DETAILED ACTION
This action is in response to communication filed on 5/6/2025.
Claims 1-20 are pending.
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 8/15/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,309,276. Although the claims at issue are not identical, they are not patentably distinct.
Claim 1 of the ’276 patent recites a system that (i) encapsulates an NFT within a container having a control structure that restricts output by a content object linked to the encapsulated NFT, (ii) generates a control token compatible with a further control structure that restricts output by the container to a destination corresponding to the control token, and (iii) transmits, by the container’s control structure, the output from the content object to the destination. Those are every element of instant claim 1. Instant claim 1 merely omits the ’276 patent’s additional steps of obtaining the NFT based on a control structure that identifies a content type, determining compatibility of the control token, and transmitting based on that determination, and renumbers the control structures (’276 “second/third” = instant “first/second”).
A later claim that is fully met by an earlier patented claim, with the earlier claim merely adding limitations, is not patentably distinct from the earlier claim. Instant claim 1 is a broader recitation of patented claim 1. Claims 2–10 of this application correspond to claims 2–10 of the ’276 patent and add only the same features already claimed there. Claims 11–17 are the method form of claims 1–6 and 9. Claims 18–20 are the computer-readable-medium form of claims 1, 3–4, 6, and 9, with claim 18 further reciting the compatibility determination already present in claim 1 of the ’276 patent.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 6-8, 11-14, 16 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Simu et al. (US 2022/0210061) in view of Young et al. (US 2023/0093520).
Regarding claim 1, Simu discloses a system to share data by a token structure including a non-fungible token (NFT), the system comprising at least one memory and one or more processors configured to:
generate a control token compatible with a second control structure that restricts output by the container to a destination corresponding to the control token (Simu generates an authorization token and evaluates it against a content smart contract which releases content only to matching clients; [0009] “the authorization token is generated by an authority service based on verification of an identity credential supplied by the client”, [0054] “A client can interact with aspects of the content fabric to exchange the digital ticket for an authorization token … The authorization token provides a generalized mechanism for initiating an access request to consume digital content generated using content objects of the content fabric, for instance, by streaming, viewing, downloading, etc. The authorization token can be signed with a private key of the user and may be usable for extracting a user identifier (ID) such as a public blockchain address owned by the user. The access request is processed by the content fabric, using a blockchain smart contract in the content object and one or more policies of the blockchain smart contract.”, [0056] “When a user's application requests access to content, an authorization token can be created to access a corresponding content object … This execution against the smart contract associated with the content object/derivative can involve verifying the requesting user's ownership of the digital instrument, such as verifying the user's ownership of the digital instrument on the blockchain”); and
transmit, by the first control structure, the output from the content object to the destination (Simu delivers the content object to that client after the contract check; [0006] “provide the client with access to the digital content in response to determining that the one or more rules are satisfied”, [0010] “providing the client with access may include providing the client with the capability to decrypt the digital content”).
However, the prior art does not explicitly disclose encapsulate an NFT within a container, the container having a first control structure that restricts output by a content object linked to the encapsulated NFT.
Young in the field of the same endeavor discloses techniques for containerization of non-fungible tokens (NFTs). In particular, Young teaches the following:
encapsulate an NFT within a container, the container having a first control structure that restricts output by a content object linked to the encapsulated NFT (Young teaches wrapping constituent NFTs / licensing control structure in a container that carries a smart contract tied to the link resources; [0027] “The present invention allows for containerizing a group of NFTs that may be related in some way (tied to a single resource or include multiple resources) and determines an aggregated value for that NFT container … The resulting NFT container can then be used in transactions as a single entity. NFT container can have a different owner than the owners of the individual NFT”, [0026] “The token layer may include a smart contract that points to a series of metadata associated with the resource, and provides information about supply, authenticity, lineage, and provenance of the resource … The licensing layer may include any restrictions and licensing rules associated with purchase, sale, and any other types of transfer of the resource from one person to another”).
Therefore, it would have been obvious to a person of ordinary skill in the art at the time the invention was effectively filed to combine the prior art with the teaching of Young. One would have been motivated because placing Simu’s content linked NFT inside Young’s container is a predictable combination in the same field. Young’s token/licensing layer becomes the first control structure on the container. Simu’s generated authorization token and content smart contract remain the second control structure that restricts output of that container to the corresponding destination and causes transmission of the content object output.
Regarding claim 2, Simu-Young discloses the system of claim 1, wherein the NFT comprises a plurality of NFTs each linked to corresponding ones of a plurality of content objects comprising the content object (Young [0057] “ as shown in block 208, the process flow includes generating, using the NFT generator, the containerized NFT for the at least two resources, wherein the NFT comprises at least the resource information extracted from the at least two resources”).
