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 .
This is a Non-Final Office Action Correspondence in response to U.S. Application No. 19/247,698 filed on 06/24/2025.
Claims 1-20 are pending. Claims 1, 10, and 19 are independent claims.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) 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).
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Claims 1-2, 4-11, and 13-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-9, and 11-19 of U.S. Patent No. 12,361,019 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming the same subject matter.
Claims 1-2, 4-11, and 13-20 of the instant application are claiming the same subject matter that are recited in claims 1-6, 8-9, and 11-19 of U.S. Patent No. 12,361,019 B2 as follows:
Instant Application
US Patent No. 12,361,019 B2
1. A method, comprising: recording, by a first computing system comprising one or more computing devices, a virtual identifier corresponding to a physical entity to be tracked and an identification of a first user account in a centralized or distributed ledger; subsequently receiving, by the first computing system, an identification of the virtual identifier and a second user account; and recording, by the first computing system, transfer of the virtual identifier to the second user account in the centralized or distributed ledger, the record comprising the virtual identifier and account identifiers of the first user account and the second user account.
2. The method of claim 1, wherein the virtual identifier is affixed to the physical entity in a visible format.
4. The method of claim 1, further comprising recording metadata of the physical entity in association with the virtual identifier in a database separate from the centralized or distributed ledger.
5. The method of claim 1, wherein recording transfer of the virtual identifier to the second user account further comprises retrieving metadata of the physical entity from either the centralized or distributed ledger or a database separate from the centralized or distributed ledger.
6. The method of claim 1, wherein recording transfer of the virtual identifier to the second user account further comprises updating, by the first computing device, an ownership field of a record associated with the physical entity stored in either the centralized or distributed ledger or a database separate from the centralized or distributed ledger to include the account identifier of the second user account.
7. The method of claim 1, further comprising receiving a request to execute a transaction transferring ownership of the physical entity from the first user account to the second user account, the request comprising the virtual identifier and the identification of the second user account.
8. The method of claim 1, wherein recording transfer of the virtual identifier to the second user account in the centralized or distributed ledger further comprises incrementing a value associated with the first user account by a first value, and incrementing a value associated with the second user account by a second value.
9. The method of claim 1, wherein recording transfer of the virtual identifier to the second user account in the centralized or distributed ledger further comprises incrementing a value associated with a third user account, the third user account associated with the virtual identifier prior to the first user account.
10. A system, comprising: one or more processors in communication with one or more network interfaces and one or more storage devices storing a centralized or distributed ledger; wherein the one or more processors are configured to: record a virtual identifier corresponding to a physical entity to be tracked and an identification of a first user account in the centralized or distributed ledger, subsequently receive, via the network interface, an identification of the virtual identifier and a second user account, and record transfer of the virtual identifier to the second user account in the centralized or distributed ledger, the record comprising the virtual identifier and account identifiers of the first user account and the second user account.
11. The system of claim 10, wherein the virtual identifier is affixed to the physical entity in a visible format.
13. The system of claim 10, wherein the one or more processors are further configured to record metadata of the physical entity in association with the virtual identifier in a database separate from the centralized or distributed ledger.
14. The system of claim 10, wherein the one or more processors are further configured to retrieve metadata of the physical entity from either the centralized or distributed ledger or a database separate from the centralized or distributed ledger.
15. The system of claim 10, wherein the one or more processors are further configured to update an ownership field of a record associated with the physical entity stored in either the centralized or distributed ledger or a database separate from the centralized or distributed ledger to include the account identifier of the second user account.
16. The system of claim 10, wherein the one or more processors are further configured to receive a request to execute a transaction transferring ownership of the physical entity from the first user account to the second user account, the request comprising the virtual identifier and the identification of the second user account.
17. The system of claim 10, wherein the one or more processors are further configured to increment a value associated with the first user account by a first value, and increment a value associated with the second user account by a second value.
18. The system of claim 10, wherein the one or more processors are further configured to increment a value associated with a third user account by a value, the third user account associated with the virtual identifier prior to the first user account.
19. A method, comprising: affixing an identification of a virtual identifier to a physical entity to be tracked, the virtual identifier recorded in association with a first user account in a centralized or distributed ledger; and subsequently recording transfer of the virtual identifier to a second user account in the centralized or distributed ledger responsive to a change in ownership of the physical entity, the record comprising the virtual identifier and account identifiers of the first user account and the second user account.
20. The method of claim 19, further comprising incrementing a value associated with the first user account in the centralized or distributed ledger by a first value, and incrementing a value associated with the second user account in the centralized or distributed ledger by a second value.
