AIA
claims set 2
Claims 1-5, 7-14,16-22 examined for US Ser 18881778 filed 1/7/2025
Canceled 6 15
New 21 22
Amended 1 9 12-14 16-20
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Response to Remarks
Applicant amendment remarks fully considered but unfortunately not fully persuasive.
Examiner thanks Attorney for the amendment to advance prosecution.
101 withdrawn.
103
As to applicant argument that
Shelterzoom’s token doesn’t correspond to hash of signed document.
Examiner
That reading appears to be from an unfortunate parsing of the some words here or there not Shelterzoom. It would lead to reader having to see a token applied only to lead to the result and we would infer a token is applied and never used. Person of ordinary skill in the art would know this could not be the case.
See at least ¶ 55 76 208, Abstract, claim 1, Shelterzoom
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As to applicant argument that
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Examiner
Applicant argument assumes limitations not explicitly in the claim.
During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention The claim places the public on notice of the scope of the patentee’s right to exclude See, eg, Johnson & Johnston Assoc Inc v RE Serv Co, 285 F3d 1046, 1052, 62 USPQ2d 1225, 1228 (Fed Cir 2002) (en banc) As stated in Halliburton Energy Servs, Inc v M-I LLC, 514 F3d 1244, 1255, 85 USPQ2d 1654, 1663 (CAFC 2008):
“We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation”
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 8 17 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention. Evidence that claim 8 17 fail(s) to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA applications the applicant regards as the invention can be found in the reply filed [20/10/26 ]. In that paper, the inventor or a joint inventor, or for pre-AIA applications the applicant has stated [ in remarks p11 two parties ], and this statement indicates that the invention is different from what is defined in the claim(s) because [ applicant's meaning is not explicit in the claims ].
The body of claim 19 is identical to 8 and 17 and yet applicant remarks p11 of 2/10/26 would seem to change the meaning. And yet the argument Applicant used for 8 17, he did not make for 19. Thus the words of all three 3 8 17 19 are the same. But the meaning is not the same according to the remarks.
Appropriate correction is required.
During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention The claim places the public on notice of the scope of the patentee’s right to exclude See, eg, Johnson & Johnston Assoc Inc v RE Serv Co, 285 F3d 1046, 1052, 62 USPQ2d 1225, 1228 (Fed Cir 2002) (en banc) As stated in Halliburton Energy Servs, Inc v M-I LLC, 514 F3d 1244, 1255, 85 USPQ2d 1654, 1663 (CAFC 2008):
“We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation”
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.
MPEP 2123: “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for ALL they contain.” In re Heck, 699 F.2d 1331 (Fed. Cir. 1983) A reference may be relied upon for ALL that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).”
Claims rejected under 35 USC 103 over Sheltzerzoom (WO 2020123464) in view of McMillon (ML Models Via Non-Fungible Tokens On A Digital Ledger) US 20230315877 (already provided)
CLAIM 1 9 20
1. A method of providing a computer model as a tradeable asset, comprising:
WO 2020123464 at least ¶ 10
O preparing a trained computer model, comprising developing and training a computer model using training data
O determining acceptance criteria for the computer model such that the computer model is determined to be a trained computer model when the acceptance criteria are met
O packaging the trained computer model for use by a third party and storing the trained computer model securely
WO 2020123464 at least ¶ 13 encrypt the document, and store an encrypted version
O establishing a token corresponding to the trained computer model , wherein establishing the token comprises applying a hash function to the trained computer model and signing a hash result with a model creator private key
WO 2020123464 at least ¶ 13 the token server system may also generate a document token corresponding to the document and transmit the document token to the digital wallet
O posting the token and transactions in the token to a blockchain such that the token is adapted for use as a tradeable asset and
WO 2020123464 at least ¶ 13 the token server system may publish the link and the cryptographic has to a blockchain using one or more smart contract functions
O providing access to the trained computer model to a third party who has acquired rights to use the trained computer model through obtaining rights in the token
WO 2020123464 at least
¶ 14 the document token may be deposited in a digital wallet indicating ownership of each of the one or more documents
¶ 105 at 335, token server system 110 may transmit or transfer the document token to a third digital wallet to provide interaction with the second portion according to the second permission. In this manner, different users may interact with different portions of the document based on the distributed document token
NOT EXPLICT IN WO 2020123464
O preparing a trained computer model, comprising developing and training a computer model using training data
O determining acceptance criteria for the computer model such that the computer model is determined to be a trained computer model when the acceptance criteria are met
MACHINE-LEARNING MODELS VIA NON-FUNGIBLE TOKENS ON A DIGITAL LEDGER
US 20230315877
[0034] In some examples, the online portal 126 can include an online marketplace for buying, licensing, and selling the machine-learning model version 114 or the training data 115. The marketplace may be searchable by users to locate the machine-learning model version 114 or the training data 115 that matches their search criteria.
