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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 26, 2025 is being considered by the examiner.
Claim Rejections - 35 USC § 112
Claim 1-7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 contains the limitation “transmitting by the tag of the signed transaction to the electronic device by NFC or RFID” in lines 11-12. This limitation does not specify what is transmitted. It specifies the transmitter (i.e. “by the tag of the signed transaction”) and the receiver (i.e. “to the electronic device by NFC or RFID”) but it doesn’t specify what is transmitted. For the purposes of compact prosecution, the claims have been interpreted to cover any information transmitted from the transmitter to receiver.
Claims 2-7 depend upon claim 1 and therefore inherit the above rejection of claim 1.
Claim 7 contains the trademark/trade name Ethereum. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a “type” of blockchain and, accordingly, the identification/description is indefinite. For the purposes of compact prosecution, an Ethereum virtual machine type blockchain has been interpreted to be a smart contract.
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 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Alice/Mayo Framework Step 1:
Claims 1-7 recite a series of steps and therefore recite a process.
Claims 8-13 recite a combination of devices and therefore recite a machine.
Alice/Mayo Framework Step 2A – Prong 1:
Claims 1 and 8, as a whole, are directed to the abstract idea of authenticating a product using a signature of an asymmetric pair of keys, which is a mathematical concept and method of organizing human activity. The claims recite a mathematical concept because the identified idea is a mathematical relationship by reciting generating a signature based on an asymmetric key pair. See MPEP 2106.04(a)(2)(I)(A). The claims recite a method of organizing human activity because the identified idea is a fundamental economic principles or practices (including hedging, insurance, mitigating risk) by reciting using a marking of a product to authenticate the product. See MPEP 2106.04(a)(2)(II)(A). The mathematical concept and method of organizing human activity of “authenticating a product using a signature of an asymmetric pair of keys,” is recited by claiming the following limitations: sending transaction data to a tag, generating a signature of a transaction using a key pair, transmitting signature data, and recording a transaction. The mere nominal recitation of a radio frequency tag, an electronic device, a server, and a blockchain does not take the claim of the mathematical concept or method of organizing human activity groupings. Thus, the claim recites an abstract idea.
Alice/Mayo Framework Step 2A – Prong 2:
Claims 1 and 8 recite the additional elements: a radio frequency tag, an electronic device, a server, and a blockchain. These additional elements of a radio frequency tag, an electronic device, a server, and a blockchain limitations are no more than mere instructions to apply the exception using a generic computer component. The receiving and transmitting radio frequency tag data is recited at a high level of generality (i.e., as a general means of exchanging identification data), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. Taken individually 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.
Considering the limitations containing the judicial exception as well as the additional elements in the claim besides the judicial exception does not amount to a practical application of the abstract idea. The claim as a whole does not improve the functioning of a computer or improve other technology or improve a technical field. The claim as a whole is not implemented with a particular machine. The claim as a whole does not effect a transformation of a particular article to a different state. The claim as a whole is not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. The claim as a whole merely describes how to generally “apply” the concept of authenticating in a computer environment. The claimed computer components are recited at a high level of generality and are merely invoked as tools to perform an existing authentication process. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. The claim is directed to the abstract idea.
