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 .
Continuation Application
This Application is a continuation of US Application No. 17/744,289 filed on 05/13/2022 now patent US 12,361,368 B2 (“Parent Application”). See MPEP § 201.07. In accordance with MPEP § 609.02 (II)(A)(2) and MPEP § 2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also, in accordance with MPEP § 2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) is/are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicant(s) desires the information to be printed on a patent issuing from this application. See MPEP § 609.02 (II)(A)(2).
Acknowledgements
This Office Action is in response to the claims filed on 06/18/2025.
Claims 1-8 were newly introduced.
Claims 1-8 are pending.
Claims 1-8 were examined.
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, 3-5, 7 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-7, 11 and 12 of U.S. Patent No. US 12,361,368 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because independent claims 1 and 5 of the current Application offer a broader embodiment of patented claims 1 and 7. Examiner considers the “wherein” clauses not recited by the patented claims are encompassed by the language of the final step “maintaining immutability of the executed DNI by use of the blockchain ledger recording every processing step done on the executed DNI”. Dependent claims 3, 4, 7 and 8 are identical to patented dependent claims 5, 6, 11 and 12, as follows:
Patented Claims US 12,361,368 B2
Current Application
19/241,419
1. A computer-implemented method of securely processing electronic transferable records, such as a digital negotiable instrument (DNI), such electronic transferable records associated with exchanging at least one of goods and commodities, the method comprising the computer-implemented steps of:
generating an encrypted corporate certificate and associated keys in response to system administrator input, storing the corporate certificate in computer-accessible storage, and requiring renewal of the certificate at least every two years from date of generation of the certificate;
verifying persons permitted to invoke the processing of the electronic transferable records by comparing inputted personal information to a security standard, wherein the verifying also includes two-factor authentication;
establishing verified persons, the verified persons selected from the group consisting of a holder, a charter party, a shipper, a carrier, and an endorser;
securing electronic signatures of respective ones of the verified persons;
generating a respective one of the digital negotiable instruments for a respective goods and commodities transaction in response to inputs from at least one of the shipper and the carrier, the inputs corresponding to the steps of:
(a) generating a DNI draft identified with a corresponding one of the electronic transferable records, establishing a holder of the DNI draft, the holder being one of the verified users, requesting performance of obligations of the DNI draft, wherein generating the DNI draft includes identifying the verified persons authorized to control the corresponding electronic transferable record, and preventing unauthorized replication of the DNI draft; and
(b) generating an executed DNI from the DNI draft, wherein the executed DNI has an associated encryption and signature key architecture, the executed DNI being generated by encrypting the DNI draft, restricting access to the encrypted DNI by generation of user keys associated with the DNI draft, and verifying signatures of the verified users associated with the DNI draft and the executed DNI, wherein the inputs are stored on a blockchain ledger;
storing the executed DNI in a customer exclusive object storage vault associated with a vault encryption key on a cloud infrastructure;
endorsing the executed DNI in response to user input, wherein the endorsing step includes:
(a) receiving as user input digital information corresponding to an endorser; and
(b) updating the executed DNI to append an electronic endorsement notation thereto upon execution by the endorser;
at least one of releasing, transferring, and surrendering of the executed DNI to create a new holder of the executed DNI and a previous holder of the executed DNI;
wherein the step of performing at least one of releasing, transferring, and surrendering the endorsed DNI includes decrypting the executed DNI and assigning the executed DNI to the new holder in response to user input from the previous holder, and transferring the executed DNI to a second customer object storage vault corresponding to the new holder and generating a new holder private key associated with the new holder, wherein access to the executed DNI by the previous holder is terminated;
restricting access by users other than the verified users by preventing verification of the executed DNI by any of the verified users other than the holder;
verifying authenticity of the executed DNI by performing notary steps, the notary steps comprising timestamping of the executed DNI, and authenticating content and signature of the executed DNI by QR code;
reissuing the executed DNI by performing the steps of cancellation of the electronic transferable record corresponding to the executed DNI to create a cancelled DNI, generating a second DNI draft identical to the cancelled DNI; and
transferring the DNI draft to a second new holder upon generating a second executed DNI;
maintaining immutability of the executed DNI by use of the blockchain ledger recording every processing step done on the executed DNI;
authorizing at least two contracting parties comprising a party A and a party B to access the blockchain ledger through a computer-implemented gateway;
storing first data values corresponding to contract status states on the blockchain ledger, the first data values corresponding to contract statuses, the contract statuses including an executed state, an in-process state, and a terminated state;
processing inputs from the two contracting parties to generate second data values corresponding to contract events, the data values comprising metadata stored on the blockchain ledger, the contract status and the contract events corresponding to a predetermined signed contract associated with a goods and commodities transaction;
storing the second data values of the contract events as metadata on the blockchain ledger;
permitting user access to the metadata of the contract events only upon validation of user-inputted credentials to create validated users, the validated users including at least the party A and the party B; and
updating the second data values in response to input from at least one of the validated users to assign an event status indicator to a corresponding one of the contract events, the event status indicators including third data values corresponding to a non-executed event, an executed event, a validated event, and a non-validated event.
