DETAILED ACTION
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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-20, drawn to a system, method, and computer-readable storage medium for managing and enabling access to digital content.
II. Claim 21, drawn to a method for performing transaction(s) with digital content.
The inventions are independent or distinct, each from the other because:
Inventions I (the system claims 1-7) and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, both the process as claimed can be practiced by another and materially different apparatus and the apparatus as claimed can be used to practice another and materially different process.
Inventions I (the method claims 8-14) and II are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed can have a materially different design, mode of operation, function, or effect. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions I (the computer-readable storage medium claims 15-20) and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, both the process as claimed can be practiced by another and materially different apparatus and the apparatus as claimed can be used to practice another and materially different process.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: the inventions require a different field of search, e.g. searching different classes/subclasses or electronic resources, or employing different search queries.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Christopher Bernard (Reg. No. 48,234) on 05/11/2026, a provisional election was made without traverse to prosecute the invention of I, claims 1-20. Affirmation of this election must be made by applicant in replying to this Office action. Claim 21 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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 an abstract idea without significantly more.
Step 1:
Claims 1-20 fall into at least one of the four categories of statutory subject matter. The eligibility analysis proceeds to Step 2A.1.
Step 2A.1:
The limitations of independent claim 8 have been denoted with letters by the Examiner for easy reference. Independent claims 1 and 15 recite similar distinguishing features as claim 8, therefore the following eligibility analysis shall apply to all independent claims 1, 8, and 15. The judicial exceptions recited in claim 8 are identified in bold below:
A computer-implemented method comprising:
managing, by a first node, digital content and metadata associated with the digital content, wherein the digital content is decentralized;
enabling, by a second node, access to the digital content by an authorized user, wherein the authorized user purchased the digital content; and
managing, by a third node, cryptographic keys that are used to encrypt and decrypt the digital content.
Under the broadest reasonable interpretation, A-D recite limitations that are reasonably categorized under certain methods of organizing human activity. Specifically, the claimed limitations can be grouped as managing personal behavior or relationships or interactions between people in the form of managing access and/or controlling access to digital content.
Claims 1, 8, and 15 recite at least one abstract idea. The eligibility analysis proceeds to Step 2A.2.
Step 2A.2:
The judicial exception is not integrated into a practical application. In particular, claim 8 recites the additional element(s) not in bold above.
Claims 1 and 15 further recite the following additional elements: “a system,” “one or more processors,” “one or more non-transitory computer-readable storage media,” and “a non-transitory computer-readable storage medium” as additional elements. These additional elements along with the additional elements of claim 8 have all been recited at a high-level of generality such that they amount to no more than generic computing components. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, the claims amount to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea MPEP 2106.05(f). These additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claims 1, 8, and 15 do not recite additional elements that integrate the judicial exception into a practical application. The eligibility analysis proceeds to Step 2B.
Step 2B:
The additional elements, both individually and as an ordered combination, do not amount to significantly more than the judicial exception because the outcome of the considerations at Step 2B will be the same when considerations from Step 2A.2 are re-evaluated. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Claims 1, 8, and 15 are not patent eligible.
Dependent Claims
Dependent claims 2, 9, and 16 recite an additional abstract idea. The limitation “encrypting the chunked digital content” can be reasonably categorized under mental processes – concepts performed in the human mind or by a human using a pen and paper. A human can encrypt the chunked digital content using a pen and paper. The other limitations – “chunking the digital content” and “scattering the chunked and encrypted digital content” elaborate on the abstract idea of managing personal behavior or relationships or interactions between people. Therefore, claims 2, 9, and 16 recite abstract ideas that fall under multiple groupings. The claims do not recite any new additional elements. Therefore, when the limitations are considered individually and as a whole in combination with the independent claims from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent claims 3-6, 10-13, and 17-19 do not recite any new additional elements. Therefore, when the limitations are considered individually and as a whole in combination with the independent claims from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent 7, 14, and 20 recite an additional element – “wherein one or more master encryption keys are derived from secret inputs, and wherein the one or more master encryption key decrypts one or more cryptographic keys.” However, such additional element has been generically recited such that it is no more than generically linking the use of the judicial exception to a particular technological environment or field of use MPEP 2106.05(h). Limitations that amount to merely indicating or suggesting a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea(s) into a patent eligible application such that the abstract idea amounts to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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 (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 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 1-2, 5, 8-9, 12, 15-16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. U.S. 2020/0159890 (herein as “Chiu”) in view of McGraw U.S. 2020/0279060.
