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 filed 03/05/2025, NPL, item 3, (Martinod et al.,) fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because there is no date for the reference. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
Specification
The disclosure is objected to because of the following informalities: specification does not refer to figure 1, however the items from figure 1 are described.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 29-30 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 29-30 do not further limit claim 16, merely chaining the embodiment. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The term “it” in claim 18, is a relative term which renders the claim indefinite. The term “it” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “it” does not define what is performed by a computer application, making what “it” is refereeing to.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 16, 18-21, 23-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Voorhees et al., (US Publication No. 2021/0390531), hereinafter “Voorhees”, and further in view of Schauer, (US Publication No. 2022/0337392), hereinafter “Schauer”.
Regarding claims 16, 29-30, Voorhees discloses
recording data relating to a tangible asset in association with a subject [Voorhees, paragraph 20, diamond owner also owns a non0-fungible token (NFT) on a blockchain that represents ownership of the physical diamond], characterized by comprising in combination:
generating a pair of cryptographic keys, a public key and a private key, respectively, adapted to define the identity of said subject in a concatenated block digital register replicated in a plurality of nodes of a computer network [Voorhees, paragraphs 88-89, private / public keys, blockchain to manage NFT];
acquiring data related to the asset from a central asset management entity adapted to store asset-related data comprising at least one unique asset identifier data and at least one among asset ownership or possession data, asset usage data, asset maintenance data, and asset biographical data [Voorhees, paragraphs 55-59, 78, figures 4, 7, confirm the metadata in the NFT];
generating a Voorhees, paragraph 59, 78, smart contract, NFT];
storing said Voorhees, paragraphs 59, 78, smart contract, NFT]; and
creating, in said digital register, a non-fungible token, NFT, including said unique identifier associated with the Voorhees, paragraphs 55-59, 78-79, figures 4, 7, 8, smart contract, NFT, blockchain].
Voorhees does not specifically disclose, however Schauer teaches
digital certificate [Schauer, paragraph 35, generate digital certificates of authenticity (hereafter referred to as a non-fungible token or an “NFT”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to create a digital certificate for use and custody of an item in order to protect the security for the user.
It would have been obvious to combine Schauer with Voorhees as each art relates to protecting assets.
Regarding claim 18, Voorhees-Schauer further discloses
it is performed by a computer application accessible to said subject, which implements a digital wallet for cryptocurrencies and said pair of cryptographic keys is stored in said wallet [Voorhees, paragraphs 20, 78].
Regarding claim 19, Voorhees-Schauer further discloses
wherein said computer application accessible to said subject is a computer application residing on, or accessible from, a personal electronic mobile communication device of the subject [Voorhees, paragraphs 99-101 figure 11].
Regarding claim 20, Voorhees-Schauer further discloses
wherein said tangible asset is a tangible asset arranged for communicating data with said central management entity [Voorhees, paragraphs 55-59, 78-79, 99-101, figures 4, 7, 8, 11, smart contract, NFT, blockchain].
Regarding claim 21, Voorhees-Schauer further discloses
wherein at least one entity authorized to maintain the asset is arranged for communicating asset usage data or asset maintenance data to said central management entity [Voorhees, paragraphs 55-59, 78-79, 99-101, figures 4, 7, 8, 11, smart contract, NFT, blockchain].
Regarding claim 23, Voorhees-Schauer further discloses
wherein said subject is registered with said central asset management entity [Voorhees, paragraphs 55-59, 78-79, 99-101, figures 4, 7, 8, 11, user is registered (part of) smart contract, NFT, blockchain].
Regarding claim 24, Voorhees-Schauer further discloses
wherein said non-fungible token, NFT, includes said unique identifier associated with the digital certificate in encrypted form [Voorhees, paragraphs 55-59, 78-79, 99-101, figures 4, 7, 8, 11, user is registered (part of) smart contract, NFT, blockchain].
Regarding claim 25, Voorhees-Schauer further discloses
wherein said unique identifier associated with the digital certificate is encrypted with asymmetric key encryption by means of the public key of said pair of cryptographic keys adapted to define the identity of the subject in the digital register [Voorhees, paragraphs 88-89, private / public keys, blockchain to manage NFT].
Regarding claim 26, Voorhees-Schauer further discloses
comprising transferring said digital certificate from a first subject to a second subject whose identity in the aforesaid digital register is defined by a corresponding pair of cryptographic keys, a public key and a private key respectively, comprising transferring said non- fungible token including said unique identifier associated with the digital certificate from a digital wallet for cryptocurrencies accessible to the first subject to a digital wallet for cryptocurrencies accessible to the second subject [Voorhees, paragraphs 77-85, figures 7, 8, 9], characterized in that it further comprises:
communicating to said first subject the public key of the second subject [Voorhees, paragraphs 77-85, figures 7, 8, 9];
decrypting said unique identifier associated with the digital certificate included in said non-fungible token, NFT, by means of the private key of said pair of cryptographic keys adapted to define the identity of the first subject in the digital register, and subsequently encrypting said unique identifier associated with the digital certificate by means of the public key of said pair of cryptographic keys adapted to define the identity of the second subject in the digital register [Voorhees, paragraphs 77-85, figures 7, 8, 9]; and
associating said unique identifier associated with the digital certificate, encrypted by means of the public key of the second subject, with said non-fungible token, NFT [Voorhees, paragraphs 77-85, figures 7, 8, 9].
Regarding claim 27, Voorhees-Schauer further discloses
wherein said communicating to the first subject the public key of the second subject comprises: displaying an identification code of said public key of the second subject stored in a digital wallet for cryptocurrencies accessible to the second subject [Voorhees, paragraphs 77-85, figures 7, 8, 9]; and
reading said identification code and acquiring said public key of the second subject by the digital wallet for cryptocurrencies accessible to the first subject [Voorhees, paragraphs 77-85, figures 7, 8, 9].
Regarding claim 28, Voorhees-Schauer further discloses
wherein said second subject is registered with said central asset management entity [Voorhees, paragraphs 55-59, 78-79, 99-101, figures 4, 7, 8, 11, user is registered (part of) smart contract, NFT, blockchain].
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Voorhees-Schauer as applied to claim 16 above, and further in view of Kalaldeh et al., (US Publication No. 2023/0045071), hereinafter “Kalaldeh”.
Regarding claim 17, Voorhees-Schauer does not specifically disclose, however Kalaldeh teaches
wherein said digital certificate comprises an image made by superimposing said acquired data related to the asset on a predetermined graphic model or pattern for data representation [Kalaldeh, paragraph 141, digital certificate always holds… image].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to create a digital certificate with an image of the asset in order to protect the security for the user.
It would have been obvious to combine Kalaldeh with Voorhees-Schauer as each art relates to protecting assets.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Voorhees-Schauer as applied to claim 16 above, and further in view of Aronson, (US Publication No. 2018/0240191), hereinafter “Aronson”.
Regarding claim 22, Voorhees-Schauer does not specifically disclose, however Aronson teaches
wherein the non-indexed storage of said digital certificate takes place in at least one storage resource accessible in a public access communication network through the IPFS protocol [Aronson, paragraph 123].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the IPFS protocol in order to protect the security for the user.
It would have been obvious to combine Aronson with Voorhees-Schauer as each art relates to protecting assets.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J GOODCHILD whose telephone number is (571)270-1589. The examiner can normally be reached M-F 8am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeff Pwu can be reached at 571-272-6798. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/William J. Goodchild/Primary Examiner, Art Unit 2433
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