1.A computer-implemented method of securely processing electronic transferable records, such as a digital negotiable instrument (DNI), such electronic transferable records associated with exchanging at least one of goods and commodities, the method comprising the computer- implemented steps of:
generating an encrypted corporate certificate and associated keys in response to system administrator input, storing the corporate certificate in computer-accessible storage, and requiring renewal of the certificate at least every two years from date of generation of the certificate;
verifying persons permitted to invoke the processing of the electronic transferable records by comparing inputted personal information to a security standard, wherein the verifying also includes two-factor authentication;
establishing verified persons, the verified persons selected from the group consisting of a holder, a charter party, a shipper, a carrier, and an endorser, wherein information corresponding to the verified persons is recorded and stored on a blockchain ledger;
securing electronic signatures of respective ones of the verified persons;
generating a respective one of the digital negotiable instruments for a respective goods and commodities transaction in response to inputs from at least one of the shipper and the carrier, the inputs corresponding to the steps of:
(a) generating a DNI draft identified with a corresponding one of the electronic transferable records, establishing a holder of the DNI draft, the holder being one of the verified users, requesting performance of obligations of the DNI draft, wherein generating the DNI draft includes identifying the verified persons authorized to control the corresponding electronic transferable record, and preventing unauthorized replication of the DNI draft;
(b) generating an executed DNI from the DNI draft, wherein the executed DNI has an associated encryption and signature key architecture, the executed DNI being generated by encrypting the DNI draft, restricting access to the encrypted DNI by generation of user keys associated with the DNI draft, and verifying signatures of the verified users associated with the DNI draft and the executed DNI, wherein the corresponding inputs are stored on the blockchain ledger;
storing the executed DNI in a customer exclusive object storage vault associated with a vault encryption key on a cloud infrastructure;
endorsing the executed DNI in response to user input, wherein the endorsing step includes:
(a) receiving as user input digital information corresponding to an endorser; and
(b) updating the executed DNI to append an electronic endorsement notation thereto upon execution by the endorser, wherein the electronic endorsement is recorded on the blockchain ledger;
at least one of releasing, transferring, and surrendering of the executed DNI to create a new holder of the executed DNI and a previous holder of the executed DNI, wherein the creation of the new holder is recorded as a status change on the blockchain ledger;
wherein the step of performing at least one of releasing, transferring, and surrendering the endorsed DNI includes decrypting the executed DNI and assigning the executed DNI to the new holder in response to user input from the previous holder, and transferring the executed DNI to a second customer object storage vault corresponding to the new holder and generating a new holder private key associated with the new holder, wherein access to the executed DNI by the previous holder is terminated;
restricting access by users other than the verified users by preventing verification of the executed DNI by any of the verified users other than the holder;
verifying authenticity of the executed DNI by performing notary steps, the notary steps comprising timestamping of the executed DNI, and authenticating content and signature of the executed DNI by QR code, wherein the timestamping and authentication is recorded on the blockchain ledger;
reissuing the executed DNI by performing the steps of cancellation of the electronic transferable record corresponding to the executed DNI to create a cancelled DNI, generating a second DNI draft identical to the cancelled DNI; and
transferring the DNI draft to a second new holder upon generating a second executed DNI, wherein the foregoing reissuing steps are recorded on the blockchain ledger; and
maintaining immutability of the executed DNI by use of the blockchain ledger recording every processing step done on the executed DNI.