1. A method, comprising: generating, by a first computing device, a virtual identifier for a physical entity to be tracked, the virtual identifier affixed to the physical entity; recording, by the first computing device, the virtual identifier and an identification of a first user account in a centralized or distributed ledger; subsequently receiving, by the first computing device, an identification of the virtual identifier and a second user account; and recording, by the first computing device, transfer of the virtual identifier to the second user account in the centralized or distributed ledger, the record comprising the virtual identifier and account identifiers of the first user account and the second user account.
2. The method of claim 1, wherein the virtual identifier is encoded on a label affixed to the physical entity.
3. The method of claim 1, further comprising recording metadata of the physical entity in association with the virtual identifier in a database separate from the centralized or distributed ledger.
4. The method of claim 3, wherein recording transfer of the virtual identifier to the second user account further comprises retrieving the metadata of the physical entity from the database.
5. The method of claim 4, wherein recording transfer of the virtual identifier to the second user account further comprises updating, by the first computing device, an ownership field of a record associated with the physical entity stored in the database to include the account identifier of the second user account.
6. The method of claim 1, wherein subsequently receiving the identification of the virtual identifier and the second user account further comprises receiving a request to execute a transaction transferring ownership of the physical entity from the first user account to the second user account, the request comprising the virtual identifier and the identification of the second user account.
8. The method of claim 1, wherein recording transfer of the virtual identifier to the second user account in the centralized or distributed ledger further comprises incrementing a value associated with the first user account by a first value, and incrementing a value associated with the second user account by a second value.
9. The method of claim 8, wherein recording transfer of the virtual identifier to the second user account in the centralized or distributed ledger further comprises incrementing a value associated with a third user account by a third value, the third user account associated with the virtual identifier prior to the first user account.
11. A system, comprising: a first computing device comprising a network interface and a processor configured to: generate a virtual identifier for a physical entity to be tracked, the virtual identifier affixed to the physical entity, record the virtual identifier and an identification of a first user account in a centralized or distributed ledger, subsequently receive, via the network interface, an identification of the virtual identifier and a second user account, and record transfer of the virtual identifier to the second user account in the centralized or distributed ledger, the record comprising the virtual identifier and account identifiers of the first user account and the second user account.
12. The system of claim 11, wherein the virtual identifier is encoded on a label affixed to the physical entity.
13. The system of claim 11, wherein the processor is further configured to record metadata of the physical entity in association with the virtual identifier in a database separate from the centralized or distributed ledger.
14. The system of claim 13, wherein the processor is further configured to retrieve the metadata of the physical entity from the database.
15. The system of claim 14, wherein the processor is further configured to update an ownership field of a record associated with the physical entity stored in the database to include the account identifier of the second user account.
16. The system of claim 11, wherein the processor is further configured to receive, via the network interface, a request to execute a transaction transferring ownership of the physical entity from the first user account to the second user account, the request comprising the virtual identifier and the identification of the second user account.
18. The system of claim 11, wherein the processor is further configured to increment a value associated with the first user account by a first value, and incrementing a value associated with the second user account by a second value.
19. The system of claim 18, wherein the processor is further configured to increment a value associated with a third user account by a third value, the third user account associated with the virtual identifier prior to the first user account.
As to claims 1-2, 4-11, and 13-20, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have derived their claim limitations from claims 1-6, 8-9, and 11-19 of U.S. Patent No. 12,361,019 B2 since they are claiming the same subject matter and are substantially similar in scope.
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.
Claims 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent claim 19 recites a statutory category (process, machine, manufacture, 2019 PEG Step 1=yes) a method of affixing an identification of a virtual identifier to a physical entity to be tracked, the virtual identifier recorded in association with a first user account, and recording transfer of the virtual identifier to a second user account in the centralized or distributed ledger responsive to a change in ownership of the physical entity. Each of these limitations, alone or in combination, amount to a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind (i.e., Mental process). The “affixing” and “recording” steps in the context of each of this claim encompasses a user manually and/or mentally saving information. If a claim limitations, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping abstract ideas (2019 PEG Step 2A, Prong 1: Abstract Idea Grouping” Yes, Mental Process). Accordingly, the independent claim 19 recites an abstract idea.
This judicial exception is not integrated into a practical application (2019 PEG Step 2A, Prong 2: Additional elements that integrate the Judicial exception/ Abstract idea into a practical application? = No). In particular, the claim recites one additional element – responsive to a change in ownership of the physical entity. This additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, the claim is still directed to an abstract idea.