Regarding claim 3, Simu-Young discloses the system of claim 1, wherein:
the first control structure comprises a first smart contract that includes a parameter (Simu [0186] “each transaction on the blockchain can execute a small piece of code that represents the terms of access for each content object. This small piece of code is referred to as a smart contract”, [0194] “content is a representation of a digital asset and is created in a library. The content can be represented by a smart contract, referred to herein as a content smart contract, which is determined by the containing Library. In some implementations, each content object has an instance of the content smart contract”); and
the one or more processors further configured to link, in response to a determination that the content object corresponds to a content type, the parameter of the first smart contract to the NFT (Simu [0056] “The digital instrument represents a content object (or derivative) and itself has a unique ID … In some implementations, the digital instrument can be a non-fungible token (NFT), where a token ID of the NFT is a unique entry in a hash map that links the token ID to the user's address on the blockchain, and where the hash map is part of a smart contract stored in the blockchain”, [0200] “At 2516, preparation begins by calling a method on the library contract to look up possible content types and their security groups offered by the library. At 2520, a method createcontent( ) is called on the corresponding library contract, passing the content type and the chosen security groups. This returns a transaction ID and a new content ID”).
Regarding claim 4, Simu-Young discloses the system of claim 1, wherein:
the second control structure comprises a second smart contract that includes a first control heuristic (Simu’s access path is a content object smart contract that evaluates rules and verifies NFT ownership. That evaluation is the first control heuristic; [0056] “When the access request is evaluated, an authorization transaction can execute against the smart contract associated with the content object (or derivative). This execution against the smart contract associated with the content object/derivative can involve verifying the requesting user's ownership of the digital instrument, such as verifying the user's ownership of the digital instrument on the blockchain”); and
the one or more processors further configured to transmit, in response to a determination by the first control heuristic that a second NFT corresponding to the container is detected by the second smart contract, output by the content object to the destination (Young’s containerized NFT is a second NFT that corresponds to the container. After combination, Simu’s mart-contract owner checks is run against that containerized NFT; [0027] “The present invention allows for containerizing a group of NFTs that may be related in some way (tied to a single resource or include multiple resources) and determines an aggregated value for that NFT container. The resulting NFT container can then be used in transactions as a single entity”, [0057] “as shown in block 208, the process flow includes generating, using the NFT generator, the containerized NFT for the at least two resources, wherein the NFT comprises at least the resource information extracted from the at least two resources”).
Regarding claim 6, Simu-Young discloses the system of claim 4, wherein:
the second control structure comprises a third smart contract that includes a second control heuristic (Simu’s access path is a content object smart contract that evaluates rules and verifies NFT ownership. That evaluation is the first control heuristic; [0056] “When the access request is evaluated, an authorization transaction can execute against the smart contract associated with the content object (or derivative). This execution against the smart contract associated with the content object/derivative can involve verifying the requesting user's ownership of the digital instrument, such as verifying the user's ownership of the digital instrument on the blockchain”); and
the one or more processors further configured to transmit, in response to a determination by the second control heuristic that the control token is authorized by the third smart contract, output by the content object to the destination (Simu [0054] “The authorization token provides a generalized mechanism for initiating an access request to consume digital content generated using content objects of the content fabric, for instance, by streaming, viewing, downloading, etc. The authorization token can be signed with a private key of the user and may be usable for extracting a user identifier (ID) such as a public blockchain address owned by the user. The access request is processed by the content fabric, using a blockchain smart contract in the content object and one or more policies of the blockchain smart contract”).
Regarding claim 7, Simu-Young discloses the system of claim 1, wherein the one or more processors further configured to modify a first data structure distributed over a plurality of data locations to include a first reference to the container (Young [0059] “the system may be configured to generate a new transaction object (e.g., block) for the containerized NFT. The transaction object may include the containerized NFT, a nonce - a randomly generated 32-bit whole number when the transaction object is created, and a hash value wedded to that nonce. Once generated, the containerized NFT for the at least two resources is considered signed and forever tied to its nonce and hash. Then, the system may be configured to deploy the new transaction object for the containerized NFT on the distributed ledger”).
Regarding claim 8, Simu-Young discloses the system of claim 7, wherein the one or more processors further configured to modify a second data structure distributed over one or more of the plurality of data locations to include a second reference to the content object (Young [0026] “The token layer may include a smart contract that points to a series of metadata associated with the resource, and provides information about supply, authenticity, lineage, and provenance of the resource. The metadata layer(s) may include resource descriptors that provides information about the resource itself (e.g., resource information)”, “reward may include a digital asset designed to work as a medium of exchange where ownership records are stored in a ledger existing in a form of computerized database using strong cryptography to secure transaction records, to control the creation of additional currency, and to verify the transfer of ownership”).