Re Claim 1, Chiu discloses a system comprising:
one or more processors (Fig. 1 - Processor Set 120); and
logic encoded in one or more non-transitory computer-readable storage media for execution by the one or more processors and when executed operable to cause the one or more processors to perform operations comprising [0013]:
managing, by a first node ([0029] – “Program 400 is stored in persistent storage device 126 for access and/or execution by one or more of the respective computer processors of processor set 120,” one or more of the processor set 120 executing program 400 is analogous to a first node), digital content and metadata associated with the digital content ([0054] – “blockchain mod 402 (of program 400, see Fig. 4) receives…the metadata of the digital content…and the digital content,” [0055] – “smart contract protocol mod 404 (of program 400) uses the received metadata to create a unique water mark on the digital content.” Receiving and using the information, i.e. digital content and metadata, are analogous to managing the information), wherein the digital content is decentralized [0044];
enabling, by a second node ([0029] – “Program 400 is stored in persistent storage device 126 for access and/or execution by one or more of the respective computer processors of processor set 120,” one or more of the processor set 120 executing program 400 is analogous to a second node), access to the digital content by an authorized user, wherein the authorized user purchased the digital content ([0040] – “smart contract protocol mod 404 (of program 400)…verifies a consensus to grant the request of the license of the digital asset).
While Chiu discloses encrypting and decrypting the digital content, see [0064-65], Chiu does not expressly disclose
managing, by a third node, cryptographic keys that are used to encrypt and decrypt the digital content.
McGraw discloses a method for securing storage over a fabric connection. Specifically, McGraw discloses
managing, by a third node, cryptographic keys that are used to encrypt and decrypt the digital content ([0027] – “A key management entity…may generate the one or more encryption keys, manage the one or more encryption keys for encryption and or decryption, and may store each encryption key on compute nodes 102A…a network or server management station may acts as the key management entity. The network management station may be a server,” i.e. a third node).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chiu’s system and method for storing digital content using a distributed ledger with the teachings of managing, by a third node, cryptographic keys that are used to encrypt and decrypt data in McGraw. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
Re Claim 2, Chiu in view of McGraw teach the system of claim 1, and Chiu in view of McGraw further teach wherein the logic when executed is further operable to cause the one or more processors to perform operations comprising:
chunking the digital content by the third node (Chiu, [0029] – “Program 400 is stored in persistent storage device 126 for access and/or execution by one or more of the respective computer processors of processor set 120,” one or more of the processor set 120 executing program 400 is analogous to the third node, [0044] – “smart contract protocol mod 404 (of program 400)…creates a sharded copy of the digital asset including a plurality of shards of the digital asset”);
encrypting the chunked digital content by the third node (Chiu, [0065] – “the smart contract (of program 400) breaks the image into many encrypted tiles (i.e., sharding)…effectively obfuscating the image (i.e. encrypting) into tiles using a randomizing algorithm in the smart contract protocol”); and
scattering the chunked and encrypted digital content via the first node (Chiu, [0044] – “each shard of the plurality of shards may be stored in a distinct node of the plurality of nodes,” [0047] – “the smart contract protocol mod 404 (of program 400) stores a first shard of the sharded copy of the photograph in the first node and a second shard of the sharded copy of the photograph in the second node,” the one or more of the processor set 120 executing program 400 is analogous to the first node).
