Detailed Action
Status of Claims
This action is in reply to the application filed on May 20, 2025.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The information disclosure statement (IDS) submitted on 5/20/2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Therefore, the effective filing date is November 24, 2022.
Claims 1-9 are currently pending and have been examined.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
“an author section,” “a promoter section,” “a public section” in claims 1-9.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Although the claims do not use the word “means,” the nonce term “section” coupled solely with functional language does not connote sufficient structure to a POSITA. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1-9 are rejected under 35 U.S.C. §112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.
The claims, as presently drafted, contain multiple instances of the phrase "and/or" in reciting key elements and participants (e.g., “an auction house and/or an art gallery and/or a private individual,” “web portal and/or application,” “RFID, NFC, Beacon, Bluetooth and/or other similar technology,” etc.).
Example of Indefinite Language from Claim 1:
- "System for physical and digital art, suitable for use by an artist with a signature, an auction house, an art gallery and/or a private individual to exhibit, sell, buy and certify through blockchain technology at least a work of art of the phygital type, and being characterized in that it comprises:
- at least a web portal and/or application suitable for allowing the display, sale, purchase and certification via blockchain technology of said work of art and its economic evaluation; ..."
- "a producer kit adapted to allow said artist to generate a digital token for his/her own work of art associated with a tag RFID, NFC, Beacon, Bluetooth and/or of other similar technology; ..."
- "a manager kit adapted to allow said auction house and/or said art gallery to map their exhibition space and to be able to generate said token for said work of art and to be able to sell it; ..."
The use of "and/or" in the claims creates uncertainty as to the metes and bounds of the claimed invention because it is ambiguous whether:
- The claim requires all recited elements, any one of them, or any combination thereof;
- The system must include both a web portal and an application, or just one of them;
- The kit must use all listed tag technologies or any one or more of them;
- The recited participants (artist, auction house, art gallery, private individual) must all be included, or any one or more.
Such ambiguity makes it impossible to determine the scope of the claims with reasonable certainty, as required by 35 U.S.C. §112(b) and the Supreme Court's standard in *Nautilus, Inc. v. Biosig Instruments, Inc.*, 572 U.S. 898 (2014).
- MPEP 2173.05(h), Indefiniteness—"And/Or" in the Claims:
"The use of the phrase 'and/or' in a claim is generally considered indefinite because it fails to set out the metes and bounds of the invention with reasonable certainty."
- Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014):
"[A] patent is invalid for indefiniteness if its claims, read in light of the specification and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention."
Applicant is required to amend the claims to remove all instances of "and/or" and clearly recite, for each element, whether all, any, or a specific combination of the recited alternatives is required. The claims must be revised to particularly point out and distinctly claim the subject matter regarded as the invention.
Example Acceptable Amendments
- Replace “and/or” with “or” or “and,” as appropriate, and clarify whether any one, all, or a specific subset of the listed elements is required.
- For example:
- “...a web portal or an application...” (if either alone suffices)
- “...a web portal and an application...” (if both are required)
- “...at least one of: a web portal, an application...” (if any one or more is sufficient)
Claims 1-9 are rejected under 35 U.S.C. §112(b) for indefiniteness due to the use of "and/or" language. Applicant must amend the claims to clarify the scope and remove the ambiguity introduced by "and/or."
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 1-9 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception, i.e., an abstract idea, without reciting additional elements that integrate the exception into a practical application, and without reciting significantly more than the exception itself.
Claim 1 (similarly claim 9) is rejected under 35 U.S.C. 101 because the claim is directed to a judicial exception without significantly more. Claim 1 is directed to the abstract idea of commercial/legal interactions and mental processes relating to artwork valuation, certification, sale, purchase, and recommendation, as shown by the recitations of “display, sale, purchase and certification … and its economic evaluation,” “sign contracts … and execute transactions,” “linking the economic evaluation … solely to the signature,” “verify the information of said artist,” “analyzing the data,” “determination of the art coefficient,” and “personalized suggestions.” These limitations fall within the 2019 PEG groupings of certain methods of organizing human activity and mental processes. The additional elements, including a web portal/application, database, AI/ML, blockchain/NFT, wallets, tags, tag reader, printing device, camera, producer kit, manager kit, and smart display case, do not integrate the exception into a practical application because they are recited at a high level of generality, merely use generic technology as tools, and do not improve computer, blockchain, camera, tag, or other technology. The anti-counterfeiting ink-droplet/tag limitation is also recited only in terms of desired result and does not set forth a specific technical mechanism that improves anti-counterfeiting technology. The specification describes the recited technologies as known technologies, supporting that the additional elements are well-understood, routine, and conventional. Therefore, claim 1 is ineligible under § 101.