Regarding claim(s) 11-14, 16 and 18-19, do(es) not teach or further define over the limitation in claim(s) 1-4, 6 and 1, 3, 4, 6 respectively. Therefore claim(s) 11-14 and 18-19 is/are rejected for the same rationale of rejection as set forth in claim(s) 1-4, 6 and 1, 3, 4, 6 respectively.
Claims 1-4, 6-8, 11-14, 16 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Simu et al. (US 2022/0210061) in view of Young et al. (US 2023/0093520) in view of Rodriguez US 2022/0198034.
Regarding claim 5, Simu-Young discloses the invention substantially, however the prior art does not explicitly disclose the system of claim 4, wherein the NFT comprises a private key and the container comprises an encapsulation layer compatible with the private key.
Rodriguez in the field of the same endeavor discloses techniques for controlling data using containers. In particular, Rodrigues teaches the following:
wherein the NFT comprises a private key and the container comprises an encapsulation layer compatible with the private key (Rodriguez teaches an encrypted container whose encapsulation is open only with a private decryption key and uses an NFT to authorize that access; [0149] “a user or organization creating digital artwork can encrypt and encode the digital artwork into a data container 716 … Users or organizations that store digital assets in a data container 716 can use the constraining parameters of the data container 716 to provide the digital asset for sale, and allow only authorized purchasers to access the digital asset using an NFT”).
Therefore, it would have been obvious for a person of ordinary skill in the art at the time the invention was effectively filed to modify the prior art with the teaching of Rodriguez. One would have been motivated because Rodriguez encrypts the container itself and opens that encapsulation only with a private key after NFT authorization. Applying Rodriquez’s encrypted container layer to Young’s NFT container, open with Simu’s NFT bound private key is a predictable se of known encryption to protect the same tokenized content.
Regarding claim(s) 15, do(es) not teach or further define over the limitation in claim(s) 5 respectively. Therefore claim(s) 15 is/are rejected for the same rationale of rejection as set forth in claim(s) 5 respectively.
Claims 1-4, 6-8, 11-14, 16 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Simu et al. (US 2022/0210061) in view of Young et al. (US 2023/0093520) in view of Long et al. US 11,075,891
Regarding claim 9, Simu-Young discloses the invention substantially, however the prior art does not explicitly disclose the system of claim 1, wherein the control token comprises a fungible token.
Long in the field of the same endeavor discloses techniques for implementing decentralized digital rights management (DRM) within a decentralized network, satisfying an important need of content owners. In particular, Long teaches the following:
wherein the control token comprises a fungible token (Long’s reward is a cryptocurrency system medium of exchange. It is locked and released by the same smart contract that authenticates the destination and authorizes delivery of the content stream. That fungible token is therefore a control token compatible with the control structure; col. 2/lines 65 – col. 3/lines 15; detx 10; “locking, via the smart contract, a reward from the authenticated viewer peer node; and releasing, via the smart contract and to the source cacher node and the authenticated edge cacher node, respective portions of the reward over a predetermined time interval. A reward may include a digital asset designed to work as a medium of exchange where ownership records are stored in a ledger existing in a form of computerized database using strong cryptography to secure transaction records, to control the creation of additional currency, and to verify the transfer of ownership”).
Therefore, it would have been obvious to a person of ordinary skill in the art at the time the invention was effectively filed to combine the prior art with the teaching of Long. One would have been motivated because using a fungible token as Simu’s control token to support replicable access rights (subscriptions, prepaid viewing, split containers shares) while keeping Simu’s generate and check structure and Young’s container is a predictable substitution of a known token type.
Regarding claim 10, Simu-Young-Long discloses the system of claim 9, wherein the fungible token authorizes the destination to receive the output by the content object for a predetermined time period (Long teaches a fungible digital asset reward locked in the same smart contract control path that authorizes delivery of the content stream and released over a predetermined time interval while the destination receives that stream; col. 2/lines 65 – col. 3/lines 15; detx 10; “locking, via the smart contract, a reward from the authenticated viewer peer node; and releasing, via the smart contract and to the source cacher node and the authenticated edge cacher node, respective portions of the reward over a predetermined time interval. A reward may include a digital asset designed to work as a medium of exchange where ownership records are stored in a ledger existing in a form of computerized database using strong cryptography to secure transaction records, to control the creation of additional currency, and to verify the transfer of ownership”).
Regarding claim(s) 17 and 20 do(es) not teach or further define over the limitation in claim(s) 9 respectively. Therefore claim(s) 17 and 20 is/are rejected for the same rationale of rejection as set forth in claim(s) 9 respectively.
Conclusion
For the reason above, claims 1-20 have been rejected and remain pending.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIMMY H TRAN whose telephone number is (571)270-5638. The examiner can normally be reached Monday-Friday 9am-5pm PST.
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JIMMY H TRAN
Primary Examiner
Art Unit 2451
/JIMMY H TRAN/Primary Examiner, Art Unit 2451
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