DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Acknowledgment is made of Applicant's claim for priority to the following application(s):
* 18598265 filed on 07 March 2024
* 16129414 filed on 12 September 2018
* 62557355 filed on 12 September 2017
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on the following date(s) is/are entered and considered by Examiner:
* 07 August 2025
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.
Claim(s) 1-20 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-19 of U.S. Patent No. 11961106 and claim(s) 1-20 of U.S. Patent No. 12367510. Although the claims at issue are not identical, they are not patentably distinct from each other because examined application claims 1-20 are anticipated by reference patent claims 1-19 of U.S. Patent No. 11961106 and patent claim(s) 1-20 of U.S. Patent No. 12367510.
All limitations of application claims 1-20 may be found in patent claims 1-19 of U.S. Patent No. 11961106 and patent claim(s) 1-20 U.S. Patent No. 12367510. Therefore, reference patent claims 1-19 of U.S. Patent No. 11961106 and patent claim(s) 1-20 of U.S. Patent No. 12367510 are in essence a “species” of the generic invention of examined application claims 1-20. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. In re Goodman, 29 USPQ2d 1020 (Fed. Circ. 1993).
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(s) 1-6, 8-9, 11-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
Claim 1 recites:
A method comprising:
receiving, by an authentication and digital assets server, user data corresponding to a user;
receiving, by the authentication and digital assets server and from an end-user computing device associated with the user, input from an electronic tag of a physical asset and supplemental digital data associated with the input;
authenticating, by the authentication and digital assets server based on the supplemental digital data associated with the input, the physical asset;
transmitting, by the authentication and digital assets server and to the end-user computing device, an authentication result;
selecting, by the authentication and digital assets server based on the supplemental digital data associated with the input and user data and based on the authentication result indicating a successful authentication of the physical asset, a plurality of digital assets; and
transmitting, by the authentication and digital assets server and to the end-user computing device, the plurality of digital assets.
Step 1:
The claim as a whole falls within at least one statutory category, i.e. a process, machine, manufacture, or composition of matter.
Step 2A Prong One:
The highlighted portion, as drafted, is a process that, under its broadest reasonable interpretation, falls under “Certain methods of organizing human activity” because the steps of authenticating data and selecting data based on an decision-making process are traditionally performed by a human being when managing an asset , i.e. fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). MPEP 2106.04(a)(2)(II)
The highlighted portion, as drafted, is a process that, under its broadest reasonable interpretation, falls under “Mental processes”.
But for a generic computer recited with a high level of generality in a post hoc manner to implement the abstract idea, the authenticating and selecting steps may be performed in the human mind either mentally or with pen and paper.
Accordingly, these limitations have been found to be directed towards concepts performed in the human mind (including an observation, evaluation, judgment, opinion). MPEP 2106.04(a)(2)(III)
The different categories of abstract ideas are being considered together as one single abstract idea. MPEP 2106.04(II)(B)
Dependent claim(s) recite(s) additional subject matter which further narrows or defines the abstract idea embodied in the claims (such as claim(s) 2-11 reciting limitations further defining the abstract idea, which may be performed in the mind but for recitation of generic computer components, and/or may be a method of managing relationship or interactions between people).
Step 2A Prong Two:
This judicial exception is not integrated into a practical application. In particular, the claim recites the following additional element(s), if any:
receiving, by an authentication and digital assets server, user data corresponding to a user;
receiving, by the authentication and digital assets server and from an end-user computing device associated with the user, input from an electronic tag of a physical asset and supplemental digital data associated with the input;
transmitting, by the authentication and digital assets server and to the end-user computing device, an authentication result; and
transmitting, by the authentication and digital assets server and to the end-user computing device, the plurality of digital assets.
The additional element(s) do(es) not integrate the abstract idea into a practical application, other than the abstract idea per se.