Re Claim 5, Chiu in view of McGraw teach the system of claim 1, and Chiu in view of McGraw further teach wherein the logic when executed is further operable to cause the one or more processors to perform operations comprising securing communication among the first node, the second node, and the third node (Chiu, [0026] – “Program 400 may include a distributed, permissioned, and immutable ledger such as a blockchain…the blockchain consists of multiple nodes that communicate with each other,” establishing communication among the nodes is analogous to securing communication).
Re Claims 8-9 and 12, they are the method claims of system claims 1-2 and 5, respectively. They recite similar distinguishing features as claims 1-2 and 5. Therefore, they are rejected for the same reasons above.
Re Claims 15-16 and 19, they are the computer-readable storage medium claims of system claims 1-2 and 5, respectively. They recite similar distinguishing features as claims 1-2 and 5. Furthermore, Chiu discloses computer-readable storage media for storing program instructions [0017], [0025]. Therefore, they are rejected for the same reasons above.
Claims 3, 10, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. U.S. 2020/0159890 (herein as “Chiu”) in view of McGraw U.S. 2020/0279060 as applied to claims 1, 8, and 15 above, and further in view of Quigley et al. U.S. 2023/0129494 (herein as “Quigley”).
Re Claim 3, Chiu in view of McGraw teach the system of claim 1, however, Chiu in view of McGraw do not explicitly teach wherein ownership of the digital content is immutable via the system replicating physical media ownership through the integration of digital content rights in the digital content by use of immutable tokens that remove revocation or alteration.
Quigley discloses systems and methods for facilitating electronic transactions for real world items linked to digital tokens. Specifically, Quigley discloses
wherein ownership of the digital content is immutable [0621] via the system replicating physical media ownership ([0432] – “”item” may refer to a digital asset (e.g.,…digital music file, digital video file…), physical good…”) through the integration of digital content rights in the digital content by use of immutable tokens that remove revocation or alteration ([0066] – “enforcing digital rights management (DRM) associated with non-fungible tokens (NFTs)”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chiu in view of McGraw’s system and method for storing digital content using a distributed ledger with the teachings of ownership of the digital content is immutable via integration of digital content rights in the digital content by use of immutable tokens in Quigley. One would be motivated to make this combination to prevent piracy of digital assets and improve access to digital assets, thereby encouraging users to purchase rights to the digital assets Quigley, [0008].
Re Claim 10, it is the method claim of system claim 3. It recites similar distinguishing features as claim 3. Therefore, it is rejected for the same reasons above.
Re Claim 17, it is the computer-readable storage medium claim of system claim 3. It recites similar distinguishing features as claim 3. Therefore, it is rejected for the same reasons above.
Claims 4, 11, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. U.S. 2020/0159890 (herein as “Chiu”) in view of McGraw U.S. 2020/0279060 as applied to claims 1, 8, and 15 above, and further in view of Carillo De La Fuente U.S. 20150117641 (herein as “Carillo”).
Re Claim 4, Chiu in view of McGraw teach the system of claim 1, however, Chiu in view of McGraw do not explicitly teach wherein the logic when executed is further operable to cause the one or more processors to perform operations comprising enabling the digital content to be temporarily transferred from the authorized user to a temporary user.
Carillo discloses a protection method and system for distributing digital files. Specifically, Carillo discloses
enabling the digital content to be temporarily transferred from the authorized user to a temporary user ([0337] – “During the period of temporary cession, the user that transfers temporarily the digital content will not be able to make use of the digital content transferred, while the user that receives the temporary cession will enjoy usage of Digital Content.sub.CSR1”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chiu in view of McGraw’s system and method for storing digital content using a distributed ledger with the teachings of enabling the digital content to be temporarily transferred from the authorized user to a temporary user in Carillo. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
Re Claim 11, it is the method claim of system claim 4. It recites similar distinguishing features as claim 4. Therefore, it is rejected for the same reasons above.
Re Claim 18, it is the computer-readable storage medium claim of system claim 4. It recites similar distinguishing features as claim 4. Therefore, it is rejected for the same reasons above.
