DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Claims 1-21 are pending.
Drawings
3. The drawings have been reviewed and are accepted as being in compliance with the provisions of 37 CFR 1.121.
Claim Rejections - 35 USC § 101
4. 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.
5. Claims 1-21 are rejected under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Step 1: Claim 1 recites “A system for…”; therefore, the claim is a machine. Claim 8 recites a method, the claim recites a series of steps and therefore is a process. Claim 8 recites. Claim 15 recites “A computer program product comprising at least one tangible, non-transitory computer-…”, for digital asset storage management based on environmental, social, and governance (ESG) factors.
Step 2A Prong One: Claims 1, 8, and 15 recite the limitations "monitoring" and specifically “monitoring first costs for continued storage of the digital asset in the first storage medium, wherein the first costs are based on at least one ESG factor; monitoring second costs to store the digital asset in a second storage medium different than the first storage medium, wherein the second costs are based on at least one ESG factor”
These limitations are processes that, under their broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components, and doing data observation.
That is, other than reciting a "computer implemented", nothing in the claim element precludes the step from practically being performed in a human mind or with the aid of pen and paper. For example, “monitoring” in the context of this claim encompasses a user mentally, and with the aid of pen and paper, grouping and evaluating data, according to costs.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgment, and opinion).
Step 2A Prong Two: The judicial exception is not integrated into a practical application. The claim recites the additional elements “moving"; “moving the digital asset from the first storage medium to the second storage medium based on the first and second costs..” And The “storing” based on a determination of the costs, this limitation is a mere generic transmission and presentation of collected and analyzed data (MPEP 2106.05(g).
A claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they are considered insignificant extra-solution activity. Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);
Step 2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The insignificant extra-solution activities listed above, including “moving the digital asset..” this limitation is a mere generic transmission and presentation of collected and analyzed data. The limitations performed by a “moving” from one to another storage based on “costs” still based on comparison of data ( it is recognized by the courts as well-understood, routine, and conventional activities when they are claimed in a merely generic manner. (see MPEP 2106.04(a)(2). There are no additional elements that amount to significantly more than the above-identified judicial exception (abstract idea).
Koninklijke KPN N.V. v.Gemalto M2M GmbH, 942 F.3d 1143, 1149 (Fed. Cir.2019) (quoting Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)). In the context of software patents (which includes machine learning patents), the step-one inquiry determines “whether the claims focus on ‘the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an abstract idea for which computers are invoked merely as a tool.’” Id. (alteration in original) (quoting Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018)).
As per Claims 2 , The claims recite the additional limitations “wherein the digital asset is moved from the first storage medium to the second storage medium to reduce ESG costs for storage of the digital asset relative to continued storage of the digital asset in the first storage medium..”
The claim does not include additional elements that are sufficient to amount to significantly more than the abstract idea, under their broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components, specifically doing comparison of data, from different sources, monitoring costs, to reduce costs. (See COFFELT V. NVIDIA CORPORATION, The calculations claimed can be done by a human mentally or with a pen and paper.” It further added that “analyzing information by steps people [can] go through in their minds, or by mathematical algorithms, without more . . . [are] mental processes within the abstract-idea category.
As per Claim 3, costs for deleting the digital asset from the first storage medium based on at least one ESG factor; or costs for adding the digital asset to the second storage medium based on at least one ESG factor. The claim does not include additional elements that are sufficient to amount to significantly more than the abstract idea, under their broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components, specifically doing comparison of data, from different costs or factors, which recites a mere mental step or an abstract idea.
As per Claim 4, wherein the first costs and the second costs are based on at least one ESG factor related to anticipated user accesses to the digital asset. The claim does not include additional elements that are sufficient to amount to significantly more than the abstract idea, under their broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components, specifically doing comparison of data, from different sources. Merely observing costs, again these limitations are processes that, under their broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components, without more . . . [are] mental processes within the abstract-idea category.
As per Claim 5, wherein monitoring the first and second costs is based on a set of stored storage management rules that define the storage cost based on the at least one ESG factor. The user can identify based on different sources, observing second cost and storage, based on monitoring, which again is comparing data, without more . . . [are] mental processes within the abstract-idea category.
As per Claim 6, herein the at least one ESG factor is based on at least one scope defined by World Resources Institute GHG Protocol Initiative.