Alice/Mayo Framework Step 2B:
Claims 1 and 8 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims recite a generic computer performing generic computer function by reciting an electronic device and a server. See Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (describing a “processor” as a generic computer component); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (discussing the same with respect to “data” and “memory”). The claims recite the following computer functions recognized by the courts as generic computer functions by reciting receiving and transmitting information (See MPEP 2106.05(d)(II) receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec; TLI Communications LLC; OIP Techs.; buySAFE, Inc.), processing information (See MPEP 2106.05(d)(II) performing repetitive calculations, Flook; Bancorp Services), and storing and retrieving information (See MPEP 2106.05(d)(II) storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc.; OIP Technologies). The specification demonstrates the well-understood, routine, conventional nature of the following additional elements because they are described in a manner that indicates the elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a): a radio frequency tag (Specification [0027], [0036]), an electronic device (Specification [0039]), a server (Specification [0040]), and a blockchain (Specification [0027]). See MPEP 2106.05(d)(I)(2). The claims add the words “apply it” or words equivalent to “apply the abstract idea” such as instructions to implement the abstract idea on a computer by reciting a radio frequency tag, an electronic device, a server, and a blockchain. See MPEP 2106.05(f). The claims recite insignificant extrasolution activity (i.e. mere data gathering, selecting a particular data source or type of data to be manipulated, or an insignificant application) by reciting exchanging data from a radio frequency tag. See MPEP 2106.05(g). The claims limit the field of use by reciting product data. See MPEP 2106.05(h). Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. See MPEP 2106.05(a). Their collective functions merely provide conventional computer implementation. See MPEP 2106.05(b). Therefore, the claims do not include additional elements alone, and in combination, that are sufficient to amount to significantly more than the recited judicial exception.
With regards to Claims 5 and 11, the additional elements do not amount to significantly more than the judicial exception. Regarding claims 5 and 11, the specification demonstrates the well-understood, routine, conventional nature of the following additional elements because they are described in a manner that indicates the elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a): an application (Specification [0034]) and a server (Specification [0040]). See MPEP 2106.05(d)(I)(2). Claims 5 and 11 add the words “apply it” or words equivalent to “apply the abstract idea” such as instructions to implement the abstract idea on a computer by reciting an application and a server. See MPEP 2106.05(f). Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. See MPEP 2106.05(a). Their collective functions merely provide conventional computer implementation. See MPEP 2106.05(b). Therefore, the claims do not include additional elements that are sufficient to amount to significantly more than the recited judicial exception.
Remaining Claims:
With regards to Claims 2-4, 7, 9-10, and 12-13, these claims merely add a degree of particularity to the limitations discussed above rather than adding additional elements capable of transforming the nature of the claimed subject matter. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Therefore, the claims as a whole do not amount to significantly more than the abstract idea itself.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
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.
Claim(s) 1-5 and 7-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ghabel (U.S. P.G. Pub. 11,991,284 B1), hereinafter Ghabel, in view of Alawadi (U.S. P.G. Pub. 2024/0250828 A1), hereinafter Alawadi.
Claim 1.
Ghabel discloses a method of recording a link between a radio frequency tag and a token comprising data associated with a product, the method comprising:
sending, by near-field communication or radio frequency identification, of data of a transaction from an electronic device to the tag (Ghabel (Col. 9 Lines 49-62) keys are generated and stored on the product smart contract; (Col. 11 Lines 10-18) private key is attached to the product; (Col. 12 Lines 9-28) web application executed by mobile devices; (Col. 12 Lines 45-53) manufacturer has a portal through which they can create the digital representation of the product which generates product keys and a hash which is pushed into an NFC device; (Col. 15 Lines 48-53) generate a public key and a private key associated with a product to be used in authentication by the product smart contract);
Regarding the following limitation:
generating a signature of the data of the transaction by the tag based on a private key of an asymmetric pair of keys further comprising a public key, the signature being configured to enable a recording on a blockchain;
Ghabel discloses generating a signature of the data of the transaction based on a private key of an asymmetric pair of keys further comprising a public key, the signature being configured to enable a recording on a blockchain (Ghabel (Col. 8 Lines 20-38) key generation; (Col. 8 Lines 41-57) initial block creation includes a private key which is used to add additional blocks to the blockchain; (Col. 15 Lines 35-38) once a transaction is initiated a product transaction entry page receives product attributes and software generated keys). However, Ghabel does not disclose wherein the signature is generated by the tag, but Alawadi does (Alawadi [0049], [0050], [0051] an identification tag having a private key sends a response message that is signed using the private key).
