DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to papers filed on 30 January 2025. Claims 1 and 11 are independent. Claims 1-20 are pending.
Priority
Acknowledgment is made of Applicant’s claim for domestic benefit priority under 35 U.S.C. 120 of Application No. 17/812,116, filed 12 July 2022. The current application is a continuation of Application No. 17/812,116.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 30 January 2025, 20 October 2025, and 27 February 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the Examiner.
Claim Objections
Claims 1 and 11 are objected to because of the following informalities:
Claims 1 and 11 should be amended to recite “… and an unencrypted identity of the asset … the unencrypted identity of the asset …”.
Appropriate correction is required.
Double Patenting
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. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); 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); 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) 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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10-17 of U.S. Patent No. 12,225,143 (hereinafter, “the ‘143 Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because each of claims 1-20 of the instant application is generic to, and fully encompassed by, the corresponding claim of the ‘143 Patent, as set forth below. The instant application is a continuation of Application No. 17/812,116, which issued as the ‘143 Patent, and the claims of the instant application broaden the patented claims by replacing the “physical communication asset” with a generic “asset” and omitting limitations recited in the patented claims. A later genus claim is anticipated by, and therefore not patentably distinct from, an earlier species claim. See In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 2010 (Fed. Cir. 1993); MPEP § 804, subsection II.B.1.
The claims of the instant application correspond to the claims of the ‘143 Patent as follows:
Instant Application Claim
U.S. Patent No. 12,225,143 Claim
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As per claim 1: Instant claim 1 is compared with claim 1 of the ‘143 Patent below, with differences shown in bold and underlined:
Instant Application - Claim 1
U.S. Patent No. 12,225,143 - Claim 1
A computer-implemented method executed by data processing hardware of a first entity that causes the data processing hardware to perform operations comprising:
A computer-implemented method executed by data processing hardware of a first entity that causes the data processing hardware to perform operations comprising:
generating a first asset token, the first asset token representing control, by the first entity, of a portion of an asset, the first asset token comprising:
generating a first asset token, the first asset token representing control, by the first entity, of a portion of a physical communication asset, the first asset token comprising:
an unencrypted identity of the first entity; and an unencrypted identify of the asset;
an unencrypted identity of the first entity; and an unencrypted location of the physical communication asset;
publishing, to a distributed ledger, ownership of the first asset token;
publishing, to a distributed ledger, ownership of the first asset token;
receiving, from a second entity, a request to control the portion of the asset represented by the first asset token; and
receiving, from a second entity, a request to control the portion of the physical communication asset represented by the first asset token; and
in response to receiving the request:
in response to receiving the request: removing the first asset token from circulation on the distributed ledger;
generating a second asset token, the second asset token representing control, by the second entity, of the portion of the asset, the second asset token comprising:
generating a second asset token, the second asset token representing control, by the second entity, of the portion of the physical communication asset, the second asset token comprising: the unencrypted identity of the first entity;
an unencrypted identity of the second entity;
an unencrypted identity of the second entity;
the unencrypted identify of the asset;
the unencrypted location of the physical communication asset;
contractual information encrypted by a data encryption key, the contractual information associated with transferring control of the asset from the first entity to the second entity; and
contractual information encrypted by a data encryption key, the contractual information associated with transferring control of the portion of the physical communication asset from the first entity to the second entity; and
the data encryption key encrypted by a public key;
the data encryption key encrypted by a public key associated with the second entity;
publishing, to the distributed ledger, ownership of the second asset token; and transferring, using the distributed ledger, ownership of the second asset token to the second entity.
publishing, to the distributed ledger, ownership of the second asset token; and transferring, using the distributed ledger, ownership of the second asset token to the second entity.
As shown above, claim 1 of the ‘143 Patent recites each limitation of instant claim 1, either identically or as a species of each limitation, and additionally recites (1) removing the first asset token from circulation on the distributed ledger, (2) the unencrypted identity of the first entity in the second asset token, and (3) a public key “associated with the second entity”. These additional limitations render patented claim 1 narrower than instant claim 1, and do not render instant claim 1 patentably distinct. The “physical communication asset” recited in patented claim 1 is a species of the generic “asset” recited in instant claim 1, and control of “the portion of the physical communication asset” is a species of control of “the asset”.