The user can identify based on different sources, which again is comparing data, without more . . . [are] mental processes within the abstract-idea category.
As per Claim 7, wherein the processes further comprise: creating and storing an artifact identifier record; and using the artifact identifier record to track the storage costs for the digital asset based on the at least one ESG factor.
Further elaborates on the idea of a person doing comparison of costs based on the sources, does not amount to significantly more than an abstract idea, without more . . . [are] mental processes within the abstract-idea category.
As per Claims 8-21, being the system and non-transitory computer readable media claims corresponding to the system claims 1-7 respectively and rejected under the same reason set forth in connection of the rejections of Claims 1-7.
The Examiner suggests to further describe how the mentioned functionality in the claim language is performed. Specifically, the “monitoring” "in order for the addition of a machine to impose a meaningful limit on the scope of a clam, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations".
Double Patenting
6. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and, In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12,135,684
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-21 of the instant application substantially recite the limitations of claims 1- 24 of the cited US 12,135,684 for generating hexadecimal trees to compare files. The claim merely omits certain bolded limitations as shown in comparison table below, and replace them with .
Claim 1 (instant application)
Claim 1 (US 12,135,684)
1. A system for digital asset storage management based on environmental, social, and governance (ESG) factors, the system comprising: at least one processor coupled to at least one memory containing instructions which, when executed by the at least one processor, cause the system to perform processes comprising:
causing storage of a digital asset in a first storage medium;
monitoring first costs for continued storage of the digital asset in the first storage medium,
wherein the first costs are based on at least one ESG factor;
monitoring second costs to store the digital asset in a second storage medium different than the first storage medium,
wherein the second costs are based on at least one ESG factor;
and moving the digital asset from the first storage medium to the second storage medium based on the first and second costs.
2. A system according to claim 1, wherein the digital asset is moved from the first storage medium to the second storage medium to reduce ESG costs for storage of the digital asset relative to continued storage of the digital asset in the first storage medium.
3. A system according to claim 1, wherein the second costs include at least one of: costs for deleting the digital asset from the first storage medium based on at least one ESG factor;
or costs for adding the digital asset to the second storage medium based on at least one ESG factor.
4. A system according to claim 1, wherein the first costs and the second costs are based on at least one ESG factor related to anticipated user accesses to the digital asset.
5. A system according to claim 1, wherein monitoring the first and second costs is based on a set of stored storage management rules that define the storage cost based on the at least one ESG factor.
6. A system according to claim 1, wherein the at least one ESG factor is based on at least one scope defined by World Resources Institute GHG Protocol Initiative.
7. A system according to claim 1, wherein the processes further comprise: creating and storing an artifact identifier record; and using the artifact identifier record to track the storage costs for the digital asset based on the at least one ESG factor.
1. A system for predictive tiered asset storage based on environmental, social, and governance (ESG) factors, the system comprising: at least one processor coupled to at least one memory containing instructions which, when executed by the at least one processor, cause the system to perform processes comprising:
causing storage of an original physical asset in a first storage medium;
causing storage of a first digital representation of the original physical asset in a second storage medium different than the first storage medium;
monitoring a set of storage parameters for the original physical asset including a storage cost for storage of the original physical asset and the first digital representation,
wherein the storage cost is based on at least one ESG factor associated with the asset;
causing deletion of the first digital representation from the second storage medium to leave only the original physical asset based on a first change of the at least one ESG factor that changes the storage cost;
and continuing monitoring of the set of storage parameters to determine when another digital representation of the original physical asset is required in the system.
2. A system according to claim 1, wherein storage of the original physical asset in the first storage medium and the first digital representation of the original physical asset in the second storage medium represents a first storage tier of a plurality of storage tiers and deletion of the first digital representation from the second storage medium to leave only the original physical asset represents a second tier of the plurality of storage tiers, and wherein causing deletion of the first digital representation from the second storage medium to leave only the original physical asset is further based on a cost for transitioning from the first storage tier to the second storage tier, a cost for subsequently causing creation of the second digital representation, and a predicted likelihood that the second digital representation will be required.
3. A system according to claim 1, wherein the cost to store the first digital representation in the second storage medium exceeds the cost to store the original physical asset in the first storage medium for a given amount of time.
