DETAILED ACTION
This office action is in response to the application filed on 06/17/2025. Claim(s) 1-20 is/are pending and are examined.
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(s) (IDS) submitted on 06/15/2025 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are 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.
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) 1-8 and 13-20 of the instant application is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-19 of parent U.S. Patent No. 12,363,094 in view of U.S. App No. 17/745777, hereinafter McCarthy and in further view of U.S. App No. 15/907514, hereinafter Kurian. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Application
Parent/Co-Application: 12,363,094
A method for maintaining and transferring digital records associated with an artwork, the method comprising:receiving, by a server over a network connection, a request to transfer ownership of the artwork from a selling user, the request including an identification of a universal art record stored on the server, the universal art record being associated with the artwork and being one of a plurality of universal art records stored in a database on the server;transmitting, by the server in response to receiving the request, a request to associate the universal art record with a second user, the request to associate being transmitted to a computing device of the second user over the network connection;receiving, by the server in response to the request to associate the universal art record with the second user, confirmation that the second user wishes to acquire the artwork;transmitting, by the server, transfer confirmation codes to each of the second user and a named user via predetermined channels associated with each of the second user and the named user, the named user being identified as a current owner of the artwork within an ownership field of the universal art record and being a different entity from the selling user;receiving, by the server via the network connection, the transfer confirmation codes from both the named user and the second user;modifying, in response to receiving the transfer confirmation codes, the universal art record to indicate in the ownership field that the second user is now the current owner of the artwork, the modification providing the second user with the ability to access a virtual certificate of authenticity and grant possession access to the universal art record to other users;….
A method for maintaining and transferring digital records associated with an artwork, the method comprising:receiving, by a server over a network connection, a request to transfer ownership of the artwork from a selling user, the request including an identification of a universal art record stored on the server, the universal art record being associated with the artwork and being one of a plurality of universal art records stored in a database on the server, where the selling user has possession access to the universal art record;transmitting, by the server in response to receiving the request, a request to associate the universal art record with a second user, the request to associate being transmitted to a computing device of the second user over the network connection;receiving, by the server in response to the request to associate the universal art record with the second user, confirmation that the second user wishes to acquire the artwork;transmitting, by the server, transfer confirmation codes to each of the second user and a named user via predetermined channels associated with each of the second user and the named user, the named user being identified as a current owner of the artwork within an ownership field of the universal art record and being a different entity from the selling user, the predetermined channels being external to client applications used by each of the second user and the named user and having been previously designated by the second user and the named user as channels to be used exclusively for receipt of transfer confirmation codes;receiving, by the server via the network connection, the transfer confirmation codes from both the named user and the second user; andmodifying, in response to receiving the transfer confirmation codes, the universal art record to indicate in the ownership field that the second user is now the current owner of the artwork, the modification providing the second user with the ability to access a virtual certificate of authenticity and grant possession access to the universal art record to other users, where possession access allows viewing of a greater number of fields of the universal art record relative to users having only public access and further allows a user having possession access to become an authorized selling user.