With respect to the “unencrypted identify of the asset”, under the broadest reasonable interpretation, an identity of an asset encompasses information that identifies the particular asset that the asset token represents. The “unencrypted location of the physical communication asset” recited in patented claim 1, which may comprise a first end and a second end of a subsea communication cable (see claim 9 of the ‘143 Patent), identifies the particular physical communication asset represented by the asset token, and therefore falls within the scope of an “unencrypted identify of the asset”. Accordingly, instant claim 1 is anticipated by claim 1 of the ‘143 Patent.
As per claim 2: Claim 1 of the ‘143 Patent recites the limitations of instant claim 1, as stated above, and further recites that the asset token represents control of a portion of “a physical communication asset”, which is a communication asset. Accordingly, instant claim 2 is anticipated by claim 1 of the ‘143 Patent.
As per claim 3: Claim 2 of the ‘143 Patent, which depends from patented claim 1, recites that “the physical communication asset comprises a subsea telecommunications asset; and control of the portion of the physical communication asset comprises controlling a respective portion of a bandwidth capacity of the subsea telecommunications asset”. The subsea telecommunications asset is a species of the communication asset recited in instant claims 2-3. Accordingly, instant claim 3 is anticipated by claim 2 of the ‘143 Patent.
As per claim 4: Claim 3 of the ‘143 Patent, which depends from patented claim 1, recites that “generating the second asset token comprises: generating the data encryption key; and encrypting the contractual information with the data encryption key”. Patented claim 1, from which claim 3 depends, further recites that the second asset token comprises “the data encryption key encrypted by a public key associated with the second entity” and “transferring, using the distributed ledger, ownership of the second asset token to the second entity”. Because the second asset token comprising the data encryption key is transferred to the second entity, patented claim 3 recites transferring the data encryption key to the second entity. Accordingly, instant claim 4 is anticipated by claim 3 of the ‘143 Patent.
As per claim 5: Claim 4 of the ‘143 Patent recites limitations identical to those of instant claim 5, namely, “the second asset token further comprises an expiration; and a smart contract, using the distributed ledger, automatically removes the second asset token from circulation upon expiration of the second asset token”. Accordingly, instant claim 5 is anticipated by claim 4 of the ‘143 Patent.
As per claim 6: Claim 5 of the ‘143 Patent recites limitations identical to those of instant claim 6, namely, “generating the first asset token comprises signing the first asset token with a private encryption key associated with the first entity”. Accordingly, instant claim 6 is anticipated by claim 5 of the ‘143 Patent.
As per claim 7: Claim 6 of the ‘143 Patent recites limitations identical to those of instant claim 7, namely, “transferring ownership of the second asset token to the second entity comprises transferring ownership of the second asset token to an address of the distributed ledger associated with a public encryption key of the second entity”. Accordingly, instant claim 7 is anticipated by claim 6 of the ‘143 Patent.
As per claim 8: Claim 1 of the ‘143 Patent recites, in response to receiving the request, “removing the first asset token from circulation on the distributed ledger”. Accordingly, instant claim 8 is anticipated by claim 1 of the ‘143 Patent.
As per claim 9: Claim 7 of the ‘143 Patent recites limitations identical to those of instant claim 9, namely, “removing the first asset token from circulation on the distributed ledger comprises transferring ownership of the first asset token to an address of the distributed ledger associated with an unknown private encryption key”. Accordingly, instant claim 9 is anticipated by claim 7 of the ‘143 Patent.
As per claim 10: Claim 8 of the ‘143 Patent recites “generating a third asset token, the third asset token representing control, by a third entity, of a second portion of the physical communication asset different from the portion of the physical communication asset represented by the first asset token; publishing, to the distributed ledger, ownership of the third asset token; and transferring, using the distributed ledger, ownership of the third asset token to the third entity”. The second portion of the physical communication asset is a species of the second portion of the asset recited in instant claim 10. Accordingly, instant claim 10 is anticipated by claim 8 of the ‘143 Patent.