5. The method of claim 3, further comprising computer-implemented steps of:
(a) positively verifying permission of one of the verified users so as to define a drafting user, the drafting user being permitted to access electronic bill of lading templates stored in a secured database;
(b) permitting access to a selected one of the templates in response to first input by the drafting user;
(c) generating a draft electronic bill of lading for the respective goods and commodities transaction in response to second input; and
(d) sharing the draft electronic bill of lading with one of the verified users other than the drafting user, thereby defining a negotiating user, and receiving third input from the negotiating user corresponding to modifications to the draft electronic bill of lading, the modifications being received and identified as at least one of comments, save as, and print;
(e) wherein the negotiating user comprises a carrier, the system, and in response to receiving fourth inputs from the carrier, updating status of the draft electronic bill of lading to a status of confirmed.
3.The method of claim 2, further comprising computer-implemented steps of:(a) positively verifying permission of one of the verified users so as to define a drafting user, the drafting user being permitted to access electronic bill of lading templates stored in a secured database;
(b) permitting access to a selected one of the templates in response to first input by the drafting user;
(c) generating a draft electronic bill of lading for the respective goods and commodities transaction in response to second input; and
(d) sharing the draft electronic bill of lading with one of the verified users other than the drafting user, thereby defining a negotiating user, and receiving third input from the negotiating user corresponding to modifications to the draft electronic bill of lading, the modifications being received and identified as at least one of comments, save as, and print;
(e) wherein the negotiating user comprises a carrier, the system, and in response to receiving fourth inputs from the carrier, updating status of the draft electronic bill of lading to a status of confirmed.
6. The method of claim 5, wherein the step of generating the draft electronic bill of lading comprises the steps of verifying, in response to user selection, predefined electronic bill of lading draft data by associating the predefined draft data with goods and commodities transaction data separately stored; and wherein the step of sharing the draft electronic bill of lading comprises the step of confirming, in response to user selection, status of the negotiating user as one of the verified users.
4.The method of claim 3, wherein the step of generating the draft electronic bill of lading comprises the steps of verifying, in response to user selection, predefined electronic bill of lading draft data by associating the predefined draft data with goods and commodities transaction data separately stored; and wherein the step of sharing the draft electronic bill of lading comprises the step of confirming, in response to user selection, status of the negotiating user as one of the verified users.
Claims 2 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. US 12,361,368 B2 in view of Mallon et al. (WO 0055774 A2).
With respect to claims 2 and 6, Mallon further discloses a method and system wherein the step of generating a respective one of the digital negotiable instruments for respective goods and commodities transaction comprises generating an electronic bill of lading for the goods and commodities transaction (see page 137, line 11 to page 139, line 3: 3.1. Creation of an Electronic Bill of Lading; page 46, line 4 to page 47, line 9: 4.1.1. Nature of Electronic Bills of Lading). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the Bill of lading generating as disclosed by Mallon in the method and system of the patented claims, the motivation being to certify the goods are complete and in good order (see Mallon, page 1, line 24 to page 2, line 11).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 5 recite the language “ the corresponding inputs” in page 2, line 7 and page 6, line 1. There is insufficient antecedent basis for this language in the claims. For instance, the claims previously recite a “system administrator input”, “inputted personal information”, and “inputs from at least one of the shipper and the carrier”, rendering the language “the corresponding inputs” unclear, as one of ordinary skill would not be able to reasonably determine which inputs the language refers to and/or what these inputs correspond to. Dependent claims 2-4 and 6-8 are also rejected since they depend on claims 1 and 5, respectively.
Claims 1 and 5 recite the language “wherein the foregoing reissuing steps are recorded on the blockchain ledger”. This language is unclear as the claims offer only a single "reissuing" step. Therefore, one of ordinary skill in the art would not be able to readily determine whether the term "the following reissuing steps" refer to multiple reissuing steps or whether it refers to steps comprised by the reissuing steps. This duality renders the scope of the claims unclear. Examiner suggests amending the claims to recite "the foregoing step of reissuing" or, in the alternative, "the foregoing steps of the reissuing step". Dependent claims 2-4 and 6-8 are also rejected since they depend on claims 1 and 5, respectively.
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.