13. A computer program product, comprising a non-transitory computer-readable medium having computer-readable program code embodied therein to be executed by one or more processors, the program code including instructions to:receive, by a server over a network connection, a request to transfer ownership of the artwork from a selling user, the request including an identification of a universal art record stored on the server, the universal art record being associated with the artwork and being one of a plurality of universal art records stored in a database on the server;transmit, by the server in response to receiving the request, a request to associate the universal art record with a second user, the request to associate being transmitted to a computing device of the second user over the network connection;receive, by the server in response to the request to associate the universal art record with the second user, confirmation that the second user wishes to acquire the artwork;transmit, by the server, transfer confirmation codes to each of the second user and a named user via predetermined channels associated with each of the second user and the named user, the named user being identified as a current owner of the artwork within an ownership field of the universal art record and being a different entity from the selling user;receive, by the server via the network connection, the transfer confirmation codes from both the named user and the second user;modify, in response to receiving the transfer confirmation codes, the universal art record to indicate in the ownership field that the second user is now the current owner of the artwork, the modification providing the second user with the ability to access a virtual certificate of authenticity and grant possession access to the universal art record to other users;
10. A computer program product, comprising a non-transitory computer-readable medium having computer-readable program code embodied therein to be executed by one or more processors, the program code including instructions to:receive, over a network connection, a request to transfer ownership of the artwork from a selling user, the request including an identification of a universal art record stored on the server, the universal art record being associated with the artwork and being one of a plurality of universal art records stored in a database on the server, where the selling user has possession access to the universal art record;transmit, in response to receiving the request, a request to associate the universal art record with a second user, the request to associate being transmitted to a computing device of the second user over the network connection;receive, in response to the request to associate the universal art record with the second user, confirmation that the second user wishes to acquire the artwork;transmit transfer confirmation codes to each of the second user and a named user via predetermined channels associated with each of the second user and the named user, the named Page 4 of 12 user being identified as a current owner of the artwork within an ownership field of the universal art record and being a different entity from the selling user, the predetermined channels being external to client applications used by each of the second user and the named user and having been previously designated by the second user and the named user as channels to be used exclusively for receipt of transfer confirmation codes;receive via the network connection, the transfer confirmation codes from both the named user and the second user; andmodify, in response to receiving the transfer confirmation codes, the universal art record to indicate in the ownership field that the second user is now the current owner of the artwork, the modification providing the second user with the ability to access a virtual certificate of authenticity and grant possession access to the universal art record to other users, where possession access allows viewing of a greater number of fields of the universal art record relative to users having only public access and further allows a user having possession access to become an authorized selling user.
Way does not appear to explicitly teach modifying the confidence level of the record but in related art McCarthy:
Instant Application
App ‘777 (McCarthy)
… receiving, by the server after the modification of the ownership field, a request to modify a confidence level of the universal art record from the computing device of the second user, the confidence level being a field of the universal art record;
McCarthy ¶ 5 teaches, The operations further include monitoring one or more changes to the ownership, the provenance, and the lineage of the digital asset, and updating the record including the confidence score in response to the one or more changes.
…receiving, by the server after the modification of the ownership field, a request to modify a confidence level of the universal art record from the computing device of the second user, the confidence level being a field of the universal art record;
McCarthy ¶ 5 teaches, The operations further include monitoring one or more changes to the ownership, the provenance, and the lineage of the digital asset, and updating the record including the confidence score in response to the one or more changes.
It would have been obvious to one with ordinary skill the art, prior to the applicant's earliest effective filing date, to combine the teachings of Way with McCarthy, to modify the system for resource transfer and verification of Way with the confidence score of McCarthy. The motivation to do so McCarthy ¶ 4, to allow for an indicative of the ownership, the provenance, and the lineage of the digital asset.
Instant Application
App ‘514 (Kurian)
….receive, by the server after the modification of the ownership field, a request to modify a confidence level of the universal art record from the computing device of the second user, the confidence level being a field of the universal art record;transmit, by the server, a request to modify the confidence level to a different user associated with the database on the server;receive, by the server, a change certification of the confidence level from a computing device associated with the different user over the network connection; andmodify the confidence level of the universal art record in response to receiving the change certification.
Kurian ¶ 22 teaches, a request for modification of a distributed ledger may be received. In response to the request, the distributed ledger control computing platform or other system or device may generate and transmit a request for availability data to computing devices associated with a plurality of modification approval users. Kurian ¶ 24 teaches, The distributed ledger control computing platform or other system or device may request authentication/approval data from the computing devices of the modification approval users and may compare received response data to requirements of the identified modification authentication approval device in order to authenticate the user, authorize modification, deny modification, or the like.
….transmitting, by the server, a request to modify the confidence level to a different user associated with the database on the server; receiving, by the server, a change certification of the confidence level from a computing device associated with the different user over the network connection; and modifying the confidence level of the universal art record in response to receiving the change certification.
Kurian ¶ 22 teaches, a request for modification of a distributed ledger may be received. In response to the request, the distributed ledger control computing platform or other system or device may generate and transmit a request for availability data to computing devices associated with a plurality of modification approval users. Kurian ¶ 24 teaches, The distributed ledger control computing platform or other system or device may request authentication/approval data from the computing devices of the modification approval users and may compare received response data to requirements of the identified modification authentication approval device in order to authenticate the user, authorize modification, deny modification, or the like.