As per claims 11-20: Claims 11-20 define a system that recites substantially similar subject matter as the method of claims 1-10, respectively. Specifically, claims 11-20 are directed to a system comprising data processing hardware of a first entity and memory hardware in communication with the data processing hardware, the memory hardware storing instructions that when executed on the data processing hardware cause the data processing hardware to perform the operations of the method of claims 1-10, respectively. Claims 10-17 of the ‘143 Patent likewise define a system comprising data processing hardware of a first entity and memory hardware storing instructions that cause the data processing hardware to perform the operations of patented claims 1-8, respectively. Thus, the rejection of claims 1-10 over claims 1-8 of the ‘143 Patent is equally applicable to claims 11-20 over claims 10-17 of the ‘143 Patent.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 6-7, 10-11, 16-17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jakobsson et al., US 2022/0407702 A1 (hereinafter, “Jakobsson ‘702”), in view of Jakobsson, US 2023/0086191 A1 (hereinafter, “Jakobsson ‘191”).
As per claim 1: Jakobsson ‘702 discloses:
A computer-implemented method executed by data processing hardware of a first entity that causes the data processing hardware to perform operations comprising (a method for minting tokens performed by a token minting system comprising a set of one or more processors executing processor instructions stored on a non-transitory machine readable medium, where a content creator system executes a content creator application to mint non-fungible tokens (NFTs) [Jakobsson ‘702, ¶¶4, 48-49, 153, 156; Fig.12, Fig.18]):
generating a first asset token, the first asset token representing control, by the first entity, of a portion of an asset (generating an ownership token representing ownership of an item, such as an artist minting an ownership token 1902 for a percussion mix 1901, where ownership tokens may correspond to virtual, digital, and physical items, and where ownership of property may be of a fractional ownership type, such that a token represents a party’s fractional share of ownership [Jakobsson ‘702, ¶¶35, 234, 239, 254; Fig.19]),
the first asset token comprising: an unencrypted identity of the first entity (the token associates an identifier of the entity, such as a public key for which knowledge of the associated private key establishes an association with the token, where tokens posted on ledgers or other public databases are public tokens [Jakobsson ‘702, ¶¶193, 222]);
and an unencrypted identify of the asset (the token includes an identifier of the associated item, such as a merchandise serial number or other identifier, where each NFT may have a unique serial number, and where anchored tokens tie an element, such as a physical entity, to an identifier [Jakobsson ‘702, ¶¶177-178, 235-236]);
publishing, to a distributed ledger, ownership of the first asset token (storing the minted token on a ledger, such as a public blockchain, where the NFT is associated with a smart contract enabling the NFT to be managed, owned, and traded, and where transaction records within the NFT blockchain reflect the transfer of ownership of the NFT [Jakobsson ‘702, ¶¶4, 47, 108, 177, 182; Fig.18]);
receiving, from a second entity, a request to control the portion of the asset represented by the first asset token (receiving a token of a second party corresponding to a purchase request seeking access rights to an indicated resource, such as the right to watch an indicated movie a specified number of times, where the purchase request includes an identifier of the requesting party, such as an address, and a public key, and where such request tokens are posted to a decentralized ledger and matched with tokens offering the requested resource [Jakobsson ‘702, ¶¶242-245, 247; Fig.20]);
and in response to receiving the request: generating a second asset token, the second asset token representing control, by the second entity, of the portion of the asset (in response to the matching of the purchase request, completing the associated contract and providing the requesting party with access to the requested resource, where an output token is generated based on input tokens when a set of conditions, such as the presence and sufficiency of inputs, is met, and where an inheritance token comprising a signed message is generated to assign rights to a token identified by a public key, including assigning rights to a new party, such as when a license to a song is sold by the artist to a consumer [Jakobsson ‘702, ¶¶18-19, 179-181, 243, 270-272; Fig.18, Fig.23]),
the second asset token comprising: an unencrypted identity of the second entity (the signed message identifies the token(s) to which the rights are assigned by identities unique to those tokens, such as public keys, where the purchase request includes an identifier and a public key of the requesting party [Jakobsson ‘702, ¶¶242, 270, 272; Fig.23]); the unencrypted identify of the asset (the output token stores a reference to at least one input token, where such references may or may not be encrypted [Jakobsson ‘702, ¶¶9, 180]);
contractual information (the signed message of the inheritance token describes the assignment of what rights, under what conditions, and to what tokens, where the output token may include a machine-readable version and a human-readable version of an agreement between parties, and where policies governing the access rights of acquirers of an item, including the cost of acquiring such rights, may be associated with the item [Jakobsson ‘702, ¶¶42, 86, 238, 270, 272; Fig.23]); and
publishing, to the distributed ledger, ownership of the second asset token (storing the output token on a public ledger, where the bound contract is communicated to a public ledger for recordation [Jakobsson ‘702, ¶¶182, 243; Fig.18]); and
transferring, using the distributed ledger, ownership of the second asset token to the second entity (transferring the assigned rights to the new owner associated with the inheritance token, where NFTs are obtained and transferred using media wallet applications, and where private keys of the media wallets are applied to initiating ownership transfers [Jakobsson ‘702, ¶¶100, 162, 271; Fig.13]).
