DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 7/15/25.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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.
Status of Claims
Claims 1-20 are currently pending.
Claims 1-20 are rejected as set forth below.
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 .
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.
Claim 19 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
As per claim 19, the computer program product is directed to software per se as it consists of a software program that is executed by a computer. According to MPEP 2106 (I), however, there are four categories of invention: process, machine, article of manufacture, and composition of matter. Therefore, as "software" is neither a category of invention nor a subset of one of the categories it does not represent patent eligible subject matter.
Claim Rejections - 35 USC § 112(b)
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 4, 9 are 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 pre-AIA the applicant regards as the invention.
As per claim(s) 4, the limitation “wherein the digital representation and the corresponding digital representation” renders the scope of the claim indefinite because the underlined term lacks antecedent basis. There is no previous mention of a corresponding digital representation.
As per claim(s) 9, the limitation “wherein the digital representation is part of a non-transferrable non-fungible token tracked by the public distributed ledger” renders the scope of the claim indefinite because it contradicts previous limitations. Specifically, claim 9 is dependent on claim 8, and claim 8 discloses the digital representation as being reassigned, or transferred. For purposes of examination, the limitation will be interpreted as wherein the digital representation is part of a transferrable non-fungible token tracked by the public distributed ledger
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 1-18, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20230088936 to Chalkley in view of United States Patent Application Publication No. 20230031817 to Mulas.
As per claim(s) 1, Chalkley teaches:
A method for reassigning a digital representation of a physical item from a donor to a beneficiary, wherein the physical item comprises a security device, wherein the donor and the beneficiary are digital accounts, wherein each digital account is associated with an address in a cryptographic addressing system, the method comprising the following steps: ([0036], “In accordance with the described techniques, for example, the minting system 128 is configured to mint digital twin NFTs of physical items. The metadata for a digital twin NET may include a fingerprint of the physical item (e.g., a high-resolution image of one or more features of the item, a LIDAR scan of the physical item, a unique serial number engraved on the item, etc.) and digital content of the physical item (e.g., an image of the physical item for presentation, a video of the physical item, and/or a 3D model of the physical item).”; [0074], “By way of example, the NFT transfer instructions 310 may include a first address of a digital wallet which corresponds to a user account that owns the NET 302 and include a second address of a digital wallet which corresponds to the user account to which ownership of the NET 302 is being transferred, e.g., a public address of the digital wallet 146. Here, the first and second addresses may correspond to the identifiers of the respective users.”)
obtaining proof of access to the security device by performing a measurement of a physical property of the security device; ([0038]-[0039], “The fingerprint capture system 130 generates those fingerprints based on captured features of the physical items, such as features captured using sensors of one or more devices. The authentication service system 132 is configured to verify whether a physical item corresponds to an authentic physical item. The authentication service system 132 may verify whether a physical item corresponds to an authentic physical item by matching the fingerprint of a physical item, as generated by the fingerprint capture system 130, to distinguishing feature data 138 of a known authentic physical item.”)
transmitting the address associated with the beneficiary in connection with a validation to a trusted authority; performing an atomical reassignment of the digital representation to the address associated with the beneficiary; ([0075], “As with other transactions on the blockchain 116, one or more of the nodes 112 determines whether the transfer of the NFT 302 to the user account is valid, e.g., using a consensus mechanism. If the nodes 112 determine that the transfer to the user account is a valid transaction, the nodes 112 commit the valid transfer to the blockchain 116. To do so, the nodes 112 may cause the public wallet addresses of the parties to the transaction (including the public address of the digital wallet 146) to be digitally recorded in the NFT 302's data on the blockchain 116.”)
