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 8/20/2025 was filed after the mailing date of the application on 5/7/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of non statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12309269. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations in each claim set relate to the same concept.
18073900
19201667
A system to protect non-fungible tokens (NFTs) using a protection architecture, the system comprises:
a data processing system comprising memory and one or more processors to:
track, utilizing an overlay ledger, an association of NFT ownership of a plurality of NFTs with a plurality of NFT accounts, wherein each NFT of the plurality of NFTs is recorded and tracked with a particular NFT account of the plurality of NFT accounts;
store and protect, utilizing a blockchain storage, the plurality of NFTs at one of a plurality of internal addresses associated with a plurality of internal public-private key pairs, wherein the plurality of internal public-private key pairs of the plurality of NFTs are not associated with one of the plurality of NFT accounts, and wherein a quantity of internal addresses of NFTs stored in the blockchain storage is different from a quantity of identifiers of NFTs stored in the overlay ledger;
receive, from a first client system of a first customer, an exchange request identifying a first NFT to exchange to a second customer, wherein the first NFT comprises a first link with a first metadata object and is encapsulated within a first control structure that restricts a first output of the first metadata object
determine the first customer has a first NFT account on the overlay ledger and the second customer has a second NFT account on the overlay ledger, wherein the first NFT is stored on the blockchain storage at a first internal address associated with a first internal public-private key pair and execute an on-us exchange based on updating the overlay ledger recording ownership of the first NFT with the second NFT account.
A system, comprising:
a data processing system comprising memory and one or more processors configured to: store, utilizing a blockchain storage, a plurality of tokens at one of a plurality of internal addresses, wherein a quantity of plurality of internal addresses of tokens stored in the blockchain storage is different from a quantity of identifiers of tokens stored in an overlay ledger;
receive, from a first client system of a first customer, an exchange request identifying a first token to exchange to a second customer, wherein the first token comprises a first link with a first metadata object and is encapsulated within a first control structure that restricts a first output of the first metadata object;
determine the first customer has a first token account on the overlay ledger and the second customer has a second token account on the overlay ledger, wherein the first token is stored on the blockchain storage at a first internal address associated with a first internal public-private key pair; and
execute an on-us exchange based on updating the overlay ledger recording ownership of the first token with the second token account;
generate a second wallet public-private key pair for the first token, wherein a second wallet public key of the second wallet public-private key pair identifies a second wallet address associated with a second client system; and
update a container of the first control structure based on updating wallet keys of the container from a first wallet public-private key pair to the second wallet public-private key pair.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-9 and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Franco (US Patent Pub. 20240152905) in view of Nuhoglu (US Patent Pub. 20230094247).
As per claims 1, 11 and 20: A system, comprising:
a data processing system comprising memory and one or more processors configured to: store, utilizing a blockchain storage, a plurality of tokens at one of a plurality of internal addresses, wherein a quantity of plurality of internal addresses of tokens stored in the blockchain storage is different from a quantity of identifiers of tokens stored in an overlay ledger (Paragraph 69; NFTs are recorded on a blockchain when a blockchain 304 concatenates records containing cryptographic hashes—sets of characters that identify a set of data—onto previous records, creating a chain of identifiable data blocks such as block 304a, block 304b, block 304c, and block 304d);
receive, from a first client system of a first customer, an exchange request identifying a first token to exchange to a second customer, wherein the first token comprises a first link with a first metadata object and is encapsulated within a first control structure that restricts a first output of the first metadata object (Paragraph 26; the NFT can include a reference (e.g., URI, link) to the digital image and the hash value as part of the metadata of the NFT. The NFT can be assigned to the cryptography-based storage application associated with the user and/or user device. In some examples, the NFT can include the hash value as a hash identification code);
determine the first customer has a first token account on the overlay ledger and the second customer has a second token account on the overlay ledger, wherein the first token is stored on the blockchain storage at a first internal address associated with a first internal public-private key pair (Paragraph 87; the asset key 474 is a private key in a public/private key pair, a portion thereof, or an item from which the private key can be derived. Accordingly, the asset key 474 proves ownership of a particular digital asset stored on a blockchain system 300); and
execute an on-us exchange based on updating the overlay ledger recording ownership of the first token with the second token account (Paragraph 87; the asset key 474 proves ownership of a particular digital asset stored on a blockchain system 300. The asset key 474 can allow a user to perform blockchain transactions involving the digital asset);
generate a second wallet public-private key pair for the first token, wherein a second wallet public key of the second wallet public-private key pair identifies a second wallet address associated with a second client system (Paragraph 32; generate a second blockchain operation request (e.g., using generation subsystem 104) for inserting the encrypted URI into metadata of the first NFT. In this way, the system can prevent any user device except the user device that generated the original digital image to access the analog values and validate the NFT); and
update a container of the first control structure based on updating wallet keys of the container from a first wallet public-private key pair to the second wallet public-private key pair (Paragraph 61; updates the consumed output database to indicate that the referenced outputs have been spent).