As stated above, Jakobsson ‘702 does not explicitly disclose the limitations “… contractual information encrypted by a data encryption key … the data encryption key encrypted by a public key …”.
Jakobsson ‘191, however, discloses:
… contractual information encrypted by a data encryption key (a release record 3000 associated with one or more NFTs, the release record comprising a first ciphertext 3001 generated from plaintext content 3002 using a key for the first ciphertext 3004, where the content M is encrypted using a symmetric key K, and where the content may comprise ownership determining records of NFTs and data providing access rights to resources [Jakobsson ‘191, ¶¶381, 388, 394-396; Fig.30]) …
… the data encryption key encrypted by a public key (the release record 3000 further comprising a second ciphertext 3003 that includes, in obfuscated format, the key for the first ciphertext 3004, where the symmetric key K is encrypted using a public key y of a decryption service to produce the ciphertext C, where the release record further comprises a policy P that designates the recipient in the form of a public key y2, and where the components of the release record may be stored on a blockchain [Jakobsson ‘191, ¶¶381, 396, 398-399; Fig.30]) …
Jakobsson ‘702 and Jakobsson ‘191 are analogous art because they are from the same field of endeavor, namely that of generating and managing tokens recorded on a distributed ledger. Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Jakobsson ‘702 and Jakobsson ‘191 before them, to modify the method in Jakobsson ‘702 to include the teachings of Jakobsson ‘191, namely to encrypt the agreement information included in the second asset token of Jakobsson ‘702 using a symmetric key, and to include, in the second asset token, the symmetric key encrypted by a public key, as disclosed in Jakobsson ‘191, while the identities of the second entity and the asset remain unencrypted. A motivation for doing so would be to keep the content private until it is released to a designated recipient, to allow the symmetric key to be made accessible to the designated recipient without exposing the plaintext symmetric key, and to prevent unauthorized modification of the release policy (see Jakobsson ‘191, ¶¶396, 398).
As per claim 6: Jakobsson ‘702 in view of Jakobsson ‘191 discloses all limitations of claim 1, as stated above, from which claim 6 is dependent upon. Furthermore, Jakobsson ‘702 discloses:
wherein generating the first asset token comprises signing the first asset token with a private encryption key associated with the first entity (the content creator application includes content creator wallet (CCW) keys comprising public key/private key pairs, where the content creator application uses the keys to sign NFTs minted by the content creator application, and where minted NFTs can be signed by content creators [Jakobsson ‘702, ¶¶108, 156; Fig.12]).
As per claim 7: Jakobsson ‘702 in view of Jakobsson ‘191 discloses all limitations of claim 1, as stated above, from which claim 7 is dependent upon. Furthermore, Jakobsson ‘702 discloses:
wherein transferring ownership of the second asset token to the second entity comprises transferring ownership of the second asset token to an address of the distributed ledger associated with a public encryption key of the second entity (NFTs are obtained and transferred using media wallets, where a media wallet corresponds to a public key referred to as a wallet address, where private keys of the media wallets are applied to initiating ownership transfers, and where the tokens to which rights are assigned are identified by public keys [Jakobsson ‘702, ¶¶100, 162, 272; Fig.13, Fig.23]).