Claims 1, 2, 5 and 6 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Mallon et al. (WO 0055774 A2), hereinafter Mallon, in view of Ma et al. (US 2022/0335421 A1), hereinafter Ma, and in view of NPL 2021 (TradeTrust: accelerating the digitalization of international trade), hereinafter WCOOMD.org.
With respect to claims 1 and 5, Mallon teaches a computer-implemented system of securely processing electronic transferable records, such as a digital negotiable instrument (DNI), such electronic transferable records associated with exchanging at least one of goods and commodities (see page 15, lines 20-24: “User systems are a user's computer facilities, including a communications link to a network connected to the message handling unit, desktop computer hardware connected to that communications link, and software for creating, sending and receiving messages using the message handling unit.); and a computer-implemented method of securely processing electronic transferable records, such as a digital negotiable instrument (DNI), such electronic transferable records associated with exchanging at least one of goods and commodities (Transaction support system) comprising:
generating an encrypted corporate certificate and associated keys in response to system administrator input, storing the corporate certificate in computer-accessible storage, and requiring renewal of the certificate at least every two years from date of generation of the certificate (see certificate, page 33, lines 22-29; Fig. 13, page 42, line 19, 2.4.2. Certificate Life Cycle, page 44, lines 4-8, Operational Rule 12);
verifying persons permitted to invoke the processing of the electronic transferable records by comparing inputted personal information to a security standard, wherein the verifying also includes two-factor authentication (see page 13, lines 7-16: private key safekeeping; page 30, line 22, to page 31, line 2, user identifier and digital signature);
establishing verified persons, the verified persons selected from the group consisting of a holder, a charter party, a shipper, a carrier, and an endorser… (see page 46, line 26 to page 47, line 4, The title registry record lists the user identifiers of users who occupy certain roles in relation to the electronic bill of lading ;page 52, line 28 to page 53 line 2, to order party designation; page 53, line 20 to page 54, line 21: 4.2.6. Bearer Holder; Fig. 14, page 48, lines 16-23: "4.2. Roles in Electronic Bills of Lading, roles and obligations; page 128, line 29 to page 129, line 6: for roles definitions such as Head Charter; Head Charterer, Holder, Shipper, etc.);
securing electronic signatures of respective ones of the verified persons; (see digital signature, page 18, lines 8-16; page 33, lines 1-8: 2.4.2.1. Creating and Verifying Digital Signatures);
generating a respective one of the digital negotiable instruments for a respective goods and commodities transaction in response to inputs from at least one of the shipper and the carrier, the inputs corresponding to the steps of: (a) generating a DNI draft identified with a corresponding one of the electronic transferable records, establishing a holder of the DNI draft, the holder being one of the verified users, requesting performance of obligations of the DNI draft, wherein generating the DNI draft includes identifying the verified persons authorized to control the corresponding electronic transferable record, and preventing unauthorized replication of the DNI draft (see page 137, line 11 to page 139, line 3: 3.1. Creation of an Electronic Bill of Lading; page 46, line 4 to page 47, line 9: "4.1.1. Nature of Electronic Bills of Lading; page 49, lines 7-25: "4.2.1. Originator (Carrier));
(b) generating an executed DNI from the DNI draft, wherein the executed DNI has an associated encryption and signature key architecture, the executed DNI being generated by encrypting the DNI draft, restricting access to the encrypted DNI by generation of user keys associated with the DNI draft, and verifying signatures of the verified users associated with the DNI draft and the executed DNI (see page 17, line 23, to page 18, line 2: message encryption; page 33, lines 17-21: "a user may also digitally sign or encrypt a document sent within the message and forwarded on by the message handling unit."; page 38, lines 4-23: 2.5. Encryption of Messages);
endorsing the executed DNI in response to user input, wherein the endorsing step includes: (a) receiving as user input digital information corresponding to an endorser (see page 52, line 28 to page 53, line 2, to order party designation; page 74, line 21 to page 75, line 14: 4.4.3.4. Blank Endorsing and Designating a Bearer Holder); and
(b) updating the executed DNI to append an electronic endorsement notation thereto upon execution by the endorser… (see page 76, line 7-28: making a Bearer Holder when none exists);
at least one of releasing, transferring, and surrendering of the executed DNI to create a new holder of the executed DNI and a previous holder of the executed DNI (see page 59, lines 224-28: pledged state; page 62, lines 8-13: Amending of an electronic bill of lading; page 90, line 30 to page 91, line 27: 4.4.6. Surrendering an Electronic Bill of Lading; page 139, line 25 to page 140, line 11: "3.4.1. Procedure for Transfer of Possession: By Designation);