Chalkley does not explicitly teach, but Mulas teaches:
performing an atomical reassignment of the digital representation to the address associated with the beneficiary responsive to authenticating the proof of access by the trusted authority. ([0074], “In step 200, the identification tag integrated in the item to be traced is labelled by a unique code, UID, consisting of a non-modifiable and proprietary part of the tag, the identifier TID, and a second part containing a code MINIGUID uniquely paired with the identification tag.”; [0101]-[0107], “In step 600, the item passing through a portal for reading the identification tag at radiofrequency is detected by means of the emission of an excitation and reading carrier wave by the detectors SS associated with the portal, respectively a UHF carrier wave in the case of reading an RFID tag or an HF carrier wave in the case of reading an NFC tag. The local processing unit R receives the data packet signed by the centralized reading system CR and by the geolocation system GPS, verifies its origin and integrity and, if these checks are positive, extracts the unique identification code, UID, of the tag and the position data, packing them together and signing the data packet thus obtained with its own certificate of origin. The data thus formed may follow two channels: said data may be transmitted to the remote processing system S, which verifies its origin and integrity, extracts the relevant data therefrom and publishes said data on the blockchain; said data may be published directly in blockchain by using a dedicated derived smart-contract. The step 700 of recording a transfer of ownership may take place subsequently, at any time which is not related to the time of the previous steps being carried out but is triggered by the event of ownership of the item being transferred.”)
One of ordinary skill in the art would have recognized that applying the known technique of Mulas to the known invention of Chalkley would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such trusted authority features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the steps of transmitting the address associated with the beneficiary in connection with a validation to a trusted authority and performing an atomical reassignment of the digital representation to the address associated with the beneficiary so they are performed in connection with and in response to authenticating the proof of access by the trusted authority results in an improved invention because applying said technique ensures that the digital representation is only reassigned when the trusted authority verifies the proof of access, thus improving the overall security of the invention.
Regarding claim 18, Chalkley teaches:
a sensor configured to perform a measurement of a physical property of the security device; ([0038], “As discussed below, the features may be captured using one or more sensors of client devices (e.g., the client devices 106, 108), one or more sensors of the fingerprint capture system 130 (e.g., when configured with hardware to capture the features of physical devices), and/or sensors of other devices. By way of example, the client devices and/or the fingerprint capture system 130 may include a high-resolution digital camera to capture high-resolution digital image features of physical items.”)
an authentication service provided by a computer system configured to receive a measurement as a proof of access to the security device in connection with an address in a cryptographic addressing system, to determine a digital representation of the physical item based on the proof of access; ([0053-[0055]], “Based on matching the fingerprint 206 to data in the distinguishing feature data 138, the authentication service system 132 provides an authentic response 208, indicating that the physical item 204 is an authentic physical item. The minting system 128 obtains the fingerprint 206, such as from the fingerprint capture system 130 as depicted. Receipt of the fingerprint 206 by the minting system 128 may be responsive to the authentic response 208 indicating that the physical item 204 is an authentic physical item. In accordance with the described techniques, the minting system 128 is configured to cause a digital twin NET 210 of the physical item 204 to be minted on the blockchain 1.”)
a smart contract deployed on a public distributed ledger configured to, based on the address and digital representation transmitted from the authentication service, perform an atomical reassignment of the digital representation to the address; ([0075]; [0066], “Additionally, each time the digital twin NFT 210 is transferred to a different owner, e.g., responsive to the transfer to different digital wallet addresses, transfer information is also encoded in the digital twin NFT 210. Moreover, in scenarios where the digital twin NET 210 encodes a smart contract, the nodes 112 of the blockchain 116 can execute the smart contract in connection with a transfer.”)