The claim does not recite any other additional elements that are sufficient to amount to significantly more than the judicial exception. The additional limitation of using a centralized or distributed ledger to store the virtual identifier and the associate user accounts (2019 PEG Step 2B: Does the claim recite additional elements that amount to significantly more? Is additional element(s) well-understood, routine, and conventional in the field?) is evaluated to see if it individually or collectively with other claim elements amount to significantly more. At most, the “using a centralized or distributed ledger to store the virtual identifier and the associate user accounts” step is not found to including anything more than what is well-understood, routine, conventional activity (WURC) in the field. In this case, it is noted that the claimed extra-solution of “using a centralized or distributed ledger to store the virtual identifier and the associate user accounts” is similar to “storing and retrieving information in memory” as one of the court recognized WURC examples in MPEP 2106.05(d)(II). Thus, for at least these reasons, the claim is directed to an abstract idea.
Dependent claim 20 do not include elements that amount to significantly more than the abstract idea because of the elements in this claim merely add extra-solution activity to the abstract idea.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, 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, 3, 6-10, and 15-20 is/are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over BRODY et al. (U.S. PG Pub. No. 2020/0034457 A1, hereinafter “BRODY”) in view of Cotta (U.S. PG Pub. No. 2020/0202668 A1).
Regarding claim 1, BRODY teaches a method, comprising:
recording, by a first computing system comprising one or more computing devices, a virtual identifier corresponding to a physical entity to be tracked and an identification of a first user account in a centralized or distributed ledger (BRODY Fig. 1A, step 121 and ¶0032, i.e., an asset token (virtual identifier) is generated, which is used for tracking a tangible asset (physical entity) brought into existence (see ¶0017); and Fig. 1A, step 123A and ¶0032, i.e., assignment of asset token to an owner entity (a first user account, see ¶0037) represented by one or more blockchain addresses (a distributed ledger, see ¶0002));
subsequently receiving, by the first computing system, an identification of the virtual identifier and a second user account (BRODY Fig. 1A, steps 124, 123B and 126 and ¶0032, i.e., sale and transfer ownership of asset).
BRODY fails to explicitly teach recording, by the first computing system, transfer of the virtual identifier to the second user account in the centralized or distributed ledger, the record comprising the virtual identifier and account identifiers of the first user account and the second user account. However, Cotta teaches recording, by the first computing system, transfer of the virtual identifier to the second user account in the centralized or distributed ledger, the record comprising the virtual identifier and account identifiers of the first user account and the second user account (Cotta ¶0006). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify BRODY by incorporating the teachings of Cotta. The motivation would be for using a cloud blockchain to provide assurance and tracking of virtual asset transactions, and further providing for anti-fraud implementations (Cotta ¶0001).
As to claim 3, BRODY as modified by Cotta also teaches the method of claim 1, wherein the virtual identifier is displayed via a user interface of the physical entity (BRODY ¶0048).
As to claim 6, BRODY as modified by Cotta also teaches the method of claim 1, wherein recording transfer of the virtual identifier to the second user account further comprises updating, by the first computing device, an ownership field of a record associated with the physical entity stored in either the centralized or distributed ledger or a database separate from the centralized or distributed ledger to include the account identifier of the second user account (Cotta ¶0017, “updating a registry of virtual assets to transfer ownership of the virtual asset from the first user account to the second user account”).
As to claim 7, BRODY as modified by Cotta also teaches the method of claim 1, further comprising receiving a request to execute a transaction transferring ownership of the physical entity from the first user account to the second user account, the request comprising the virtual identifier and the identification of the second user account (Cotta ¶0006, note that the physical entity is taught by BRODY, which is referenced by the virtual identifier).
As to claim 8, BRODY as modified by Cotta also teaches the method of claim 1, wherein recording transfer of the virtual identifier to the second user account in the centralized or distributed ledger further comprises incrementing a value associated with the first user account by a first value, and incrementing a value associated with the second user account by a second value (Cotta ¶0017, “updating a registry of virtual assets to transfer ownership of the virtual asset from the first user account to the second user account”, the Examiner notes that the recited “a value” affords a broad interpretation such as updating the virtual assets associated user accounts).
As to claim 9, BRODY as modified by Cotta also teaches the method of claim 8, wherein recording transfer of the virtual identifier to the second user account in the centralized or distributed ledger further comprises incrementing a value associated with a third user account by a third value, the third user account associated with the virtual identifier prior to the first user account (BRODY ¶¶0019-20, “A person/entity may be said to “own” an asset when they are in possession of a private key associated with the asset token”, “A smart contract can be associated with a predetermined geographic location and/or a predetermined entity” (i.e., associated with a third user account prior to the first user account), the Examiner notes that the recited “a value” affords a broad interpretation such as adding a smart contract to a blockchain so the incremental value is the initial value of the asset updating from zero).