Dependent claims: However, similar to the analysis of the additional elements identified in claims 1 and 9 described above, the aforementioned additional identified for dependent claims 2-8 also deemed to be: (1) no more than a recitation of: adding the words "apply it" (or an equivalent) with the judicial exception; mere instructions to implement an abstract idea on a computer; or merely uses a computer as a tool to perform an abstract idea; and (2) the equivalent of adding insignificant extra-solution activity to the judicial exception. See MPEP §§ § 2106.05(f), (g). Thus, the additional elements in dependent claims 2-8 are not indicative of integrating the judicial exception into a practical application.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Norton (US 2022/0239495) in view of He (WO 2020238002), further in view of Ware (US 2023/0342790), and further in view of Eidam (US 11,740,853).
Regarding Claims 1 and 9: Norton, He, Ware, and Eidam disclose a system for physical and digital art, suitable for use by an artist with a signature, an auction house, an art gallery and/or a private individual to exhibit, sell, buy and certify through blockchain technology at least a work of art of the phygital type, and being characterized in that it comprises:
Norton teaches a comprehensive blockchain-based system for certification, authentication, sale, and management of physical and digital artworks, including:
A web portal/application for registration, display, sale, purchase, and blockchain certification (¶¶34, 50, 101, Fig. 5); a digital signatures and legal/pseudonymous identity for artists (¶¶ 19, 20, 34, Figs. 1D, 1E); a cold wallet for NFTs/cryptocurrency (¶¶ 39, 40, 111, Figs. 7-9); anti-counterfeiting via QR, RFID, or hologram (¶¶ 39, 40, 111, Figs. 7-9); a manager kit with tag reader, printer, cold wallet (¶¶ 39, 41, 111, Figs. 9C-9E); a video/photo documentation in the certificate (¶¶ 37, 51, 111, Figs. 11, 12); a robust database/public/private portal structure (¶¶ 34, 51, 101, Figs. 6, 14, 15); a public/private user roles (artist, gallery, auction, collector, owner).
Norton does not explicitly disclose: DNA/ethanol-based anti-counterfeiting or microscopic image-based verification; artificial intelligence (AI/ML) for verification, analytics, or web scraping; and a smart display case for private owners.
However, HE teaches DNA/ethanol anti-counterfeiting materials embedded in the artwork ([Abstract], [Summary], Claims); microscopic image capture (60–200x) of artwork regions for unique identification ([Description], Claims); and NFC-enabled chips for tag reading and verification ([Description], Claims).
It would have been obvious to one of ordinary skill to combine HE’s advanced anti-counterfeiting (DNA/ethanol) and microscopic image-based verification with Norton’s comprehensive web-based art certification platform to further enhance security, prevent forgery, and provide robust, physical-digital linking of artwork to the blockchain record. The art market and anti-counterfeiting literature routinely combine multiple authentication layers to increase trust and deter fraud.
Further, Ware teaches use of artificial intelligence (AI/ML) for automated analysis, verification, and analytics of digital “fingerprints” of artwork; AI/ML for comparing image data, metadata, and other digital signatures to detect authenticity, forgeries, or anomalies; AI/ML for analytics and system automation (¶¶ 33-37, 49, 51).
It would have been obvious to incorporate Ware’s AI/ML-based verification and analytics into the combined Norton system to automate and scale the verification process, reducing human error and subjectivity; provide real-time, data-driven analytics for artwork authentication and provenance; enhance system trust, efficiency, and market acceptance, as AI/ML is well known for improving accuracy and scalability in digital authentication and fraud detection systems.
Furthermore, Eidam teaches a smart display/table for private owners, with tag reading and real-time NFT/blockchain display (fig. 6, abstract, Col 1, Col 3, Col 5-6.
It would have been obvious to one of ordinary skill to combine these features to improve efficiency and ease of conducting transactions (Eidam, Col 1). Also, to provide a robust, user-friendly, and secure system for blockchain-based art authentication, certification, and display, as each solves a known need and is technically compatible with the others.
Regarding Claim 2: Norton, He, Ware, and Eidam disclose the system for physical and digital art, according to claim 1, characterized in that said public section allows said private individual to purchase works of art and to make investments by purchasing shares part of said auction house, of said art gallery , or directly of the system and market of phygital art works; said public section being adapted to provide indications relating to the trend of the market for works of art and forecasts made by said artificial intelligence (Norton discloses a public web portal where users (including private individuals) can purchase artwork (see ¶¶ 34, 50, 101, Figs. 5, 5A); Norton also describes ownership transfer, fractionalization, and certificates that can represent shares or partial interests in digital/physical works (see ¶¶ 19, 25, 106, 107, 108);
Norton further provides analytics, reporting, and sales trends (see ¶¶ 51, 101, 106, Figs. 6, 15)).