As per claim 10: Jakobsson ‘702 in view of Jakobsson ‘191 discloses all limitations of claim 1, as stated above, from which claim 10 is dependent upon. Furthermore, Jakobsson ‘702 discloses:
wherein the operations further comprise: generating a third asset token, the third asset token representing control, by a third entity, of a second portion of the asset different from the portion of the asset represented by the first asset token (generating tokens that assign rights to the same item to multiple parties, such as a user acquiring limited resale rights to an item selling up to 100 rendering rights, licensing tokens enabling multiple licensees to use a percussion mix, and fractional ownership in which each party holds a respective fractional share of ownership [Jakobsson ‘702, ¶¶237-240, 254; Fig.19]);
publishing, to the distributed ledger, ownership of the third asset token (storing the output token on a public ledger [Jakobsson ‘702, ¶¶4, 47, 182; Fig.18]); and transferring, using the distributed ledger, ownership of the third asset token to the third entity (transferring the assigned rights to the new owner associated with the inheritance token, where NFTs are obtained and transferred using media wallet applications [Jakobsson ‘702, ¶¶100, 162, 271; Fig.13]).
As per claims 11, 16-17, and 20: Claims 11, 16-17, and 20 define a system that recites substantially similar subject matter as the method of claims 1, 6-7, and 10, respectively. Specifically, claims 11, 16-17, and 20 are directed to a system comprising data processing hardware of a first entity and memory hardware in communication with the data processing hardware, the memory hardware storing instructions that when executed on the data processing hardware cause the data processing hardware to perform the operations of the method of claims 1, 6-7, and 10, respectively. Thus, the rejection of claims 1, 6-7, and 10 is equally applicable to claims 11, 16-17, and 20, respectively.
Claims 2-3 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Jakobsson ‘702, in view of Jakobsson ‘191, and further in view of Evans et al., US 2016/0164597 A1 (hereinafter, “Evans ‘597”).
As per claim 2: Jakobsson ‘702 in view of Jakobsson ‘191 discloses all limitations of claim 1, as stated above, from which claim 2 is dependent upon. Jakobsson ‘702 in view of Jakobsson ‘191 does not explicitly disclose the limitations of claim 2. Evans ‘597, however, discloses:
wherein the asset comprises a communication asset (a submarine optical network 10b comprising a wet plant 16 that includes a cable 18 and repeaters 20 interconnecting terminal stations 12 and 14, where the owner of the submarine optical network sells portions of the optical spectrum 40 of the network to end customers [Evans ‘597, ¶¶2, 14-15, 17-18; Fig.2]).
Jakobsson ‘702 (modified by Jakobsson ‘191) and Evans ‘597 are analogous art because they are reasonably pertinent to the particular problem with which the inventor is concerned, namely that of allocating and tracking control of portions of an asset among multiple entities. Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Jakobsson ‘702 (modified by Jakobsson ‘191) and Evans ‘597 before them, to modify the method in Jakobsson ‘702 (modified by Jakobsson ‘191) to include the teachings of Evans ‘597, namely to apply the token-based ownership and rights-transfer method of Jakobsson ‘702 (modified by Jakobsson ‘191), in which tokens may represent ownership of real-world objects, to a communication asset, such as a submarine optical network whose optical spectrum is partitioned and sold to multiple end users, as disclosed in Evans ‘597. A motivation for doing so would be to support the commercially advantageous model of providing portions of the optical spectrum of a submarine optical network to multiple users under commercial agreements, where coordinating and policing such arrangements among multiple users is otherwise increasingly challenging (see Evans ‘597, ¶¶2, 14, 17).
As per claim 3: Jakobsson ‘702 in view of Jakobsson ‘191, and further in view of Evans ‘597 discloses all limitations of claims 1-2, as stated above, from which claim 3 is dependent upon. Jakobsson ‘702 in view of Jakobsson ‘191 does not explicitly disclose the limitations of claim 3. Evans ‘597, however, discloses:
wherein control of the portion of the communication asset comprises controlling a respective portion of a bandwidth capacity of the communication asset (under the broadest reasonable interpretation, and consistent with Applicant’s Specification (see Specification, ¶25), a “respective portion of a bandwidth capacity” may be interpreted as an assigned portion of the spectrum of a communication asset; the cable owner defines slices of the optical spectrum 40 available to each end user, where each spectral slice is an assigned portion of the optical spectrum defined by a spectrum width for a specific end customer, where the settings within the assigned slice are under the control of the end user, and where each end user is prevented from accessing spectrum outside of its assigned slice [Evans ‘597, ¶¶2, 21-25; Fig.3, Fig.4]).
