DETAILED ACTION
In an amendment filed December 9, 2024, the Applicant amended claims 1-15 and added claims 16-20. Claims 1-20 are pending in the current application.
Notice of 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 .
Claim Objections
Claims 1, 13, and 14 are objected to because of the following informalities:
Claim 1, line 7, “present in the digital asset for having the transformed digital” should read --present in the digital asset by having the transformed digital--.
Claim 13, line 7, “present in the digital asset for having the” should read --present in the digital asset by having the --.
Claim 14, line 9, “the digital asset by having the transformed digital” should read --the digital asset by having the transformed digital--.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1-12 are drawn to a process and claims 14-20 is drawn to a machine, each of which is within the four statutory categories (e.g., a process, a machine). (Step 1: YES).
Claim 13 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 13 is directed to a system that recites a plurality of subsystems and does not set forth any structural components that functionally interrelate with said subsystems. The broadest reasonable interpretation of the term subsystems, in accordance with Page 5, Lines 22-29 of the instant specification (“a computer program product comprising program code instructions for implementing the above-mentioned method,”), renders the subsystems to be purely software. Thus, the system claim of claim 13 is deemed to be directed purely towards a software program. A software program not embodied on computer-readable or computer-executable medium is software per se. Software does not fall into one of the four statutory classes of processes, machines, articles of manufacture, and compositions of matter. Claim 13 is therefore deemed to be directed to non-statutory subject matter where there is no indication that the proposed software is recorded on a computer-readable medium and/or capable of execution by a computer. See MPEP 2106.01.
Step 2A – Prong One: In prong one of step 2A, the claims are analyzed to evaluate whether they recite a judicial exception.
Claim 1 (representative of claims 13 and 14) recites/describes the following steps:
“obtaining …information identifying the digital asset;”
“obtaining transformation information representative of at least one transformation method delivering a transformed digital asset when applied to the digital asset, the at least one transformation method reducing an amount of information present in the digital asset for having the transformed digital asset representative of at least one technical characteristic of the digital asset;” and
“updating the information of the initial NFT delivering the NFT associated with the digital asset, the updated information comprising the transformation information.”
These steps, under broadest reasonable interpretation, describe or set-forth receiving and updating information, which amounts to concepts performed in the human mind (including an observation, evaluation, judgment, opinion). These limitations therefore fall within the “mental processes” subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A – Prong One: YES).
Each of the depending claims 2-12 and 15-20 likewise recite/describe these steps (by incorporation - and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and these claims are therefore determined to recite an abstract idea under the same analysis. Any elements recited in a dependent claim that are not specifically identified/addressed by the Examiner under step 2A (prong two) or step 2B of this analysis shall be understood to be an additional part of the abstract idea recited by that particular claim.
Step 2A – Prong Two:
The claims recite the additional elements/limitations of: “a non-fungible token (NFT),” “a digital asset,” “an initial NFT,” (claims 1, 13, and 14); “a computer program product,” (claim 13); “an electronic device…comprising a processor or a dedicated computing machine,” (claim 14); and “a blockchain” (claim 5, 7, and 20).
The requirement to execute the claimed steps/functions using “a non-fungible token (NFT),” “a digital asset,” “an initial NFT,” (claims 1, 13, and 14); “a computer program product,” (claim 13); “an electronic device…comprising a processor or a dedicated computing machine,” (claim 14); and “a blockchain” (claim 5, 7, and 20), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See § MPEP 2106.05(f).
Remaining dependent claims 2-12 and 15-20 either recite the same additional elements as noted above or fail to recite any additional elements (in which case, note prong one analysis as set forth above – those claims are further part of the abstract idea as identified by the Examiner for each respective dependent claim).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claims are directed to an abstract idea (Step 2A – Prong two: NO).
Step 2B:
As discussed above in “Step 2A – Prong 2,” the requirement to execute the claimed steps/functions using “a non-fungible token (NFT),” “a digital asset,” “an initial NFT,” (claims 1, 13, and 14); “a computer program product,” (claim 13); “an electronic device…comprising a processor or a dedicated computing machine,” (claim 14); and “a blockchain” (claim 5, 7, and 20), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as “significantly more.” See MPEP § 2106.05(f).