Regarding Claim 3: Norton, He, Ware, and Eidam disclose the system for physical and digital art, according to claim 1, characterized in that said producer kit and said manager kit allow to connect said token to said tag of said work of art ; said token being adapted to be registered with smart contract technology in the form of a Non-Fungible Token (NFT); said token registered in the form of NFT usable within said web portal and/or application, is provided with semi-automatic functions that can be customized by the owner who may be said artist, said house of auctions or said art gallery, and which can provide for the display of the photographic representation of said work of art free of charge, by paying a certain fee, or only by purchasing the work of art itself; said token in the form of an NFT adapted to guarantee ownership of said work of art with a digital certificate of ownership and/or authenticity regardless of the movement, display or custody of the physical representation of said work of art itself (Norton discloses tags (QR, RFID, NFC) linked to digital tokens/certificates (see ¶¶ 39, 44, 111, Figs. 7–9); Norton further describes NFT like digital certificates registered on blockchain (see ¶¶ 17, 19, 34, 51); Norton further describes customizable certificates and access control (see ¶¶ 34, 50, 51, 101); Norton further teaches ownership is guaranteed by the blockchain record, independent of physical location (see ¶¶ 19, 34, 51)).
Regarding Claim 4: Norton, He, Ware, and Eidam disclose the system for physical and digital art, according to claim 1, characterized in that said anti-counterfeiting device is adapted to produce an anti-counterfeiting ink jet, supplied in disposable format, on said tag to make said tag unique by generating on it and on the signature printed on it a random and irreproducible distribution of ink droplets and to generate a physical-digital link between said signature, said tag and consequently said token which is saved in said database and which certifies the originality of said work of art (Norton teaches QR, RFID, or hologram anti-counterfeiting tags with unique, hard-to-replicate identifiers (see ¶¶ 39, 40, 111, Figs. 7-9);
The tag is physically attached and cryptographically linked to the digital token/certificate (see ¶¶ 39, 40, 111)).
Regarding Claim 5: Norton, He, Ware, and Eidam disclose the system for physical and digital art, according to claim 1, characterized in that said producer kit comprises a video camera with a communication unit adapted to connect to said author section for setting up and making videos, time lapses, and/or photos of the entire creation process, part of the process, or just the signing operation of said artwork which may be included directly in the token of the blockchain of the work of art (Norton describes capturing photos and videos of the creation/authentication process (see ¶¶ 37, 51, 111, Figs. 11, 12); This documentation is included in the digital certificate/token (see ¶¶ 37, 51, Figs. 11, 12); Uploading documentation is performed via the web portal/app (see ¶¶ 34, 50, 101)).
Regarding Claim 6: Norton, He, Ware, and Eidam disclose the system for physical and digital art, according to claim 1, characterized in that said manager kit comprises a video scanning device for digitizing the physical environment of said art gallery and/or another exhibition space; said video scanning device adopting infrared laser technology for mapping the environment and digitizing it in said display space of said web portal and/or application ; the environment scanned with said video scanning device is adapted to be set up in said promoter section with the photographic representations of said works of art and/or with the tokens thereof (Norton teaches digital representation of exhibition spaces and the use of digital images for display and virtual galleries (see ¶¶ 34, 50, 51, 101, Figs. 5A, 9C–9E)).
Regarding Claim 7: Norton, He, Ware, and Eidam disclose the system for physical and digital art, according to claim 1, characterized in that said Web portal and/or application takes advantage of decentralized Applications (dApps) capable of providing separate services for: geolocating said work of art; scanning said signature and said artwork via a portable device such as a smartphone, tablet and the like; having an event calendar that updates and sends deadline notifications; having a map of the managers, museums, art studios, art galleries that participate in the system making them physically visitable (Norton describes modular, decentralized, and web-based app functionality (see ¶¶ 34, 50, 51, Figs. 6, 14, 15); Norton enables scanning of tags (QR, RFID, NFC) and includes location/event data (see [0039], [0040], [0111], Figs. 7–9); Norton supports event tracking and mapping of art venues/galleries (see ¶ 51, Figs. 6, 14, 15)).
Regarding Claim 8: Norton, He, Ware, and Eidam disclose the system for physical and digital art, according to claim 1, characterized in that said exhibition space of said web portal and/or application can be visited by a user, whether said artist and/or said private individual using a virtual reality viewer adapted to allow a virtual visit to said art gallery; said virtual reality viewer being adapted to allow the use of augmented reality algorithms, when worn within the physical space of said art gallery, so that, once said works of art are displayed, the data of the relative tokens and the price are automatically shown, and allowing to be able to immediately purchase a work of art by interacting with the virtual reality viewer for example by touching input buttons on it, making particular movements with the head or other; said virtual reality viewer and said web portal and/or application being adapted to allow the creation of digital museums in which a visitor can pay an entrance ticket to see said works of art (Norton describes virtual galleries and digital exhibitions accessible via web/mobile interface (see ¶¶ 34, 50, 51, Figs. 5A, 9C–9E); Norton supports digital display of tokens, prices, and purchase options in virtual exhibitions (see ¶ 51, Figs. 5A, 9A, 9C–9E)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FAHD A OBEID whose telephone number is (571)270-3324. The examiner can normally be reached Monday-Friday 8:30am-5:00pm.
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.
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.
/FAHD A OBEID/Supervisory Patent Examiner, Art Unit 3627
Prosecution Insights