Jakobsson ‘702 (modified by Jakobsson ‘191) and Evans ‘597 are analogous art because they are reasonably pertinent to the particular problem with which the inventor is concerned, namely that of allocating and tracking control of portions of an asset among multiple entities. For the reasons stated in claim 2, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Jakobsson ‘702 (modified by Jakobsson ‘191) and Evans ‘597 before them, to modify the method in Jakobsson ‘702 (modified by Jakobsson ‘191) to include the teachings of Evans ‘597.
As per claims 12-13: Claims 12-13 define a system that recites substantially similar subject matter as the method of claims 2-3, respectively. Specifically, claims 12-13 are directed to a system comprising data processing hardware of a first entity and memory hardware in communication with the data processing hardware, the memory hardware storing instructions that when executed on the data processing hardware cause the data processing hardware to perform the operations of the method of claims 2-3, respectively. Thus, the rejection of claims 2-3 is equally applicable to claims 12-13, respectively.
Claims 4 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Jakobsson ‘702, in view of Jakobsson ‘191, and further in view of Mehta et al., US 10,735,183 B1 (hereinafter, “Mehta ‘183”).
As per claim 4: Jakobsson ‘702 in view of Jakobsson ‘191 discloses all limitations of claim 1, as stated above, from which claim 4 is dependent upon. Jakobsson ‘702 does not explicitly disclose the limitations of claim 4. Jakobsson ‘191, however, discloses:
wherein generating the second asset token comprises: (generating a release record 3000 comprising a first ciphertext 3001 generated from plaintext content 3002 using a key for the first ciphertext 3004, where the content M, which may comprise ownership determining records of NFTs and data providing access rights to resources, is encrypted using a symmetric key K [Jakobsson ‘191, ¶¶381, 388, 396; Fig.30]);
and transferring the data encryption key to the second entity (generating, from the ciphertext C, a ciphertext C′ that is an encryption of the symmetric key K using the public key y2 of the designated recipient included in the policy P, such that the owner of the private key associated with P can derive the symmetric key K from C′ and decrypt the content [Jakobsson ‘191, ¶¶381, 383, 396-397; Fig.30, Fig.31]).
Jakobsson ‘702 and Jakobsson ‘191 are analogous art because they are from the same field of endeavor, namely that of generating and managing tokens recorded on a distributed ledger, including controlling access to information associated with such tokens. Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Jakobsson ‘702 and Jakobsson ‘191 before them, to modify the method in Jakobsson ‘702 to include the teachings of Jakobsson ‘191, namely to encrypt the agreement information of the second asset token of Jakobsson ‘702 using a symmetric key, and to make the symmetric key accessible to the second entity by re-encrypting the symmetric key using a public key associated with the second entity, as disclosed in Jakobsson ‘191. A motivation for doing so would be to allow the designated recipient to derive the symmetric key and decrypt the content, without exposing the plaintext symmetric key, including to the service performing the re-encryption (see Jakobsson ‘191, ¶¶396-397).
As stated above, Jakobsson ‘702 in view of Jakobsson ‘191 does not explicitly disclose the limitation “… generating the data encryption key …”.
Mehta ‘183, however, discloses:
… generating the data encryption key (upon creation of a smart contract recorded as a record on a distributed electronic ledger, randomly generating an internal key (i.e., “blockchain key”), where the internal key is used to encrypt the confidential components of the smart contract, such as a confidential request and account information used to reconcile payment for a requested service [Mehta ‘183, Col.3 lines 31-36, Col.5 lines 1-8, Col.6 lines 50-63; Fig.1]) …
Jakobsson ‘702 (modified by Jakobsson ‘191) and Mehta ‘183 are analogous art because they are from the same field of endeavor, namely that of protecting confidential transaction information recorded on a distributed ledger. Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Jakobsson ‘702 (modified by Jakobsson ‘191) and Mehta ‘183 before them, to modify the method in Jakobsson ‘702 (modified by Jakobsson ‘191) to include the teachings of Mehta ‘183, namely to randomly generate the symmetric key of Jakobsson ‘191 upon generation of the second asset token, as disclosed in Mehta ‘183, such that a key created for the particular transaction is used to encrypt the confidential contract information. A motivation for doing so would be to ensure that the confidential contents of a ledger record can only be read and modified by participants holding the proper keys, where the internal key remains private for the life of the record (see Mehta ‘183, Col.3 lines 31-39).