wherein the step of performing at least one of releasing, transferring, and surrendering the endorsed DNI includes decrypting the executed DNI and assigning the executed DNI to the new holder in response to user input from the previous holder, and transferring the executed DNI to a second customer object storage vault corresponding to the new holder and generating a new holder private key associated with the new holder, wherein access to the executed DNI by the previous holder is terminated (see page 17, line 23, to page 18, line 2: message encryption; Figures 31 to 37, page 84, line 27 to page 95, line 22: 4.5. Endorsement Chains);
restricting access by users other than the verified users by preventing verification of the executed DNI by any of the verified users other than the holder (see page 17, line 23, to page 18, line 2: "Regarding message encryption, if the sender of a message wishes, the sender may encrypt the message so that, as a practical matter, it will not be readable by users other than the intended recipient", inter alia);
reissuing the executed DNI by performing the steps of cancellation of the electronic transferable record corresponding to the executed DNI to create a cancelled DNI, generating a second DNI draft identical to the cancelled DNI (see page 141, lines 5-20: "3.5. Novation of the Contract of Carriage, i.e. the Designation of a new Holder-to-order or a new ConsignNew Parties to Contract of Carriage);
transferring the DNI draft to a second new holder upon generating a second executed DNI, wherein the foregoing reissuing steps are recorded on the blockchain ledger; and (see page 141, lines 12-29: New Parties to Contract of Carriage, Accession to Rights and Obligation); and
maintaining immutability of the executed DNI by use of the blockchain ledger recording every processing step done on the executed DNI (i.e. wherein information corresponding to the verified persons is recorded and stored on a blockchain ledger, wherein the corresponding inputs are stored on the blockchain ledger, wherein the electronic endorsement is recorded on the blockchain ledger, wherein the creation of the new holder is recorded as a status change on the blockchain ledger, wherein the timestamping and authentication is recorded on the blockchain ledger) (see paragraph [0003]: Distributed ledger systems (DLSs), which can also be referred to as consensus networks; paragraphs [0024] and [0025]: "In some embodiments, the order status data includes at least one of logistics data, supply chain data, customs data, bill of landing data, or payment data"; paragraph [0109], making trustable connections between possibly unaffiliated entities; immutability paragraphs [0111] and [0112]).
Mallon does not explicitly disclose a method and system comprising: storing the executed DNI in a customer exclusive object storage vault associated with a vault encryption key on a cloud infrastructure; verifying authenticity of the executed DNI by performing notary steps, the notary steps comprising timestamping of the executed DNI…; maintaining immutability of the executed DNI by use of the blockchain ledger recording every processing step done on the executed DNI (i.e. wherein information corresponding to the verified persons is recorded and stored on a blockchain ledger, wherein the corresponding inputs are stored on the blockchain ledger, wherein the electronic endorsement is recorded on the blockchain ledger, wherein the creation of the new holder is recorded as a status change on the blockchain ledger, wherein the timestamping and authentication is recorded on the blockchain ledger). authenticating content and signature of the executed DNI by QR code.
However, Ma discloses a method and system (Managing blockchain-based trustable transaction services) comprising:
storing the executed DNI in a customer exclusive object storage vault associated with a vault encryption key on a cloud infrastructure (see paragraph [0115] centralized ledger system, Fig. 1, cloud computing system, paragraph [0117]); verifying authenticity of the executed DNI by performing notary steps, the notary steps comprising timestamping of the executed DNI… (see immutable transactions, paragraph [0112]);
maintaining immutability of the executed DNI by use of the blockchain ledger recording every processing step done on the executed DNI (i.e. wherein information corresponding to the verified persons is recorded and stored on a blockchain ledger, wherein the corresponding inputs are stored on the blockchain ledger, wherein the electronic endorsement is recorded on the blockchain ledger, wherein the creation of the new holder is recorded as a status change on the blockchain ledger, wherein the timestamping and authentication is recorded on the blockchain ledger) (see paragraph [0003]: Distributed ledger systems (DLSs), which can also be referred to as consensus networks; paragraphs [0024] and [0025]: "In some embodiments, the order status data includes at least one of logistics data, supply chain data, customs data, bill of landing data, or payment data"; paragraph [0109], making trustable connections between possibly unaffiliated entities; immutability paragraphs [0111] and [0112]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the blockchain and cloud infrastructure as disclosed by Ma in the method and system of Mallon, the motivation being to develop new digital trustable technologies and systems that can create trust and provide trustable transaction services, e.g., in international trade or cross-border trade for multiple participants including trading parties and financial institutions. (see Ma, paragraph [0006]).