However Franco does not specifically disclose wallet public-private key pair (See Nuhoglu; Paragraph 22; A wallet is a public and private key pair. All holdings (HODL) one owns exist somewhere on the blockchain associated with its public key. The private key pair generates a proof to the network that those assets belong to that wallet. Transferring funds is essentially changing the public key associated with those coins or tokens).
Therefore, it 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, having the teachings of Franco and Nuhoglu in it’s entirety, to modify the technique of Franco for digital management of cryptographic assets by adopting Nuhoglu's teaching for tokenization of digital assets. The motivation would have been to improve protection tokenized structures using a protection architecture.
As per claims 2 and 12: The combination of Franco and Nuhoglu discloses the system of claim 1, wherein a second internal public key of a second internal public-private key pair identifies a second internal address of the plurality of internal addresses on the blockchain storage (Paragraph 32; generate a second blockchain operation request (e.g., using generation subsystem 104) for inserting the encrypted URI into metadata of the first NFT. In this way, the system can prevent any user device except the user device that generated the original digital image to access the analog values and validate the NFT); and
the one or more processors is configured to update the container of the first control structure based on updating internal keys of the container from the first internal public-private key pair to the second internal public-private key pair (Paragraph 61; updates the consumed output database to indicate that the referenced outputs have been spent).
As per claims 3 and 13: The combination of Franco and Nuhoglu discloses the system of claim 1, wherein the container stores at least the wallet keys comprising the first wallet public-private key pair of the first token associated with the first client system (Paragraph 32).
As per claims 4 and 14: The combination of Franco and Nuhoglu discloses the system of claim 1, wherein executing the on-us exchange is performed without updating the first internal address of the first token on the blockchain storage (Paragraph 87; the asset key 474 proves ownership of a particular digital asset stored on a blockchain system 300. The asset key 474 can allow a user to perform blockchain transactions involving the digital asset).
As per claims 5 and 15: The combination of Franco and Nuhoglu discloses the system of claim 1, wherein the overlay ledger is shared between the data processing system and a remote data processing system, and wherein the on-us exchange is performed between the first token account at the data processing system and the second token account at the remote data processing system (Paragraph 23; the analog values can be stored on a cryptography-based storage application such as a digital wallet, associated with user device 110 or stored at a remote server at a location identified by a resource identifier (e.g., a uniform resource identifier (URI)). In some embodiments, the resource identifier can be a URI. The resource identifier can include a link or another pointer, for example, to a location of a remote computing device, and/or the like).