As per claim 14: Claim 14 defines a system that recites substantially similar subject matter as the method of claim 4. Specifically, claim 14 is directed to a system comprising data processing hardware of a first entity and memory hardware in communication with the data processing hardware, the memory hardware storing instructions that when executed on the data processing hardware cause the data processing hardware to perform the operations of the method of claim 4. Thus, the rejection of claim 4 is equally applicable to claim 14.
Claims 5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Jakobsson ‘702, in view of Jakobsson ‘191, and further in view of Spangenberg et al., US 2023/0230186 A1 (hereinafter, “Spangenberg ‘186”).
As per claim 5: Jakobsson ‘702 in view of Jakobsson ‘191 discloses all limitations of claim 1, as stated above, from which claim 5 is dependent upon. Furthermore, Jakobsson ‘702 discloses:
wherein: the second asset token further comprises an expiration (the output token can be created to expire, where tokens may include an expiration field specifying an expiration date when the token ceases to be valid, and where, for a token granting the holder with rights, expiration of the token corresponds to the cessation of those rights [Jakobsson ‘702, ¶¶181, 225-226]); and
.
As stated above, Jakobsson ‘702 in view of Jakobsson ‘191 does not explicitly disclose the limitation “… a smart contract, using the distributed ledger, automatically removes the second asset token from circulation upon expiration of the second asset token”.
Spangenberg ‘186, however, discloses:
… a smart contract, using the distributed ledger, automatically removes the second asset token from circulation upon expiration of the second asset token (under the broadest reasonable interpretation, and consistent with Applicant’s Specification (see Specification, ¶40), removing an expired asset token “from circulation” is interpreted as revoking ownership of the asset token, where a token that is automatically redeemed upon expiration of its term is removed from circulation; IP tokens representing licenses or sub-licenses granting a temporarily limited right of use are recorded on a blockchain, where the temporal limitation is recorded in the token itself, where, in case of a temporal limitation of the license grant, the IP tokens are redeemed automatically as soon as the license period expires, and where the relationships recorded in the tokens and payments under the IP license are effectuated automatically using smart contracts [Spangenberg ‘186, ¶¶28-29, 107, 112, 128, 132, 135, 137; Figs.8A-8C]).
Jakobsson ‘702 (modified by Jakobsson ‘191) and Spangenberg ‘186 are analogous art because they are from the same field of endeavor, namely that of generating tokens representing rights to an asset and recording such tokens on a distributed ledger. Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Jakobsson ‘702 (modified by Jakobsson ‘191) and Spangenberg ‘186 before them, to modify the method in Jakobsson ‘702 (modified by Jakobsson ‘191) to include the teachings of Spangenberg ‘186, namely to implement the expiration of the second asset token of Jakobsson ‘702, which corresponds to the cessation of the rights granted by the token, such that the token is automatically redeemed by a smart contract upon expiration of its term, as disclosed in Spangenberg ‘186. A motivation for doing so would be to ensure that the transferred rights cannot be extended without the consent of the original rights owner, and to provide legal certainty regarding the status of a token-based license grant that would otherwise depend on events that are not verifiable in a blockchain-native environment, such as the termination of the license by email (see Spangenberg ‘186, ¶¶24, 128, 135).
As per claim 15: Claim 15 defines a system that recites substantially similar subject matter as the method of claim 5. Specifically, claim 15 is directed to a system comprising data processing hardware of a first entity and memory hardware in communication with the data processing hardware, the memory hardware storing instructions that when executed on the data processing hardware cause the data processing hardware to perform the operations of the method of claim 5. Thus, the rejection of claim 5 is equally applicable to claim 15.
Claims 8-9 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Jakobsson ‘702, in view of Jakobsson ‘191, and further in view of Fletcher et al., US 2020/0074450 A1 (hereinafter, “Fletcher ‘450”).