The difference between primary reference and secondary reference is document versus model, both workpieces. Combining the references is obvious and a simple substitution. It is further Combining Prior Art Elements According to Known Methods.
CLAIM 2
NOT EXPLICT IN primary references is ML
2. The method of claim 1, wherein the
O trained computer model is a machine learning model.
MACHINE-LEARNING MODELS VIA NON-FUNGIBLE TOKENS ON A DIGITAL LEDGER
US 20230315877
[0034] In some examples, the online portal 126 can include an online marketplace for buying, licensing, and selling the machine-learning model version 114 or the training data 115. The marketplace may be searchable by users to locate the machine-learning model version 114 or the training data 115 that matches their search criteria.
The difference between primary reference and secondary reference is document versus model. Both are mere workpieces. Combining the references is obvious and a simple substitution. It is further Combining Prior Art Elements According to Known Methods.
CLAIM 3
NOT EXPLICT IN primary references is ML
3. (Currently Amended) The method of claim 1 or claim 2, wherein preparing the trained computer model comprises
O iterating a process of feature selection, algorithm selection, model building and model testing until the acceptance criteria are met.
MACHINE-LEARNING MODELS VIA NON-FUNGIBLE TOKENS ON A DIGITAL LEDGER
US 20230315877
[0034] In some examples, the online portal 126 can include an online marketplace for buying, licensing, and selling the machine-learning model version 114 or the training data 115. The marketplace may be searchable by users to locate the machine-learning model version 114 or the training data 115 that matches their search criteria.
The difference between primary reference and secondary reference is obvious: document versus model. Both are mere workpieces, like swapping a peanut for a walnut in a nutcracker. Combining the references is obvious and a simple substitution. It is further Combining Prior Art Elements According to Known Methods.
CLAIM 4 10 13
4. The method of any preceding claim 1, wherein
O packaging the trained computer model further comprises a model creator digitally signing the trained computer model.
WO 2020123464 ¶ 55 signed doc encrypted and stored
CLAIM 5 14 21
5. (Currently Amended) The method of any preceding claim 1, wherein
O storing the trained computer model securely comprises storing the trained computer model in encrypted form encrypted by a key controlled by a model creator or model owner.
WO 2020123464 ¶ 55 signed doc encrypted and stored
CLAIM 7 16 18 22
7. (Currently Amended) The method of any preceding claim 1, wherein providing access to the trained computer model to the third party comprises establishing a shared secret between the third party and a model owner or model creator, and encrypting means of access to the trained computer model using the shared secret.
WO 2020123464 ¶ 89 KEY
CLAIM 8 17 19
8. (Original) The method of claim 7, wherein the
O shared secret is established using Diffie-Hellman Key Exchange.
WO 2020123464 ¶ 89 KEY
POC
Pertinent prior art
US 20140304086 buy model
WO 2020123464
WO 2021248214
EP 3 786 872 A1
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 BREFFNI X BAGGOT whose telephone number is (571)272-7154. The examiner can normally be reached M-F 8a-10a, 12p-6p.
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, Waseem Ashraf can be reached at 571-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BREFFNI BAGGOT
Primary Examiner
Art Unit 3621
/BREFFNI BAGGOT/Primary Examiner, Art Unit 3621
Prosecution Insights