As per claims 6 and 16: The combination of Franco and Nuhoglu discloses the system of claim 1, the one or more processors is configured to: generate a second metadata object comprising metadata of the first metadata object and additional metadata, wherein the exchange request comprises the additional metadata (Paragraph 32; generate a second blockchain operation request (e.g., using generation subsystem 104) for inserting the encrypted URI into metadata of the first NFT. In this way, the system can prevent any user device except the user device that generated the original digital image to access the analog values and validate the NFT); generate, based on the metadata of the first metadata object and the additional metadata, a second token comprising a second link with the second metadata object, wherein the second token is encapsulated within a second control structure that restricts a second output of the second metadata object (Paragraph 32); transmit the first token to an un-spendable address; and broadcast the second token to the blockchain storage at a second internal address (Paragraph 87; send and receive monetary value, trade value on decentralized exchanges, invest and buy assets, sell assets, and/or the like. The cryptographic wallet 460 can be identified as a party to a blockchain transaction on the blockchain system 300 using a unique cryptographically generated address (e.g., the public key in the public/private key pair)).
As per claims 7 and 17: The combination of Franco and Nuhoglu discloses the system of claim 1, the one or more processors is configured to: generate, based on the first metadata object, a second token comprising a second link with the first metadata object, wherein the second token is encapsulated within a second control structure that restricts a second output of the first metadata object (Paragraph 32; generate a second blockchain operation request (e.g., using generation subsystem 104) for inserting the encrypted URI into metadata of the first NFT. In this way, the system can prevent any user device except the user device that generated the original digital image to access the analog values and validate the NFT); transmit the first token to an un-spendable address (Paragraph 32); and broadcast the second token to the blockchain storage at a second internal address (Paragraph 87; send and receive monetary value, trade value on decentralized exchanges, invest and buy assets, sell assets, and/or the like. The cryptographic wallet 460 can be identified as a party to a blockchain transaction on the blockchain system 300 using a unique cryptographically generated address (e.g., the public key in the public/private key pair)).
As per claims 8 and 18: The combination of Franco and Nuhoglu discloses the system of claim 1, wherein a second internal public key of a second internal public-private key pair identifies a second internal address of the plurality of internal addresses on the blockchain storage, and the one or more processors is configured to:
request, using the first control structure via an exchange interface, a cold storage object from a cold storage ledger based on a cold storage object pointer stored in a container of the first control structure (Paragraph 30; In response to receiving the validation request, the user device 110 can retrieve the one or more analog values using the cryptography-based storage application. For example, the user device can obtain metadata of the NFT); and
extract a first internal private key of the first internal public-private key pair from the cold storage object (Paragraph 90; The ML system 500 includes a feature extraction module 508 implemented using components of the example computer system 600 illustrated and described in more detail with reference to FIG. 4A. In some embodiments, the feature extraction module 508 extracts a feature vector 512 from input data 504).
As per claims 9 and 19: The combination of Franco and Nuhoglu discloses the system of claim 8, wherein the one or more processors is configured to sign and transmit, using the first internal private key via the exchange interface, the first token to the second internal address on the blockchain storage, wherein a first internal public key of the first internal public- private key pair is used verify the exchange of first token from the first token account to the second token account (Paragraph 55; The transaction 324a (e.g., a new transaction), which includes the public key of the new owner (e.g., a second user to whom a digital asset is assigned ownership in the transaction), is digitally signed by the first user with the first user's private key to transfer ownership to the second user (e.g., new owner), as represented by the second user public key).
Relevant Prior Art References
The following prior art is cited as being of interest to the claimed invention but has not been applied in any of the current rejections.
Chen et al. - US Patent Publication 2021/0176052 A1: The prior art teaches techniques for control access to a record in a blockchain ledger
Davis et al. - US Patent Pub. 2017/0207917 A1: The prior art teaches distribution of multiple cryptographic keys used to access data
Sundaresan et al. – US Patent Pub. 2019/0036692 A1: The prior art teaches techniques for blockchain-based secure credential management
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY D BROWN whose telephone number is (571)270-1472. The examiner can normally be reached 730-330pm.
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/ANTHONY D BROWN/ Primary Examiner, Art Unit 2408
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