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. That is in the substitution of transmitting a signature generated using a private key of Alawadi for the transmitting a private key of Ghabel. Both a signature generated using a private key and a private key are known in the art of private-public key authentication as pieces of private information that are used as a part of an authentication process. Thus, the simple substitution of one known element in the art of private-public key authentication for another producing a predictable result renders the claim obvious. Specifically, one of ordinary skill in the art would have recognized that only routine engineering would be required to substitute the above features and yield predictable result of Ghabel’s system with the improved functionality to use a private key without needing to transmit the private key itself thereby increasing security.
Ghabel, as modified above by Alawadi, teaches:
transmitting by the tag of the signed transaction to the electronic device by NFC or RFID (Ghabel (Col. 11 Lines 10-18) private key is attached to the product; (Col. 16 Lines 20-25) read keys); and
immutable recording the link between the tag and the token by a transmission, by the electronic device, of the signed transaction to a server implementing the blockchain (Ghabel (Col. 8 Lines 41-57) blocks are added to the blockchain; (Col. 18 Lines 17-19), (Col. 22 Lines 23-25), (Col. 26 Lines 32-41) record an entry of transport details to the blockchain).
Claim 2.
Ghabel in view of Alawadi teaches all the elements of claim 1, as shown above. Additionally, Ghabel discloses:
wherein the signature comprises three components generated by a cryptographic signature algorithm, wherein a third component of which enables identification the public key (Ghabel (Col. 12 Lines 1-4) public transport key; (Col. 17 Lines 27-30) transport key is associated with the product at the time of shipment and is associated (i.e. linked) with the private and public authentication keys).
Claim 3.
Ghabel in view of Alawadi teaches all the elements of claim 1, as shown above. Additionally, Ghabel discloses:
wherein the signature comprises two components generated by a cryptographic signature algorithm, one of the two components identifying the asymmetric pair of keys (Ghabel (Col. 8 Lines 58 - Col. 9 Line 6) private key and public key pairing are established by the manufacturer).
Claim 4.
Ghabel in view of Alawadi teaches all the elements of claim 1, as shown above. Additionally, Ghabel discloses:
wherein the immutable recording of the link between the tag and the token comprises execution by the server of scripts (Ghabel (Col. 14 Lines 6-12) Javascript).
Claim 5.
Ghabel in view of Alawadi teaches all the elements of claim 1, as shown above. Additionally, Ghabel discloses:
wherein sending the transaction data by the electronic device is performed via an application, the application being implemented by the electronic device and the recording of the link being initiated by the application (Ghabel (Col. 12 Lines 9-56) web-application allows users to authenticate products, view products, and transfer products).
Claim 7.
Ghabel in view of Alawadi teaches all the elements of claim 1, as shown above. Additionally, Ghabel discloses:
wherein the blockchain is of Ethereum virtual machine type (Ghabel (Col. 8 Lines 9-19) smart contract; (Col. 14 Lines 38-57) back-end software loaded on servers).
Claim 8.
Ghabel discloses a system for recording a link between a radio frequency tag and a token comprising data associated with a product, the device comprising:
an electronic device configured to send, by NFC or RFID, data of a transaction to the radio frequency tag, and configured to transmit the transaction signed to a server implementing a blockchain (Ghabel (Col. 9 Lines 49-62) keys are generated and stored on the product smart contract; (Col. 11 Lines 10-18) private key is attached to the product; (Col. 12 Lines 9-28) web application executed by mobile devices; (Col. 12 Lines 45-53) manufacturer has a portal through which they can create the digital representation of the product which generates product keys and a hash which is pushed into an NFC device; (Col. 15 Lines 48-53) generate a public key and a private key associated with a product to be used in authentication by the product smart contract);
Regarding the following limitation:
wherein the radio frequency tag is configured to generate a signature of the data of the transaction based on a private key, forming an asymmetric pair of keys comprising the private key and a public key;
Ghabel discloses generate a signature of the data of the transaction based on a private key, forming an asymmetric pair of keys comprising the private key and a public key (Ghabel (Col. 8 Lines 20-38) key generation; (Col. 8 Lines 41-57) initial block creation includes a private key which is used to add additional blocks to the blockchain; (Col. 15 Lines 35-38) once a transaction is initiated a product transaction entry page receives product attributes and software generated keys). However, Ghabel does not disclose wherein the signature is generated by the tag, but Alawadi does (Alawadi [0049], [0050], [0051] an identification tag having a private key sends a response message that is signed using the private key).