The combination of Mallon and Ma does not explicitly disclose a method and system comprising: authenticating content and signature of the executed DNI by QR code.
However, WCOOMD.org discloses a method and system comprising:
authenticating content and signature of the executed DNI by QR code (see pages 4/5: "A trial was launched in November 2020 by the Australian Border Force and IMDA in order to test the exchange of TradeTrust standard electronic certificates of origin where electronic certificates were generated in accordance with TradeTrust standards via the ABF-developed Intergovernmental Ledger (IGL) system the electronic certificates were sent to Singapore businesses participating in the trial as well as Singapore Customs for their feedback on the multiple verification methods afforded by the TradeTrust framework ranging from QR code scanning to dragging and dropping of the electronic certificates into both the IGL or TradeTrust Web interfaces." See also NPL 2020 "TradeTrust Webinar Episode 1: Overview", QR code, minute 44: 19).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the TradeTrust framework as disclosed by WCOOMD.org in the method and system of Mallon and Ma, the motivation being to the ability to trace the provenance of digitally-issued documents and verify their integrity. This “notarization” foundation is provided by the Open Attestation framework, which offers a method for documents issued to be considered cryptographically trustworthy and can be verified independently. (see WCOOMD.org, page 2/5).
With respect to claims 2 and 6, the combination of Mallon, Ma and WCOOMD.org teaches all the subject matter of the method and system as described above with respect to claims 1 and 5. Furthermore, Mallon disclose a method and system wherein the step of generating a respective one of the digital negotiable instruments for respective goods and commodities transaction comprises generating an electronic bill of lading for the goods and commodities transaction (see page 137, line 11 to page 139, line 3: 3.1. Creation of an Electronic Bill of Lading; page 46, line 4 to page 47, line 9: 4.1.1. Nature of Electronic Bills of Lading). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
Claims 3, 4, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Mallon (WO 0055774 A2), in view of Ma (US 2022/0335421 A1), in view of WCOOMD.org (TradeTrust: accelerating the digitalization of international trade), in view of IMDA Singapore (NPL 2020)
With respect to claims 3 and 7, the combination of Mallon, Ma and WCOOMD.org teaches all the subject matter of the method and system as described above with respect to claims 2 and 6. The combination of Mallon, Ma and WCOOMD.org does not explicitly teach a method and system further comprising computer-implemented steps of: (a) positively verifying permission of one of the verified users so as to define a drafting user, the drafting user being permitted to access electronic bill of lading templates stored in a secured database; (b) permitting access to a selected one of the templates in response to first input by the drafting user; (c) generating a draft electronic bill of lading for the respective goods and commodities transaction in response to second input; and (d) sharing the draft electronic bill of lading with one of the verified users other than the drafting user, thereby defining a negotiating user, and receiving third input from the negotiating user corresponding to modifications to the draft electronic bill of lading, the modifications being received and identified as at least one of comments, save as, and print; (e) wherein the negotiating user comprises a carrier, the system, and in response to receiving fourth inputs from the carrier, updating status of the draft electronic bill of lading to a status of confirmed.