As per claim 8: Jakobsson ‘702 in view of Jakobsson ‘191 discloses all limitations of claim 1, as stated above, from which claim 8 is dependent upon. Jakobsson ‘702 in view of Jakobsson ‘191 does not explicitly disclose the limitations of claim 8. Fletcher ‘450, however, discloses:
wherein the operations further comprise removing the first asset token from circulation on the distributed ledger (burning digital assets, such as tokens, by transferring the digital assets to an unspendable address on a blockchain, such that, once the transaction is confirmed, the digital assets are considered burned because they are no longer spendable by any nodes in the blockchain network, and where burning the digital assets prevents double spending, i.e., the duplication of the digital assets [Fletcher ‘450, ¶¶71, 101-104, 152; Fig.5, Fig.10]).
Jakobsson ‘702 (modified by Jakobsson ‘191) and Fletcher ‘450 are analogous art because they are from the same field of endeavor, namely that of controlling ownership and transfer of tokens on a distributed ledger. Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Jakobsson ‘702 (modified by Jakobsson ‘191) and Fletcher ‘450 before them, to modify the method in Jakobsson ‘702 (modified by Jakobsson ‘191) to include the teachings of Fletcher ‘450, namely to burn the first asset token of Jakobsson ‘702, such as when exclusive rights to the asset are transferred to the second entity such that the first entity no longer holds those rights, by transferring the first asset token to an unspendable address, as disclosed in Fletcher ‘450. A motivation for doing so would be to ensure that the burned token can no longer be spent or used by any party, thereby preventing the duplication of the digital assets (see Fletcher ‘450, ¶¶102, 152).
As per claim 9: Jakobsson ‘702 in view of Jakobsson ‘191, and further in view of Fletcher ‘450 discloses all limitations of claims 1 and 8, as stated above, from which claim 9 is dependent upon. Jakobsson ‘702 in view of Jakobsson ‘191 does not explicitly disclose the limitations of claim 9. Fletcher ‘450, however, discloses:
wherein removing the first asset token from circulation on the distributed ledger comprises transferring ownership of the first asset token to an address of the distributed ledger associated with an unknown private encryption key (under the broadest reasonable interpretation, and consistent with Applicant’s Specification (see Specification, ¶29), an address for which no party holds the corresponding private key is an address associated with an unknown private encryption key; transferring the digital assets to an unspendable address, where the unspendable address may be an address for which no private key exists, such that no party can access the digital assets bound by the public key for the address, and where each public key is associated with a single address [Fletcher ‘450, ¶¶40, 71, 101-102, 104; Fig.5]).
Jakobsson ‘702 (modified by Jakobsson ‘191) and Fletcher ‘450 are analogous art because they are from the same field of endeavor, namely that of controlling ownership and transfer of tokens on a distributed ledger. For the reasons stated in claim 8, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Jakobsson ‘702 (modified by Jakobsson ‘191) and Fletcher ‘450 before them, to modify the method in Jakobsson ‘702 (modified by Jakobsson ‘191) to include the teachings of Fletcher ‘450.
As per claims 18-19: Claims 18-19 define a system that recites substantially similar subject matter as the method of claims 8-9, respectively. Specifically, claims 18-19 are directed to a system comprising data processing hardware of a first entity and memory hardware in communication with the data processing hardware, the memory hardware storing instructions that when executed on the data processing hardware cause the data processing hardware to perform the operations of the method of claims 8-9, respectively. Thus, the rejection of claims 8-9 is equally applicable to claims 18-19, respectively.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Stephens et al., US 20220358450 A1: Changes to properties of the digital asset, such as ownership, visual appearance, or metadata, can be identified in a request to update the history. A new block can be generated for, and appended to, the distributed ledger identifying the changes to the history of the digital asset.
Eby et al., US 20230104103 A1: To facilitate a user taking possession of a digital asset, the custodial system could update an owner identifier for a digital asset in an asset ledger to include a public key of an asset custodian, the public key of the asset custodian indicating that the asset custodian is the owner of the digital asset.
Hamasni et al., US 20190303888 A1: On-chain transactions established on one or more distributed ledger networks. Identity validation may occur at one of composite cryptographic data structure instantiation or composite cryptographic data structure redemption, or both, through the use of a whitelist or a blacklist data structure.
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/ALAN L KONG/
Examiner, Art Unit 2494
/KAVEH ABRISHAMKAR/Primary Examiner, Art Unit 2494
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