Chalkley does not explicitly teach, but Mulas teaches:
transmit the received address and the digital representation to the smart contract responsive to authenticating the proof of access. ([0074], “In step 200, the identification tag integrated in the item to be traced is labelled by a unique code, UID, consisting of a non-modifiable and proprietary part of the tag, the identifier TID, and a second part containing a code MINIGUID uniquely paired with the identification tag.”; [0101]-[0107], “In step 600, the item passing through a portal for reading the identification tag at radiofrequency is detected by means of the emission of an excitation and reading carrier wave by the detectors SS associated with the portal, respectively a UHF carrier wave in the case of reading an RFID tag or an HF carrier wave in the case of reading an NFC tag. The local processing unit R receives the data packet signed by the centralized reading system CR and by the geolocation system GPS, verifies its origin and integrity and, if these checks are positive, extracts the unique identification code, UID, of the tag and the position data, packing them together and signing the data packet thus obtained with its own certificate of origin. The data thus formed may follow two channels: said data may be transmitted to the remote processing system S, which verifies its origin and integrity, extracts the relevant data therefrom and publishes said data on the blockchain; said data may be published directly in blockchain by using a dedicated derived smart-contract. The step 700 of recording a transfer of ownership may take place subsequently, at any time which is not related to the time of the previous steps being carried out but is triggered by the event of ownership of the item being transferred.”; [0033], “Again by means of the web platform of the entity that owns the authentication and certification system, it is possible to record a transfer of ownership (a transaction) between the club/the official retailer and a collector buyer on the token, for example according to the methods of digitally recording the fulfilment of a contract through ad hoc computer protocols (“smart contract”).”)
One of ordinary skill in the art would have recognized that applying the known technique of Mulas to the known invention of Chalkley would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such trusted authority features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the authentication service to transmit the received address and the digital representation to the smart contract responsive to authenticating the proof of access results in an improved invention because applying said technique ensures that the digital representation is only reassigned when the trusted authority verifies the proof of access, thus improving the overall security of the invention.
As per claim(s) 2, Chalkley teaches:
wherein the atomical reassignment comprises: invalidating the digital representation held by the donor; and reissuing a corresponding digital representation to the beneficiary. ([0075], The Examiner notes that transferring the NFT out of the donor’s digital account is equivalent to invalidating the NFT for the donor.)
As per claim(s) 3, Chalkley teaches:
wherein the atomical reassignment comprises a transaction from the donor to the beneficiary. ([0075])
As per claim(s) 4, Chalkley teaches:
wherein the digital representation and the corresponding digital representation both are cryptographically associated with an item identifier, and wherein the item identifier is associated with the physical item, preferably uniquely associated. ([0036], “In accordance with the described techniques, for example, the minting system 128 is configured to mint digital twin NFTs of physical items. The metadata for a digital twin NET may include a fingerprint of the physical item (e.g., a high-resolution image of one or more features of the item, a LIDAR scan of the physical item, a unique serial number engraved on the item, etc.) and digital content of the physical item (e.g., an image of the physical item for presentation, a video of the physical item, and/or a 3D model of the physical item).”; [0029], “In addition or alternatively, tokens, implemented according to a token standard (e.g., ERC-721 or ERC-1155) and by leveraging the architecture and protocols of the blockchain 116, can be programmatically encoded as non-fungible assets that are individually unique and cannot be directly interchanged with other similar tokens “like-for-like”. In accordance with the described techniques, for instance, the architecture and protocols of the blockchain 116 can be leveraged to create non-fungible tokens (NFTs) on the blockchain 116.”)
As per claim(s) 5, Mulas teaches:
wherein authenticating the proof of access to the security device comprises retrieving the item identifier. ([0074], “In step 200, the identification tag integrated in the item to be traced is labelled by a unique code, UID, consisting of a non-modifiable and proprietary part of the tag, the identifier TID, and a second part containing a code MINIGUID uniquely paired with the identification tag.”; [0102], “The detectors SS transmit the data regarding the presence of the detected tag to the centralized reading system CR which decodes the data, thereby making said data usable for subsequent processing.”)