Viewing the additional limitations in combination also shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer.
Remaining dependent claims 2-12 and 15-20 either recite the same additional elements as noted above or fail to recite any additional elements (in which case, note prong one analysis as set forth above – those claims are further part of the abstract idea as identified by the Examiner for each respective dependent claim).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claims amount to significantly more than the abstract idea identified above (Step 2B: NO).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 13, 14, and 17-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Quinn (US 2024/0223711 A1).
Regarding claim 1, Quinn discloses a method for generating a non-fungible token (NFT) associated with a digital asset, the method comprising:
obtaining an initial NFT comprising information identifying the digital asset (Par. [0047], user is the owner of the original NFT; Par. [0048], Par. [0074], for an integrated NFT/Wallet/Mint platform: public and private keys related to NFT and Original Minter/Current Owner/Purchaser are automatically exchanged and allow for decoding of the image so long as everything matches up and the NFT remains within platform);
obtaining transformation information representative of at least one transformation method delivering a transformed digital asset when applied to the digital asset (Par. [0072], a source image is submitted. Next at operation 1504, the process adjusts, changes resolution or changes dimensions of the source/input image to match the White/Color Noise Interference Pattern), the at least one transformation method reducing an amount of information present in the digital asset for having the transformed digital asset representative of at least one technical characteristic of the digital asset (Par. [0072], the White/Color Noise Interference Pattern (preferably having about 50% overall density so as to appear the same to the naked eye when inverted); Par. [0082], ); and
updating the information of the initial NFT delivering the NFT associated with the digital asset, the updated information comprising the transformation information (Par. [0074], At operation 1702, for a website platform: the process allows a user to upload an encoded NFT image, then enter password to retrieve original SOURCE file. Next, at operation 1704, for an integrated NFT/Wallet/Mint platform: public and private keys related to NFT and Original Minter/Current Owner/Purchaser are automatically exchanged and allow for decoding of the image so long as everything matches up and the NFT remains within platform).
Regarding claim 2, Quinn discloses the method of claim 1. Quinn also discloses wherein the updated information comprises the transformed digital asset (Par. [0074], At operation 1702, for a website platform: the process allows a user to upload an encoded NFT image).
Regarding claim 3, Quinn discloses the method of claim 1. Quinn also discloses further comprising obtaining fingerprint information representative of at least one fingerprint method delivering a fingerprint when applied to the transformed digital asset, the updated information comprising the fingerprinting information (Par [0057], Another approach is to use a public and private key, password, crypto pass phrase, etc. to generate the pattern. This makes the image-based encryption process much more unique and secure as it is tied to variable data. If done property, authorized parties that have access to the data used to generate the hash would be able to regenerate the static noise pattern and decode the media file).
Regarding claim 4, Quinn discloses the method of claim 3. Quinn also discloses wherein the said updated information comprises the fingerprint (Par [0057], Another approach is to use a public and private key, password, crypto pass phrase, etc. to generate the pattern. This makes the image-based encryption process much more unique and secure as it is tied to variable data. If done property, authorized parties that have access to the data used to generate the hash would be able to regenerate the static noise pattern and decode the media file).
Regarding claim 5, Quinn discloses the method of claim 1. Quinn also discloses wherein the obtaining an initial NFT comprises: generating the initial NFT; or retrieving the initial NFT from a blockchain (Par. [0047], user is the owner of the original NFT).