It would have been obvious to one with ordinary skill the art, prior to the applicant's earliest effective filing date, to combine the teachings of Way with Kurian, to modify the system for resource transfer and verification of Way with the asset modification method of Kurian. The motivation to do so, ¶ 21, for preventing unauthorized access to the distributed ledger systems and/or modification of the distributed ledger systems is important.
The dependent claims included in the statement of rejection but not specifically addressed in the body of the rejection are rejected similarly over corresponding claims in the parent ‘522 patent and patents ‘021 and ‘319.
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.
Claim(s) 1 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Way (US 2020/0274863 A1), hereinafter Way in view of McCarthy (US 2022/0366021 A1), hereinafter McCarthy in further view of Kurian (US 2019/0268319 A1), hereinafter Kurian.
Regarding Claim 1 Way teaches:
A method for maintaining and transferring digital records associated with an artwork, the method comprising: (Way ¶ 25 teaches, resource transfer and setup and verification may allow for a transfer of resources between parties between their systems and computing devices…The transfer may be performed using resource tracking systems which can track the ownership of resources by various parties. ¶ 54 teaches, The resource tracking system may include artwork.)
receiving, by a server over a network connection, a request to transfer ownership of the artwork from a selling user, the request including an identification of a universal art record stored on the server, the universal art record being associated with the artwork and being one of a plurality of universal art records stored in a database on the server; (Way ¶ 2 teaches, A request for transfer conditions for a transfer of resources between a sending and receiving party. ¶ 71 teaches, the resource owner identifier maybe any suitable identification of the party that owns the resources recorded in the resource pool. ¶ 81 teaches, the connector computing device may maintain a database of transfer records that may be stored locally or remotely, for example, on a storage server system.)
transmitting, by the server in response to receiving the request, a request to associate the universal art record with a second user, the request to associate being transmitted to a computing device of the second user over the network connection; (Way ¶ 29 teaches, A party, which may be a sending party, may initiate a transfer of resources by using a client computing device to send a request for transfer conditions to a connector computing device. The sending party may be any party that wishes to send, or transfer, resources under their control to some other party, for example, a receiving party...The client computing device may send the request for transfer conditions, for example, by sending communications over any suitable wired or wireless connection to the connector computing device)
receiving, by the server in response to the request to associate the universal art record with the second user, confirmation that the second user wishes to acquire the artwork; (Way ¶ 30 teaches, the request for transfer conditions (i.e., request to associate) may include an intended receiving party for the transfer of resources. ¶ 3 teaches, an indication of acceptance (i.e., confirmation) of the set of transfer conditions by the second computing device and a transfer identifier for the set of transfer conditions may be received from the second computing device.)
transmitting, by the server, transfer confirmation codes to each of the second user and a named user via predetermined channels associated with each of the second user and the named user, the named user being identified as a current owner of the artwork within an ownership field of the universal art record and being a different entity from the selling user; (Way ¶ 41 teaches, A set of transfer condition may include multiple authentication codes. The first and second computing devices may generate their own authentication codes to be stored with the same set of transfer conditions. ¶ 44 teaches, the set of transfer conditions may be verified by both the first connector computing device and the second. ¶ 68 teaches, the connector computing device and resource tracking computing device may communicate using any public or private connections)
receiving, by the server via the network connection, the transfer confirmation codes from both the named user and the second user; (Way ¶ 44 teaches, the set of transfer conditions may be verified by both the first connector computing device and the second connector computing device...the first connector computing device may verify using its authentication code, while the second connector computing device may verify using its authentication code.)
modifying, in response to receiving the transfer confirmation codes, the universal art record to indicate in the ownership field that the second user is now the current owner of the artwork, the modification providing the second user with the ability to access a virtual certificate of authenticity and grant possession access to the universal art record to other users; (Way ¶ 51 teaches, The transfer record may, include the transfer identifier that was generated for the set of transfer conditions which were stored as the transfer record. A new transfer identifier may be generated from the transfer record. If the new transfer identifier is not identical to the transfer identifier that was stored with the transfer record this may indicate that either the set of transfer conditions, or the transfer record, were modified in some way. Way ¶ 25, resource transfer setup and verification also allows a record of transfer resources to be identified by a transfer identifier, to verify that a record of transfer of resources original and has not been tampered with. ¶ 71 the resource identifier is any suitable identification of the party that owns the resources record in the resource pool.)