As per claim(s) 6, Mulas teaches:
wherein receiving the address of the beneficiary in connection with the proof of access to the security device comprises receiving the item identifier, wherein authenticating the proof of access to the security device is limited to the security device of the physical item associated with the item identifier. ([0074])
As per claim(s) 7, Mulas teaches:
after the transmitting and before the performing steps, the step: issuing by the trusted authority an attestation by cryptographically signing a data package comprising the proof of access and the address associated with the beneficiary; and wherein authenticating the proof of access during performing the atomical reassignment comprises verifying that the trusted authority is the signer of the attestation. ([0104], “The local processing unit R receives the data packet signed by the centralized reading system CR and by the geolocation system GPS, verifies its origin and integrity and, if these checks are positive, extracts the unique identification code, UID, of the tag and the position data, packing them together and signing the data packet thus obtained with its own certificate of origin. The data thus formed may follow two channels: [0105] said data may be transmitted to the remote processing system S, which verifies its origin and integrity, extracts the relevant data therefrom and publishes said data on the blockchain; [0106] said data may be published directly in blockchain by using a dedicated derived smart-contract.”)
As per claim(s) 8, Chalkley teaches:
wherein the donor and the beneficiary are digital accounts in a public distributed ledger, the digital representation is part of a non-fungible token tracked by the public distributed ledger, and the atomical reassignment of the digital representation is implemented by a smart contract deployed on the public distributed ledger. ([0075]; [0066], “Additionally, each time the digital twin NFT 210 is transferred to a different owner, e.g., responsive to the transfer to different digital wallet addresses, transfer information is also encoded in the digital twin NFT 210. Moreover, in scenarios where the digital twin NET 210 encodes a smart contract, the nodes 112 of the blockchain 116 can execute the smart contract in connection with a transfer.”)
As per claim(s) 9, Chalkley teaches:
wherein the digital representation is part of a non-transferrable non-fungible token tracked by the public distributed ledger. ([0075], See the corresponding 35 USC 112(b) rejection for claim interpretation.)
As per claim(s) 10, Chalkley teaches:
wherein the atomical reassignment comprises invalidating the digital representation held by the donor and reissuing a corresponding digital representation to the beneficiary; and wherein invalidating the digital representation held by the donor comprises: revoking or burning the non-fungible token comprising the digital representation held by the donor. ([0075], The Examiner notes that transferring the NFT out of the donor’s digital account is equivalent to invalidating the NFT for the donor.)
As per claim(s) 11, Chalkley teaches:
wherein the donor is not authorized to invalidate the non-fungible token ([0075]; [0066])
As per claim(s) 12, Chalkley teaches:
wherein only the owner or deployer of the smart contract, which is different from the donor and the beneficiary, is authorized to invalidate the non-fungible token. ([0075]; [0066])
As per claim(s) 13, Mulas teaches:
wherein the trusted authority is or is associated to the owner or deployer of the smart contract. ([0104])
As per claim(s) 14, Mulas teaches:
wherein the trusted authority is one of the one or more operators specified in or through the smart contract. ([0104])
As per claim(s) 15, Mulas teaches:
wherein the trusted authority stores reference characteristics of the security device and performs the step of authenticating the proof of access to the security device based on the reference characteristics. ([0104]
As per claim(s) 16, Chalkley teaches:
wherein the security device is an optical security device. ([0038], “The fingerprint capture system 130 is configured to generate digital fingerprints of physical items that uniquely identify a given physical item from other physical items. The fingerprint capture system 130 generates those fingerprints based on captured features of the physical items, such as features captured using sensors of one or more devices. As discussed below, the features may be captured using one or more sensors of client devices (e.g., the client devices 106, 108), one or more sensors of the fingerprint capture system 130 (e.g., when configured with hardware to capture the features of physical devices), and/or sensors of other devices. By way of example, the client devices and/or the fingerprint capture system 130 may include a high-resolution digital camera to capture high-resolution digital image features of physical items.”)
As per claim(s) 17, Chalkley teaches:
wherein the proof of access to the security device comprises one or more optical features of the optical security device, and wherein the method comprises capturing the one or more optical features with a camera. ([0038], “The fingerprint capture system 130 is configured to generate digital fingerprints of physical items that uniquely identify a given physical item from other physical items. The fingerprint capture system 130 generates those fingerprints based on captured features of the physical items, such as features captured using sensors of one or more devices. As discussed below, the features may be captured using one or more sensors of client devices (e.g., the client devices 106, 108), one or more sensors of the fingerprint capture system 130 (e.g., when configured with hardware to capture the features of physical devices), and/or sensors of other devices. By way of example, the client devices and/or the fingerprint capture system 130 may include a high-resolution digital camera to capture high-resolution digital image features of physical items.”)