Claims 6, 13, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. U.S. 2020/0159890 (herein as “Chiu”) in view of McGraw U.S. 2020/0279060 as applied to claims 1, 8, and 15 above, and further in view of McKenzie et al. U.S. 2021/0248653 (herein as “McKenzie”).
Re Claim 6, Chiu in view of McGraw teach the system of claim 1, however, Chiu in view of McGraw do not explicitly teach wherein the logic when executed is further operable to cause the one or more processors to perform operations comprising coupling physical goods with digital non-fungible tokens using tamper-evident near-field communication tags.
McKenzie discloses systems and methods for authenticating products. Specifically, McKenzie discloses
coupling physical goods with digital non-fungible tokens using tamper-evident near-field communication tags ([0024] – “Once the product is authenticated, a uniquely-identifiable NFC tag is attached to, or associated with, the product, an identifier can be created for the product (such as an identity token), and the NFC Tag and identification information are associated in the product authentication system”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chiu in view of McGraw’s system and method for storing digital content using a distributed ledger with the teachings of coupling physical goods with digital non-fungible tokens using tamper-evident near-field communication tags in McKenzie. One would be motivated to make this combination to because attaching a tamper-proof tag that certifies authenticity of a product and uniquely and digitally identifies a sold product reduces counterfeits both for tags and products, while also reducing authentication costs as the items are already identified and can be automatically authenticated once they re-enter the market McKenzie, [0024].
Re Claim 13, it is the method claim of system claim 6. It recites similar distinguishing features as claim 6. Therefore, it is rejected for the same reasons above.
Re Claim 20, it is the computer-readable storage medium claim of system claim 6. It recites similar distinguishing features as claim 6. Therefore, it is rejected for the same reasons above.
Claims 7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. U.S. 2020/0159890 (herein as “Chiu”) in view of McGraw U.S. 2020/0279060 as applied to claims 1 and 8 above, and further in view of Mesh et al. U.S. Patent 11,228,421 (herein as “Mesh”).
Re Claim 7, Chiu in view of McGraw teach the system of claim 1, however, Chiu in view of McGraw do not explicitly teach wherein one or more master encryption keys are derived from secret inputs, and wherein the one or more master encryption key decrypts one or more cryptographic keys.
Examiner notes claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure MPEP 2111.04. In this case, the elements of claim 7 do not limit the structure of the system because the claim language is merely a description of the master encryption key and what it can do, but there are no limitations that limit the structure and/or operations of the claimed system itself. Claim 14 is a method claim and recites similar distinguishing features. Similarly, the elements of claim 14 do not give any meaning and purpose to the manipulative steps. Therefore, claims 7 and 14 cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided below.
Mesh discloses secure secrets to mitigate against attacks on cryptographic systems. Specifically, Mesh discloses
wherein one or more master encryption keys are derived from secret inputs, and wherein the one or more master encryption key decrypts one or more cryptographic keys (Col. 13, lines 42-44 – “use the secure secrets to generate one or more master keys that can be used to encrypt or decrypt or derive one or more other keys”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chiu in view of McGraw’s system and method for storing digital content using a distributed ledger with the teachings of one or more master encryption keys are derived from secret inputs, and wherein the one or more master encryption key decrypts one or more cryptographic keys in Mesh. One would be motivated to make this combination to improve the security and prevent unauthorized access to the data Mesh, Col. 1, lines 30-31, Col. 2, lines 25-26.
Re Claim 14, it is the method claim of system claim 7. It recites similar distinguishing features as claim 7. Therefore, it is rejected for the same reasons above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Simu et al. U.S. 2022/0210061 directed to access control and ownership transfer of digital content using a decentralized content fabric and ledger.
Stolbikov et al. U.S. 2021/0124812 directed to distributed license encryption and distribution.
Rae et al. U.S. 2017/0116693 directed to systems and methods for decentralizing commerce and rights management for digital assets using a blockchain rights ledger.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE DANG whose telephone number is (571)270-5880. The examiner can normally be reached M-F 9-5pm MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick McAtee can be reached at (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINE DANG/Examiner, Art Unit 3698
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