Way does not appear to explicitly teach a confidence level for the record but in related art:
a request to modify a confidence level of the universal art record from the computing device of the second user, the confidence level being a field of the universal art record; (McCarthy ¶ 5 teaches, The operations further include monitoring one or more changes to the ownership, the provenance, and the lineage of the digital asset, and updating the record including the confidence score in response to the one or more changes.)
It would have been obvious to one with ordinary skill the art, prior to the applicant's earliest effective filing date, to combine the teachings of Way with McCarthy, to modify the system for resource transfer and verification of Way with the confidence score of McCarthy. The motivation to do so McCarthy McCarthy ¶ 4, to allow for an indicative of the ownership, the provenance, and the lineage of the digital asset.
Way in view of McCarthy does not appear to explicitly teach another user approving a change to data facilitated by an intermediary but in related art:
receiving, by the server after the modification of the ownership field, (Kurian ¶ 22 teaches, a request for modification of a distributed ledger may be received. In response to the request, the distributed ledger control computing platform or other system or device may generate and transmit a request for availability data to computing devices associated with a plurality of modification approval users.)
transmitting, by the server, a request to modify the confidence level to a different user associated with the database on the server; (Kurian ¶ 24 teaches, The distributed ledger control computing platform or other system or device may request authentication/approval data from the computing devices of the modification approval users and may compare received response data to requirements of the identified modification authentication approval device in order to authenticate the user, authorize modification, deny modification, or the like.)
receiving, by the server, a change certification of the confidence level from a computing device associated with the different user over the network connection; and (Kurian ¶ 24 teaches, The distributed ledger control computing platform or other system or device may request authentication/approval data from the computing devices of the modification approval users (i.e., change certification) and may compare received response data to requirements of the identified modification authentication approval device in order to authenticate the user, authorize modification, deny modification, or the like.)
modifying the confidence level of the universal art record in response to receiving the change certification. (Kurian ¶ 24 teaches, the distributed ledger control computing platform or other system or device may request authentication/approval data from the computing devices of the modification approval users and may compare received response data to requirements of the identified modification authentication approval device in order to authenticate the user, authorize modification, deny modification, or the like.)
It would have been obvious to one with ordinary skill the art, prior to the applicant's earliest effective filing date, to combine the teachings of Way in view of McCarthy with Kurian, to modify the system for resource transfer and verification of Way with the confidence score of McCarthy with the asset modification method of Kurian. The motivation to do so, ¶ 21, for preventing unauthorized access to the distributed ledger systems and/or modification of the distributed ledger systems is important.
Regarding Claim(s) 7 and 19 Way-McCarthy-Kurian teaches:
The method of claim 1, (Way-McCarthy-Kurian teaches the parent claim above.) the universal art record further including a historical ownership record that logs events involving the universal art record, the historical ownership record including log events for the modification of the ownership field and the modification of the confidence level. (McCarthy ¶ 5 teaches, The record includes the confidence score and is indicative of the ownership, the provenance, and the lineage of the digital asset. The operations further include monitoring one or more changes to the ownership, the provenance, and the lineage of the digital asset, and updating the record including the confidence score in response to the one or more changes.)
Claim(s) 2 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Way-McCarthy-Kurian as applied to claim 1 and 13 above, and further in view of Zhu (US 2022/0224517 A1), hereinafter Zhu.
Regarding Claim(s) 2 Way-McCarthy-Kurian teaches:
The method of claim 1, (Way-McCarthy-Kurian teaches the parent claim above.)
Way-McCarthy-Kurian does not appear to explicitly teach a high-level user but in related art:
the different user being a higher-level authenticator, the change certification being an upgrade certification, and the modifying the confidence level comprising increasing the confidence level of the universal art record. (Zhu ¶ 60 teaches, For a HSC administrator to verify (i.e., higher-level authentication) the identity or increase the identity level of a client, (i.e., upgrade request to increase level) the client will have to provide sufficient evidence for their identity verification.)