However, IMDA Singapore discloses a method and system ("TradeTrust Webinar Episode 1: Overview") further comprising computer-implemented steps of: (a) positively verifying permission of one of the verified users so as to define a drafting user, the drafting user being permitted to access electronic bill of lading templates stored in a secured database; (b) permitting access to a selected one of the templates in response to first input by the drafting user; (c) generating a draft electronic bill of lading for the respective goods and commodities transaction in response to second input; and(d) sharing the draft electronic bill of lading with one of the verified users other than the drafting user, thereby defining a negotiating user, and receiving third input from the negotiating user corresponding to modifications to the draft electronic bill of lading, the modifications being received and identified as at least one of comments, save as, and print; (e) wherein the negotiating user comprises a carrier, the system, and in response to receiving fourth inputs from the carrier, updating status of the draft electronic bill of lading to a status of confirmed (see Demo for verifiable documents, minute 21, COO creation and document issuer has been identified). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claims 4 and 8, the combination of Mallon, Ma and WCOOMD.org teaches all the subject matter of the method and system as described above with respect to claims 3 and 7. The combination of Mallon, Ma and WCOOMD.org does not explicitly teach a method and system wherein the step of generating the draft electronic bill of lading comprises the steps of verifying, in response to user selection, predefined electronic bill of lading draft data by associating the predefined draft data with goods and commodities transaction data separately stored; and wherein the step of sharing the draft electronic bill of lading comprises the step of confirming, in response to user selection, status of the negotiating user as one of the verified users.
However, IMDA Singapore discloses a method and system ("TradeTrust Webinar Episode 1: Overview") wherein the step of generating the draft electronic bill of lading comprises the steps of verifying, in response to user selection, predefined electronic bill of lading draft data by associating the predefined draft data with goods and commodities transaction data separately stored; and wherein the step of sharing the draft electronic bill of lading comprises the step of confirming, in response to user selection, status of the negotiating user as one of the verified users (see Demo for verifiable documents, minute 21, COO creation and document issuer has been identified; source code of the COO, minute 22:50).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the TradeTrust framework as disclosed by IMDA Singapore in the method and system of Mallon, Ma and WCOOMD.org, the motivation being to facilitate cross border paperless trade and enable system interoperability of trusted digital documents exchange through standards. (see IMDA Singapore, minutes 8:50 and 14:20).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Patent Literature
Papadimitriou (US 2019/0363897 A1) discloses system and method for authenticating security certificates, including storing encrypted data of documents such as bill of lading in the form of a visual image, which allows for visual inspection by an authorized official to determine whether the security certificate noticeably appears to be impermissibly tampered with.
Raghavan et al. (US 10,579,952 B2) disclose tracking shipment container, including technical solutions to improve flexibility of how the electronic data is stored and represented between the entities in the shipping industry.
Fang et al. (US 11,307,775 B2) disclose distributed storage of custom clearance data, including blockchain-based document registrations for custom clearance service.
Ruschin et al. (US 11,347,814 B2) disclose method of distributed management of electronic documents of title (EDT) and system thereof, including managing electronic documents of title (EDTs) in a decentralized system.
Bodorik et al. (US 11,868,998 B2) disclose system and method for tracking of provenance and flows of goods, services, and payments in responsible supply chains, including a blockchain interface configured to store the provenance transaction on the blockchain and to retrieve the provenance transaction from the blockchain; and a search and provenance graph system for generating a directed graph to represent the provenance of an item, service, and/or payment using the provenance transaction stored on the blockchain.
Vintila (US 11,176,550 B2) discloses electronic document platform, including various relationships between fields and/or characteristics stored on the bill of lading, and for example, the bill of lading may be associated with the terms of the letter of credit and may require cross-verification to ensure compliance with contractual provisions. To sign off on a bill of lading, for example, there may be various aspects that may need to be signed off, and such aspects may be related to conditions and/or provisions that are representative of contractual obligations.
Cho et al. (TW 20,222,3828 A) disclose information system for processing delivery order and method and servicing method thereof, including reading a first machine-readable code on the paper goods bill of lading document. The so-called first machine-readable code is a common one-dimensional barcode, a two-dimensional barcode, or any graphic that can be recognized and read by a machine. The first machine readable code can be used to represent a web page related to the paper goods bill of lading document, and the first machine readable code usually contains the goods bill of lading number of the goods bill of lading document.
Wong et al. (WO 2020176475 A1) disclose zero trust communication system for freight shipping organizations, and methods of use, including a blockchain database that includes one or more blockchain nodes storing encrypted shipping documents, encrypted data encryption keys and the document originator’s signature.