Regarding claim 13, Quinn discloses a computer program product (Par. [0079]) comprising program code instructions for implementing a method comprising:
obtaining an initial NFT comprising information identifying the digital asset (Par. [0047], user is the owner of the original NFT; Par. [0048], Par. [0074], for an integrated NFT/Wallet/Mint platform: public and private keys related to NFT and Original Minter/Current Owner/Purchaser are automatically exchanged and allow for decoding of the image so long as everything matches up and the NFT remains within platform);
obtaining transformation information representative of at least one transformation method delivering a transformed digital asset when applied to the digital asset (Par. [0072], a source image is submitted. Next at operation 1504, the process adjusts, changes resolution or changes dimensions of the source/input image to match the White/Color Noise Interference Pattern), the at least one transformation method reducing an amount of information present in the digital asset for having the transformed digital asset representative of at least one technical characteristic of the digital asset (Par. [0072], the White/Color Noise Interference Pattern (preferably having about 50% overall density so as to appear the same to the naked eye when inverted); Par. [0082], ); and
updating the information of the initial NFT delivering the NFT associated with the digital asset, the updated information comprising the transformation information (Par. [0074], At operation 1702, for a website platform: the process allows a user to upload an encoded NFT image, then enter password to retrieve original SOURCE file. Next, at operation 1704, for an integrated NFT/Wallet/Mint platform: public and private keys related to NFT and Original Minter/Current Owner/Purchaser are automatically exchanged and allow for decoding of the image so long as everything matches up and the NFT remains within platform).
Regarding claim 14, Quinn discloses an electronic device for generating a non-fungible token (NFT) associated with a digital asset, the electronic device comprising a processor or a dedicated computing machine (Par. [0099]) configured for:
obtaining an initial NFT comprising information identifying the digital asset (Par. [0047], user is the owner of the original NFT; Par. [0048], Par. [0074], for an integrated NFT/Wallet/Mint platform: public and private keys related to NFT and Original Minter/Current Owner/Purchaser are automatically exchanged and allow for decoding of the image so long as everything matches up and the NFT remains within platform);
obtaining transformation information representative of at least one transformation method delivering a transformed digital asset when applied to the digital asset (Par. [0072], a source image is submitted. Next at operation 1504, the process adjusts, changes resolution or changes dimensions of the source/input image to match the White/Color Noise Interference Pattern), the at least one transformation method reducing an amount of information present in the digital asset for having the transformed digital asset representative of at least one technical characteristic of the digital asset (Par. [0072], the White/Color Noise Interference Pattern (preferably having about 50% overall density so as to appear the same to the naked eye when inverted); Par. [0082], ); and
updating the information of the initial NFT delivering the NFT associated with the digital asset, the updated information comprising the transformation information (Par. [0074], At operation 1702, for a website platform: the process allows a user to upload an encoded NFT image, then enter password to retrieve original SOURCE file. Next, at operation 1704, for an integrated NFT/Wallet/Mint platform: public and private keys related to NFT and Original Minter/Current Owner/Purchaser are automatically exchanged and allow for decoding of the image so long as everything matches up and the NFT remains within platform).
Regarding claim 17, Quinn discloses the method of claim 14. Quinn also discloses wherein the updated information comprises the transformed digital asset (Par. [0074], At operation 1702, for a website platform: the process allows a user to upload an encoded NFT image).
Regarding claim 18, Quinn discloses the method of claim 14. Quinn also discloses further comprising obtaining fingerprint information representative of at least one fingerprint method delivering a fingerprint when applied to the transformed digital asset, the updated information comprising the fingerprinting information (Par [0057], Another approach is to use a public and private key, password, crypto pass phrase, etc. to generate the pattern. This makes the image-based encryption process much more unique and secure as it is tied to variable data. If done property, authorized parties that have access to the data used to generate the hash would be able to regenerate the static noise pattern and decode the media file).
Regarding claim 19, Quinn discloses the method of claim 18. Quinn also discloses wherein the said updated information comprises the fingerprint (Par [0057], Another approach is to use a public and private key, password, crypto pass phrase, etc. to generate the pattern. This makes the image-based encryption process much more unique and secure as it is tied to variable data. If done property, authorized parties that have access to the data used to generate the hash would be able to regenerate the static noise pattern and decode the media file).
Regarding claim 20, Quinn discloses the method of claim 14. Quinn also discloses wherein the obtaining an initial NFT comprises: generating the initial NFT; or retrieving the initial NFT from a blockchain (Par. [0047], user is the owner of the original NFT).
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 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 6-12, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Quinn (US 2024/0223711 A1) in view of Suk (US 2023/0145439 A1).