It would have been obvious to one with ordinary skill the art, prior to the applicant's earliest effective filing date, to combine the teachings of Way-McCarthy-Kurian with Zhu, to modify the system for resource transfer and verification of Way with the confidence score of McCarthy with the asset modification method of Kurian with the administrator approval for increasing trust of Zhu. The motivation to do so constitutes applying a known technique having a higher authority for approval of certain actions to known devices and/or methods for resource transfer and verification ready for improvement to yield predictable results ensuring actions are being done by the proper user.
Claim(s) 6 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Way-McCarthy-Kurian as applied to claim 1 and 13 above, and further in view of Busch (US 2023/0186262 A1), hereinafter Busch.
Regarding Claim(s) 6 and 18 Way-McCarthy-Kurian teaches:
The method of claim 1, (Way-McCarthy-Kurian teaches the parent claim above.)
Way-McCarthy-Kurian does not appear to explicitly teach an icon for to modify the record but in related art:
the request to modify a confidence level of the universal art record being triggered by selection of an icon of a user interface presented to the second user when accessing the universal art record after the modification of the ownership field. (Busch ¶ 297 teaches, A menu bar may include the button to toggle between a live render and a thumbnail image stored on IPFS (“Live Render” or “IPFS”), a button to “Start Museum Mode” to show random editions of the project in detail view or alternatively “Stop Museum Mode”, an “Up to Grid” button to return to the project overview grid, a “Prior Edition” button, a “Next Edition” button, a “Project Settings” menu button for those authorized to administer the generative art project, an “Admin Settings” menu button for those authorized to modify aspects of the platform (i.e., modify art record))
It would have been obvious to one with ordinary skill the art, prior to the applicant's earliest effective filing date, to combine the teachings of Way-McCarthy-Kurian with Busch, to modify the system for resource transfer and verification of Way with the confidence score of McCarthy with the asset modification method of Kurian with the interactive elements of Busch. The motivation to do so, Busch ¶ 297, for those authorized to modify aspects of the platform.
Claim(s) 8 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Way-McCarthy-Kurian as applied to claim 1 and 13 above, and further in view of Arora (US 2019/0173872 A1), hereinafter Arora.
Regarding Claim(s) 8 Way-McCarthy-Kurian teaches:
The method of claim 1, (Way-McCarthy-Kurian teaches the parent claim above.)
Way-McCarthy-Kurian does not appear to explicitly teach but in related art:
the virtual certificate of authenticity including a visual indicator linked to the confidence level of the universal art record, the visual indicator being automatically changed to reflect the modified confidence level in response to receiving the change certification. (Arora ¶ 33 teaches, certificates (e.g., having different labels or other data that may be used by computing devices in the distinguishing thereof), where the type that is generated may be based on the confidence level. For instance, the processing server may generate “bronze,” “silver,” and “gold” level digital certificates, which may indicate increasing trustworthiness for the electronic wallet, respectively. ¶ 23 teaches, the processing server is configured to generate a digital certificate for the sender and recipient (e.g., or electronic wallets associated therewith) based on past transaction history using the blockchain that may indicate the respective user's/wallet's trustworthiness. The sender and recipient thus exchange digital certificates, which may be evaluated by each entity to determine if they want to go through with the transaction. (i.e., if the trustworthiness changes the generated certificate will be different.))
It would have been obvious to one with ordinary skill the art, prior to the applicant's earliest effective filing date, to combine the teachings of Way-McCarthy-Kurian with Arora, to modify the system for resource transfer and verification of Way with the confidence score of McCarthy with the asset modification method of Kurian with the certificate with an indication of its trust level of Arora. The motivation to do so, Arora ¶ 33, to indicate increasing trustworthiness for the electronic wallet.
Allowable Subject Matter
Claim(s) 9-12 allowed.
Claim(s) 3-5 and 15-17 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Osterer (US 2005/0216360 Al) – title relates to the registration and tracking the transfer of valuable items such as artwork.
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/LINGLAN EDWARDS/Supervisory Patent Examiner, Art Unit 2408
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