Regarding the server, the Specification as originally filed on 12 September 2017 in parent application 62557355 (hereafter referred to as “the Provisional Specification”) discloses that a server is merely an example device for descriptive purposes and the disclosure is not limited to any computing device (page 4 paragraph 28), i.e. a generic/general purpose computer invoked in a post hoc manner to implement the abstract idea, and amount(s) to mere instructions to apply an exception (invoking computers as a tool to perform the abstract idea). MPEP 2106.05(f))
Regarding the receiving and transmitting steps, these steps merely add(s) insignificant extra-solution activity to the abstract idea. MPEP 2106.05(g))
Dependent claim(s) recite(s) additional subject matter which amount to limitation(s) consistent with the additional element(s) in the independent claims.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation and do not impose a meaningful limit to integrate the abstract idea into a practical application.
Accordingly, the additional elements do not integrate the judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claim recites an abstract idea.
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception, add insignificant extra-solution activity to the abstract idea, and/or generally link the abstract idea to a particular technological environment or field of use.
The additional elements, as discussed above and incorporated herein, amount to no more than mere instructions to apply an exception, add insignificant extra-solution activity to the abstract idea, and/or generally link the abstract idea to a particular technological environment or field of use, as discussed above and incorporated herein.
Mere instructions to apply an exception, insignificant extra-solution activity, and linking to a particular technological environment using a generic computer component cannot provide an inventive concept.
The receiving and transmitting steps amount(s) to element(s) that have been recognized as well-understood, routine, and conventional activity in particular fields (e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i)). MPEP 2106.05(d)(II)(ii))
Dependent claims recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims. MPEP 2106.05(d)(II)(ii))
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
The claim is not patent eligible.
Claim(s) 12-20 recite(s) substantially similar limitations as those of claim(s) 1-6, 8-9, 11 above, and are therefore rejected for substantially similar rationale as applied above, and incorporated herein.
Subject Matter Free of Prior Art
Claim(s) 1-20 distinguish(es) over the prior art for the following reasons.
The following is a statement of reasons for the subject matter free of prior art:
Claim 1: the primary reason for the indication of subject matter free of prior art is the inclusion of the following limitations in the combination as recited in the abstract concept and not found in the closest available prior art of record:
authenticating, by the authentication and digital assets server based on the supplemental digital data associated with the input, the physical asset;
transmitting, by the authentication and digital assets server and to the end-user computing device, an authentication result;
selecting, by the authentication and digital assets server based on the supplemental digital data associated with the input and user data and based on the authentication result indicating a successful authentication of the physical asset, a plurality of digital assets; and
transmitting, by the authentication and digital assets server and to the end-user computing device, the plurality of digital assets.
The closest available prior art of record are as follows:
Shulman (20170032382) discloses scanning a product code and providing incentives (paragraph 0041-0043), but does not fairly disclose or suggest the management of digital assets in the manner claimed.
Harrup (20190311472) discloses an image recognition algorithm (Figure 5, paragraph 0077-0078), but does not fairly disclose or suggest the management of digital assets in the manner claimed.
Bryant (20130211893) discloses a digital coupon that may be used against a purchase (paragraph 0039), but does not fairly disclose or suggest the management of digital assets in the manner claimed.
Based on the evidence presented above, none of the closest available prior art of record fairly discloses or suggests the claimed invention. For this reason, claim 1 would be found to be subject matter free of prior art.
Claim(s) 2-11: this/these claim(s) would also be found to be subject matter free of prior art for at least the same rationale as applied to parent claim 1 above, and incorporated herein.
Claim(s) 12-20: this/these claim(s) would also be found to be subject matter free of prior art for substantially similar rationale as applied to claim(s) 1-11 above, and incorporated herein.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Walz (20200372535) discloses biometric-enabled loyalty program (Abstract) in a manner similar to those disclosed in the instant pending Specification as originally filed.
Ramchandani (20130275217) discloses an object carried by a user being used as a token for various business functions, including sales and discounts (Abstract) in a manner similar to those disclosed in the instant pending Specification as originally filed.
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/T.N.N./Examiner, Art Unit 3626
/KAMBIZ ABDI/Supervisory Patent Examiner, Art Unit 3685