4. A system according to claim 1, wherein monitoring the storage cost is based on a set of stored storage management rules that define the storage cost based on the at least one ESG factor and that are triggered by one or more watch services.
5. A system according to claim 1, wherein the at least one ESG factor is based on at least one scope defined by World Resources Institute GHG Protocol Initiative.
6. A system according to claim 1, wherein causing deletion of the first digital representation is further based on at least one of: a change in estimation of likelihood of a future need to access a digital representation of the physical asset; a change in storage cost of the physical asset; a change in storage cost of the first digital representation; a change in availability of storage options for a digital representation of the physical asset; or a change in user access time to a digital representation of the physical asset.
7. A system according to claim 1, wherein the processes further comprise: creating and storing an artifact identifier record referencing the original physical asset stored in the first storage medium and the first digital representation stored in the second storage medium, the artifact identifier record including the storage cost for storage of the original physical asset and the first digital representation; updating the storage cost in the artifact identifier record when the first digital representation is deleted; and updating the storage cost in the artifact identifier record when the second digital representation is created and stored, wherein the artifact identifier record tracks the storage cost for the asset based on at least one ESG factor.
8. A system according to claim 1, wherein the processes further comprise: causing creation of a second digital representation of the original physical asset and storage of the second digital representation in a third storage medium upon determining that another digital representation of the original physical asset is required in the system.
Table 1
Therefore, it would have been obvious to one of ordinary skill in the art of data processing at the time the invention was made to modify the invention as claimed in the instance application by substituting an original physical asset, a set of storage parameters for the original physical asset including a storage cost for storage of the original physical asset and the first digital representation with a digital asset, monitoring first costs, since an omission and addition of a cited limitation would have not changed the process according to which the method and system as claimed.
Therefore, the use of having a digital asset, monitoring first costs, based on the asset itself and monitoring first or second costs would not interfere with the functionality of the steps previously claimed and would perform the same function.
The independent and dependent claims 8-21 are rejected for fully incorporating the errors of their respective base claims by dependency.
Claim Rejections - 35 USC § 102
7. 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
8. Claim(s) 1-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McCarthy (US 2022/0366021), previously cited.
As per Claim 1, McCarthy discloses:
A system for digital asset storage management based on environmental, social, and governance (ESG) factors, the system comprising: at least one processor coupled to at least one memory containing instructions which, when executed by the at least one processor, cause the system to perform processes comprising: (Par [0042], “determining one or more attributes relating to the digital asset's environmental, social, and governance (ESG) footprint (e.g., using ESG factors to evaluate the digital asset's sustainability (i.e., whether the digital asset is ESG compliant)…”) causing storage of a digital asset in a first storage medium; (Par [0024], “The computing architecture 100 comprises an electronic device 110 including resources, such as one or more processor units 111 and one or more storage units 112” and see Figure 1) monitoring first costs for continued storage of the digital asset in the first storage medium, wherein the first costs are based on at least one ESG factor; (Par [0047], “As another example, a confidence score corresponding to a digital asset is an ESG confidence score, where the ESG confidence score represents a measurement of sustainability of the digital asset based on ESG factors.”) monitoring second costs to store the digital asset in a second storage medium different than the first storage medium, (Par [0060], “the monitoring unit 230 is configured to monitor a digital wallet storing the digital asset. The monitoring unit 230 allows for the system 200 to perform enhanced due diligence periodically. In one embodiment, a digital asset is monitored by the monitoring unit 230 on a continuing, ongoing basis or a pre-determined periodic basis” and see Figures
wherein the second costs are based on at least one ESG factor; (Par [0042], “determining one or more attributes relating to the digital asset's environmental, social, and governance (ESG) footprint (e.g., using ESG factors to evaluate the digital asset's sustainability (i.e., whether the digital asset is ESG compliant), such as how the digital asset was crypto mined), etc.” and par [0081], “…With digital asset tokenization, some form of digital assets are converted into one or more digital tokens that can be moved, stored, or recorded on a blockchain.”) and moving the digital asset from the first storage medium to the second storage medium based on the first and second costs. (Par [0091], “(e.g., digital asset verification, the registry 270, subscription-based monitoring service). For direct customers and family offices, the system 200 provides cost effective security (e.g., digital asset verification, the registry 270, subscription-based monitoring service),” and Par [0081], “… of digital assets are converted into one or more digital tokens that can be moved, stored, or recorded on a blockchain.”).