Attwood et al. (EP 3,617,969 A1) disclose commodity management system, including a blockchain platform configured to generate electronic documents documenting transaction data, such as one or more of an electronic warehouse receipt, a transfer title, a trade receipt, a certificate of receipt, a delivery receipt, a payment receipt, a warehouse audit certificate, and a paper or electronic bill of lading.
Mateev et al. (US 2019/0130394 A1) disclose protocol-based method for validating integrity electronic records of transactions, involves adding validated electronic record to block of electronic transactions, and adding block of electronic transactions to blockchain, including obtaining first confirmation from a first party to transfer an asset as a part of transaction that the first party agrees with one term of the transaction. Second confirmation is obtained from a second party to receive the asset as the part of the transaction that the second party verifies the first party's respective agreement with the term of the transaction. A validated electronic record of the transaction is created based upon receipt of the first and second confirmations. The validated electronic record is added to a block of electronic transactions. The block of electronic transactions is added to a blockchain.
Non-Patent Literature
K. Narayanam et al. "Blockchain Based e-Invoicing Platform for Global Trade," 2020 IEEE International Conference on Blockchain (Blockchain) (NPL 2020, listed in PTO-892 as reference "U") discloses "Blockchain Based e-Invoicing Platform for Global Trade", including a blockchain-based system that can eliminate inefficiencies in the process of invoice generation for global container shipping.
Marenković et al. "Blockchain Technology Perspectives in Maritime Industry," 2021 44th International Convention on Information (NPL 2021, listed in PTO-892 as reference "V") discloses "Blockchain Technology Perspectives in Maritime Industry", including presenting the potential of BC technology usage for document digitization and business process digitalization, and how it can help to solve some of the challenges that the maritime industry face.
G. Hong "Electronic Bill of Lading's Title Transfer in International E-commerce," 2012 Second International Conference on Business Computing and Global Informatization (NPL 2012, listed in PTO-892 as reference "W") discloses "Electronic Bill of Lading's Title Transfer in International E-commerce", including the Bolero Electronic Bill of Lading’s transfer authentication solution.
https:/ et al. (NPL 2019, listed in PTO-892 as reference "X") disclose "The Relationships of Bill of Lading, Charterparty and Other Transport Documents", including the BIMCO Electronic Bill of Lading Clause.
Chen et al. (NPL 2019, listed in PTO-892 as reference "U", page 2) disclose "Data Access & Sharing Approach for Trade Documentations Based on Blockchain Technology", including a blockchain based-model for data access control and sharing for the trade document, including adding the hash of IPFS files to a blockchain to ensure the data is tamper-resistant, auditability and verifiability.
United Nations "UNCITRAL Model Law on Electronic Transferable Records," retrieved from https://uncitral.un.org/en/library/publications (NPL 2018, listed in PTO-892 as reference "V", page 2) discloses "UNCITRAL Model Law on Electronic Transferable Records", including the UNCITRAL Model Law on Electronic Transferable Records together with an explanatory note.
K. Elmay et al. (NPL 2022, listed in PTO-892 as reference "W", page 2) disclose "Using NFTs and Blockchain for Traceability and Auctioning of Shipping Containers and Cargo in Maritime Industry", including an Ethereum blockchain-based solution using smart contracts for container management in the shipping industry, enabling transparent real-time tracking of the freight in the shipping process.
dcsa.org (NPL 2020, listed in PTO-892 as reference "X", page 2) discloses "Standard for the Bill of Lading - A roadmap towards eDocumentation", including standards for the processes of preparing and issuing a Bill of Lading regardless of the channel used, i.e. physical or digital.
Li et al. (NPL 2022, listed in PTO-892 as reference "U", page 3) disclose "Decentralized Private Freight Declaration & Tracking with Data Validation", including modeling the entire supply chain from buyer to seller.
WCOOMD.org (NPL 2022, listed in PTO-892 as reference "W", page 3) discloses "Trade digitization on a global scale: how far are we?", including the UNCITRAL Model Law on Electronic Transferable Records, notably the G7countries which publicly agreed to a Framework for G7 Collaboration on Electronic Transferable Records in April 2021, which was also endorsed by the Republic of Korea and Australia. As the legal environment becomes more conducive, the adoption of key trade documents in digitized form, such as the electronic Bills of Lading.
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/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698