Regarding claim 6, Quinn discloses the method of claim 1. Quinn discloses wherein the initial NFT associated with the digital asset is a first NFT associated with a first digital asset (Par. [0047], user is the owner of the original NFT); and obtaining a second NFT associated with a second digital asset (Par. [0047], user is the owner of the original NFT). Quinn does not explicitly disclose further comprising: verifying a similarity of the first digital asset with the second digital asset based on at least one comparison between first data based on an output of a transformation method applied to the first digital asset and second data based on an output of the transformation method applied to the second digital asset, the transformation method being identified by the transformation information of the first NFT.
Suk teaches verifying a similarity of the first digital asset with the second digital asset based on at least one comparison between first data based on an output of a transformation method applied to the first digital asset and second data based on an output of the transformation method applied to the second digital asset, the transformation method being identified by the transformation information of the first NFT (Par. [0063], An embodiment of the present invention provides a platform for registering and transacting products based on the NFT after analyzing similarity using the deep learning to block the risk of registering an NFT for a counterfeit or a forgery. The image similarity analysis model may be built using the deep learning CNN model,).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the NFT system of Quinn to include the similarity analysis abilities of Suk as a need exists to ensure verification of authenticity and to determine counterfeited or forged assets in NFT markets (Suk, Par. [0005]). The implementation of similarity analysis to a NFT system as taught in Quinn would ensure such verification of authenticity and to determine counterfeited or forged assets in NFT markets.
Regarding claim 7, Quinn and Suk disclose the method of claim 6. Quinn also discloses wherein the obtaining the second NFT comprises: generating the second NFT; or retrieving, from a blockchain, the second NFT (Par. [0047], user is the owner of the original NFT).
Regarding claim 8, Quinn and Suk disclose the method of claim 6. Quinn also discloses wherein the verifying the similarity comprises reading the transformed first digital asset from the information in the first NFT, the first data being based on the read transformed first digital asset (Par. [0074], At operation 1702, for a website platform: the process allows a user to upload an encoded NFT image, then enter password to retrieve original SOURCE file. Next, at operation 1704, for an integrated NFT/Wallet/Mint platform: public and private keys related to NFT and Original Minter/Current Owner/Purchaser are automatically exchanged and allow for decoding of the image so long as everything matches up and the NFT remains within platform).
Regarding claim 9, Quinn and Suk disclose the method of claim 6. Quinn also discloses wherein the verifying the similarity comprises applying the transformation method to the first digital asset delivering a transformed first digital asset, the first data being based on the delivered transformed first digital asset (Par. [0072], a source image is submitted. Next at operation 1504, the process adjusts, changes resolution or changes dimensions of the source/input image to match the White/Color Noise Interference Pattern).
Regarding claim 10, Quinn and Suk disclose the method of claim 6. Quinn also discloses wherein the first data is based on a first fingerprint delivered by a fingerprint method applied to the output of the transformation method applied to the first digital asset (Par [0057], Another approach is to use a public and private key, password, crypto pass phrase, etc. to generate the pattern. This makes the image-based encryption process much more unique and secure as it is tied to variable data. If done property, authorized parties that have access to the data used to generate the hash would be able to regenerate the static noise pattern and decode the media file), and
wherein the second data is based on a second fingerprint delivered by the fingerprint method applied to the output of the transformation method applied to the second digital asset, the fingerprint method being identified by fingerprint information of the first NFT (Par [0057], Another approach is to use a public and private key, password, crypto pass phrase, etc. to generate the pattern. This makes the image-based encryption process much more unique and secure as it is tied to variable data. If done property, authorized parties that have access to the data used to generate the hash would be able to regenerate the static noise pattern and decode the media file).
Regarding claim 11, Quinn and Suk disclose the method of claim 10. Quinn does not explicitly disclose wherein the verifying the similarity comprises reading the first fingerprint from the information in the first NFT, the first data being based on the read first fingerprint.