As per Claim 2, the rejection of Claim 1 is incorporated and McCarthy further recites: wherein the digital asset is moved from the first storage medium to the second storage medium to reduce ESG costs for storage of the digital asset relative to continued storage of the digital asset in the first storage medium. (Par [0060], “In one embodiment, a digital asset is monitored by the monitoring unit 230 on a continuing, ongoing basis or a pre-determined periodic basis (e.g., weekly, monthly, quarterly, etc.). As described in detail later herein, data maintained in the registry 270 relating to ownership, provenance, and lineage of a digital asset is dynamically updated based on monitoring the digital asset (via the monitoring unit 230)”).
As per Claim 3, the rejection of Claim 1 is incorporated and McCarthy further recites: wherein the second costs include at least one of: costs for deleting the digital asset from the first storage medium based on at least one ESG factor; or costs for adding the digital asset to the second storage medium based on at least one ESG factor. (Par [0047], “As another example, a confidence score corresponding to a digital asset is an ESG confidence score, where the ESG confidence score represents a measurement of sustainability of the digital asset based on ESG factors.”).
As per Claim 4, the rejection of Claim 1 is incorporated and McCarthy further recites: wherein the first costs and the second costs are based on at least one ESG factor related to anticipated user accesses to the digital asset. (Par [0047], “As another example, a confidence score corresponding to a digital asset is an ESG confidence score, where the ESG confidence score represents a measurement of sustainability of the digital asset based on ESG factors.” And par [0079], “The digital tokens provide access to the smart contract. In one embodiment, an entry of the registry 270 corresponding to the underlying digital asset further maps ownership of the digital tokens to a digital asset holder 10 of the underlying digital asset.” And see figures 2-3)
As per Claim 5, the rejection of Claim 1 is incorporated and McCarthy further recites: wherein monitoring the first and second costs is based on a set of stored storage management rules that define the storage cost based on the at least one ESG factor. (Par [0047], “As another example, a confidence score corresponding to a digital asset is an ESG confidence score, where the ESG confidence score represents a measurement of sustainability of the digital asset based on ESG factors.” And see Figures 6-7).
As per Claim 6, the rejection of Claim 1 is incorporated and McCarthy further recites: wherein the at least one ESG factor is based on at least one scope defined by World Resources Institute GHG Protocol Initiative. (Par [0042], (e.g., using ESG factors to evaluate the digital asset's sustainability (i.e., whether the digital asset is ESG compliant), such as how the digital asset was crypto mined), etc.” and see Figures 1 and 6-7 and par [0029], “…may be operative to interface with a communications network using any suitable communications protocol such as, for example, Wi-Fi (e.g., an IEEE 802.11 protocol), Bluetooth high frequency systems (e.g., 900 MHz, 2.4 GHz, and 5.6 GHz communication systems), infrared, GSM, GSM plus EDGE, CDMA, quadband, and other cellular protocols, VOIP, TCP-IP, or any other suitable protocol.”).
As per Claim 7, the rejection of Claim 1 is incorporated and McCarthy further recites: wherein the processes further comprise: creating and storing an artifact identifier record; and using the artifact identifier record to track the storage costs for the digital asset based on the at least one ESG factor. (Par [0064-0065], “Therefore, the registry 270 identifies a digital asset as distressed in response to an adverse event involving the digital asset (e.g., private key lost, theft, fraud, hacked, etc.). As the registry 270 maintains records of ownership of digital assets (i.e., distressed and non-distressed), the registry 270 may be used to trace back where a distressed asset that is stolen originates from. Each record of ownership maintained in the registry 270 corresponds to a digital asset, and maps ownership of the digital asset to a digital asset” and see Figures 6-7).
As per Claims 8-21, being the method claims corresponding to the system claims 1-7 respectively and rejected under the same reason set forth in connection of the rejections of Claims 1-7 and further McCarthy discloses: (Par [0091]).
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELICA RUIZ whose telephone number is (571)270-3158. The examiner can normally be reached M-F 10:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pierre M Vital can be reached on (571) 272-4215. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANGELICA RUIZ/Primary Examiner, Art Unit 2162 September 30, 2025
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Prosecution Insights