at least one physical item (see at least 0022-0023 regarding serial number).
As per claim 18, Shapiro further discloses the method of claim 1, wherein the smart contract is configured to enable adjustment of the production instructions to customize at least one production feature of the at least one physical item (see at least 0022-0023. Examiner notes enable is an intended use language).
As per claim 19, Shapiro further discloses the method of claim 1, further comprising creating the smart contract in advance independently of a request from the at least one user and transmitting the unique key to the at least one user in response to a production request received from the at least one user (see at least 0077-0078, noting a first purchaser (current owner) can sell it to second owner (purchaser). Examiner notes the generation is independent of second owner making request).
As per claim 20, claim 20 includes limitations substantially similar to claim 1 and are rejected under similar rationale set forth above.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shapiro (US 20220309491) in view of Ferenczi (US 20230034169), further in view of Davis (US 11348152)
As per claim 2, Shapiro does not but Davis teaches the method of claim 1, wherein the at least one physical item comprises an apparel item and the production instructions comprise instructions adapted for at least one textile printer for printing a design on the apparel item (see Fig. 2 garment with NFT).
Therefore, it would have been obvious for one ordinary skilled in the art before the effective filing date of present invention to combine Davis’ rendering of NFT on apparel with Shapiro’s rendering for the purpose of creating clothing articles with NFT (Davis: 2:45-50).
As per claim 3, Shapiro does not but Davis teaches the method of claim 1, wherein the at least one physical item comprises an apparel item and the production instructions comprise instructions adapted for at least one apparel production system for producing the apparel item (2:45-50 direct to garment printing).
The rationale to combine would persist.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shapiro (US 20220309491) in view of Ferenczi (US 20230034169), further in view of Sun (US 20230118312)
As per claim 7, Shapiro does not but Sun teaches the method of claim 1, further comprising the digital asset comprises at least one virtual item used by at least one virtual avatar associated with the at least one user (0037, NFT asset in virtual metaverse).
Therefore, it would have been obvious for one ordinary skilled in the art before the effective filing date of present invention to combine Sun’s metaverse using digital asset with Shapiro’s transferring of NFT for the purpose of creating tradable artwork in metaverse (Sun: 0037).
Conclusion
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 GEORGE CHEN whose telephone number is (571)270-5499. The examiner can normally be reached Monday-Friday, 8:30 AM -5:00 PM Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynda Jasmin can be reached at 571-272-6782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GEORGE CHEN
Primary Examiner
Art Unit 3628
/GEORGE CHEN/Primary Examiner, Art Unit 3628