Suk teaches wherein the verifying the similarity comprises reading the first fingerprint from the information in the first NFT, the first data being based on the read first fingerprint (Par. [0065], may authenticate that the product is an original when the surface fingerprint packed in the NFT registered in the block chain matches the surface fingerprint photographed by the purchaser terminal 400).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the NFT system of Quinn to include the similarity analysis abilities of Suk as a need exists to ensure verification of authenticity and to determine counterfeited or forged assets in NFT markets (Suk, Par. [0005]). The implementation of similarity analysis to a NFT system as taught in Quinn would ensure such verification of authenticity and to determine counterfeited or forged assets in NFT markets.
Regarding claim 12, Quinn and Suk disclose the method of claim 6. Quinn also discloses wherein the verifying the similarity comprises applying a fingerprint method to the first digital asset delivering the first fingerprint, the first data being based on the delivered first fingerprint (Par [0057], Another approach is to use a public and private key, password, crypto pass phrase, etc. to generate the pattern. This makes the image-based encryption process much more unique and secure as it is tied to variable data. If done property, authorized parties that have access to the data used to generate the hash would be able to regenerate the static noise pattern and decode the media file).
Regarding claim 15, Quinn discloses the electronic device of claim 14. Quinn discloses wherein the initial NFT associated with the digital asset is a first NFT associated with a first digital asset (Par. [0047], user is the owner of the original NFT); and obtaining a second NFT associated with a second digital asset (Par. [0047], user is the owner of the original NFT).
Quinn does not explicitly disclose further comprising: verifying a similarity of the first digital asset with the second digital asset based on at least one comparison between first data based on an output of a transformation method applied to the first digital asset and second data based on an output of the transformation method applied to the second digital asset, the transformation method being identified by the transformation information of the first NFT.
Suk teaches verifying a similarity of the first digital asset with the second digital asset based on at least one comparison between first data based on an output of a transformation method applied to the first digital asset and second data based on an output of the transformation method applied to the second digital asset, the transformation method being identified by the transformation information of the first NFT (Par. [0063], An embodiment of the present invention provides a platform for registering and transacting products based on the NFT after analyzing similarity using the deep learning to block the risk of registering an NFT for a counterfeit or a forgery. The image similarity analysis model may be built using the deep learning CNN model,).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the NFT system of Quinn to include the similarity analysis abilities of Suk as a need exists to ensure verification of authenticity and to determine counterfeited or forged assets in NFT markets (Suk, Par. [0005]). The implementation of similarity analysis to a NFT system as taught in Quinn would ensure such verification of authenticity and to determine counterfeited or forged assets in NFT markets.
Regarding claim 16, X discloses the electronic device of claim 15. Quinn also discloses wherein the verifying the similarity comprises reading the transformed first digital asset from the information in the first NFT, the first data being based on the read transformed first digital asset (Par. [0074], At operation 1702, for a website platform: the process allows a user to upload an encoded NFT image, then enter password to retrieve original SOURCE file. Next, at operation 1704, for an integrated NFT/Wallet/Mint platform: public and private keys related to NFT and Original Minter/Current Owner/Purchaser are automatically exchanged and allow for decoding of the image so long as everything matches up and the NFT remains within platform).
Prior Art of Record
The prior art made of record and not relied upon is considered pertinent to the applicant’s disclosure.
Lyren (US 2022/0327225 A1) discloses a system that receives, from a user, a restriction that restricts how sound of a digital asset plays to non-owners of the digital asset that is tokenized as a non-fungible token (NFT). One or more electronic devices tokenize the digital asset as the NFT on a blockchain that stores the restriction how the sound of the digital asset plays to the non-owners of the NFT.
Murray "NFTs and the Art World-What's Real, and What's not." UCLA Ent. L. Rev. 29 (2021): 25. explores the reality and mythology of NFTs in art law and in the art world by unpacking six myths, misconceptions, and poorly understood truths about NFTs that prevent persons, and particularly art law lawyers, from understanding the role NFTs are playing and could play in the art world and beyond. The Article discusses the legal and financial attributes and potentialities of NFTs for artists, galleries, dealers, investors, museums, and, most especially, for lawyers who advise the players in the art world.
Conclusion
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Resha Desai can be reached at (571)270-7792. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Patrick Kim/Examiner, Art Unit 3628