One of ordinary skill in the art would have been motivated to include the teachings of Alawadi in the system of Ghabel for the same reasons discussed above in claim 1.
Ghabel, as modified above by Alawadi, teaches:
wherein the signature is configured to enable a recording on a blockchain (Ghabel (Col. 8 Lines 41-57) initial block creation includes a private key which is used to add additional blocks to the blockchain);
wherein the radio frequency tag is further configured to transmit, by NFC or RFID, the signature to the electronic device (Ghabel (Col. 11 Lines 10-18) private key is attached to the product; (Col. 16 Lines 20-25) read keys); and
wherein the electronic device is configured to transmit the signed transaction to the server implementing the blockchain and configured to immutably record the link between the radio frequency tag and the token (Ghabel (Col. 8 Lines 41-57) blocks are added to the blockchain; (Col. 18 Lines 17-19), (Col. 22 Lines 23-25), (Col. 26 Lines 32-41) record an entry of transport details to the blockchain).
Claim 9.
Ghabel in view of Alawadi teaches all the elements of claim 9 as shown above in claim 2.
Claim 10.
Ghabel in view of Alawadi teaches all the elements of claim 10 as shown above in claim 3.
Claim 11.
Ghabel in view of Alawadi teaches all the elements of claim 8, as shown above. Additionally, Ghabel discloses:
the server (Ghabel (Col. 14 Lines 38-57) back-end software loaded on servers).
Claim 12.
Ghabel in view of Alawadi teaches all the elements of claim 8, as shown above. Additionally, Ghabel discloses:
wherein the radio frequency tag is attached or integrated to the product (Ghabel (Col. 10 Lines 14-19), (Col. 11 Lines 11-15) RFID attached to the product).
Claim 13.
Ghabel in view of Alawadi teaches all the elements of claim 8, as shown above. Additionally, Ghabel discloses:
wherein the data associated with the product are images, metadata, or images and metadata (Ghabel (Col. 8 Lines 20-31) each entry includes information about the product).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ghabel in view of Alawadi further in view of Chua et al. (U.S. P.G. Pub. 2023/0169154 A1), hereinafter Chua.
Claim 6.
Ghabel in view of Alawadi teaches all the elements of claim 1, as shown above. However, Ghabel does not teach the following limitation, but Chua does:
wherein generating the signature is performed by an elliptic cryptography algorithm (Chua [0069] Elliptic Curve Cryptograph (ECC) generates a signature for an NFC tag using a private key of a private-public key pair).
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. That is in the substitution of elliptic curve cryptography of Chua for the key encryption of Ghabel (Ghabel (Col. 8 Lines 33-38) key encryption). Both the encryption of the key pair in Ghabel and the ECC encryption of a key pair in Chua are known techniques for generating a key pair. Thus, the simple substitution of one known element in the art of private-public key encryption for another producing a predictable result renders the claim obvious. Specifically, one of ordinary skill in the art would have recognized that only routine engineering would be required to substitute the above features and yield predictable result of Ghabel’s system with the improved functionality to more securely generate a key pair.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT M TUNGATE whose telephone number is (571)431-0763. The examiner can normally be reached Monday - Friday, 9:00 - 4:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shannon Campbell can be reached at (571) 272-5587. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SCOTT M TUNGATE/Primary Examiner, Art Unit 3628