As per claim(s) 20, Chalkley teaches:
wherein the atomical reassignment comprises invalidating the digital representation held by the donor and reissuing a corresponding digital representation to the beneficiary; and wherein invalidating the digital representation held by the donor comprises revoking or burning the non-fungible token comprising the digital representation held by the donor. ([0075], The Examiner notes that transferring the NFT out of the donor’s digital account is equivalent to invalidating the NFT for the donor.)
Claim 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20230088936 to Chalkley in view of United States Patent Application Publication No. 20130254841 to Venkatesan.
As per claim 19, Chalkley teaches:
A computer program product for reassigning a digital representation of a physical item from a donor to a beneficiary comprising instructions which, when the program is executed by a computer participating in a public distributed ledger, cause the computer to carry out the steps: receiving a message from an authentication service, the message comprising the digital representation and an address in a cryptographic addressing system; ([0036], “In accordance with the described techniques, for example, the minting system 128 is configured to mint digital twin NFTs of physical items. The metadata for a digital twin NET may include a fingerprint of the physical item (e.g., a high-resolution image of one or more features of the item, a LIDAR scan of the physical item, a unique serial number engraved on the item, etc.) and digital content of the physical item (e.g., an image of the physical item for presentation, a video of the physical item, and/or a 3D model of the physical item).”; [0074], “By way of example, the NFT transfer instructions 310 may include a first address of a digital wallet which corresponds to a user account that owns the NET 302 and include a second address of a digital wallet which corresponds to the user account to which ownership of the NET 302 is being transferred, e.g., a public address of the digital wallet 146. Here, the first and second addresses may correspond to the identifiers of the respective users.”)
performing an atomical reassignment of the received digital representation to the received address. ([0075], “As with other transactions on the blockchain 116, one or more of the nodes 112 determines whether the transfer of the NFT 302 to the user account is valid, e.g., using a consensus mechanism. If the nodes 112 determine that the transfer to the user account is a valid transaction, the nodes 112 commit the valid transfer to the blockchain 116. To do so, the nodes 112 may cause the public wallet addresses of the parties to the transaction (including the public address of the digital wallet 146) to be digitally recorded in the NFT 302's data on the blockchain 116.”)
Chlakley does not explicitly teach, but Venkatesan teaches:
cryptographically authenticating that the authentication service is a trusted authentication service; ([0042], “Any of the devices illustrated in FIG. 1 that receive communications from trusted authority 150 may have complementary security information such that, upon receiving information from trusted authority 150, the device may decrypt, validate the signature and/or perform other cryptographic processing to access or verify that the information was generated by trusted authority 150.”)
One of ordinary skill in the art would have recognized that applying the known technique of Venkatesan to the known invention of Chalkley would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such cryptography features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to include the step of cryptographically authenticating that the authentication service is a trusted authentication service results in an improved invention because applying said technique ensures that the authentication service is a trusted service, thus improving the overall security of the invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
United States Patent Application Publication No. 20220215382 to Chen discloses providing instant authentication of a product and enhanced user experience with the product via blockchain technologies. A product verification system uses blockchain technologies to track the supply chain process of each instance (e.g., each copy) of a product. Upon receiving a request for authenticating an item, a code provided with the item is scanned. A token corresponding to an instance of a product is determined based on the code. The product verification system traverses a blockchain to access data associated with the token. The item is authenticated based on the data. Additional content provided by the supply chain and/or the manufacturer of the instance of the product may be presented on a user device in response to authenticating the item.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY HUANG whose telephone number is (408)918-9799. The examiner can normally be reached 9:00a - 5:30p PT.
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/JAY HUANG/Primary Examiner, Art Unit 3619
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