Claim 10 recites the limitations substantially similar to those of claim 1 and is similarly rejected.
Claim 12 recites the limitations substantially similar to those of claim 3 and is similarly rejected.
Claim 15 recites the limitations substantially similar to those of claim 6 and is similarly rejected.
Claim 16 recites the limitations substantially similar to those of claim 7 and is similarly rejected.
Claim 17 recites the limitations substantially similar to those of claim 8 and is similarly rejected.
Claim 18 recites the limitations substantially similar to those of claim 9 and is similarly rejected.
Claim(s) 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over BRODY in view of Cotta, and further in view of KOMENDA et al. (U.S. PG Pub. No. 2019/0057454 A1, hereinafter “KOMENDA”).
Regarding claim 19, BRODY teaches a method, comprising:
a virtual identifier recorded in association with a first user account in a centralized or distributed ledger (BRODY Fig. 1A, step 121 and ¶0032, i.e., an asset token (virtual identifier) is generated, which is used for tracking a tangible asset (physical entity) brought into existence (see ¶0017); and Fig. 1A, step 123A and ¶0032, i.e., assignment of asset token to an owner entity (a first user account, see ¶0037) represented by one or more blockchain addresses (a distributed ledger, see ¶0002)).
BRODY fails to explicitly teach subsequently recording transfer of the virtual identifier to a second user account in the centralized or distributed ledger responsive to a change in ownership of the physical entity, the record comprising the virtual identifier and account identifiers of the first user account and the second user account. However, in the same field of endeavor, Cotta teaches subsequently recording transfer of the virtual identifier to a second user account in the centralized or distributed ledger responsive to a change in ownership of the physical entity, the record comprising the virtual identifier and account identifiers of the first user account and the second user account (Cotta ¶0006). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify BRODY by incorporating the teachings of Cotta. The motivation would be for using a cloud blockchain to provide assurance and tracking of virtual asset transactions, and further providing for anti-fraud implementations (Cotta ¶0001).
BRODY as modified by Cotta teaches fails to explicitly teach affixing an identification of the virtual identifier to a physical entity to be tracked. However, in the same field of endeavor, KOMENDA teaches affixing an identification of the virtual identifier to a physical entity to be tracked (KOMENDA ¶0053, i.e., label with an unique identifier can be affixed to physical entity). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify BRODY and Cotta by incorporating the teachings of KOMENDA. The motivation would be to identify and track the physical entity as it moves through the carrier’s transportation network. Such label could be used by the IoT (Internet of Things) enabled modules to enhance communications in and out of the network regarding relocating assets (KOMENDA ¶0053).
As to claim 20, BRODY as modified by Cotta and KOMENDA also teaches the method of claim 19, further comprising incrementing a value associated with the first user account in the centralized or distributed ledger by a first value, and incrementing a value associated with the second user account in the centralized or distributed ledger by a second value (BRODY ¶¶0019-20, “A person/entity may be said to “own” an asset when they are in possession of a private key associated with the asset token”, “A smart contract can be associated with a predetermined geographic location and/or a predetermined entity” (i.e., associated with a third user account prior to the first user account), the Examiner notes that the recited “a first value” and “a second value” afford a broad interpretation such as adding a smart contract to a blockchain so the incremental value is the initial value of the asset updating from zero).
Claim(s) 2 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over BRODY in view of Cotta, and further in view of KOMENDA.
As to claim 2, BRODY as modified by Cotta teaches the method of claim 1 but fails to explicitly teach wherein the virtual identifier is encoded on a label affixed to the physical entity in a visible format. However, in the same field of endeavor, KOMENDA teaches the virtual identifier is encoded on a label affixed to the physical entity in a visible format (KOMENDA ¶0053, i.e., label with an unique identifier can be affixed to physical entity). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify BRODY and Cotta by incorporating the teachings of KOMENDA. The motivation would be to identify and track the physical entity as it moves through the carrier’s transportation network. Such label could be used by the IoT (Internet of Things) enabled modules to enhance communications in and out of the network regarding relocating assets (KOMENDA ¶0053).
Claim 11 recites the limitations substantially similar to those of claim 2 and is similarly rejected.
Claim(s) 4-5 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over BRODY in view of Cotta, and further in view of Natanzon (U.S. PG Pub. No. 2020/0021649 A1).
As to claim 4, BRODY as modified by Cotta teaches the method of claim 1 but fails to explicitly teach further comprising recording metadata of the physical entity in association with the virtual identifier in a database separate from the centralized or distributed ledger. However, in the same field of endeavor, Natanzon teaches recording metadata of the physical entity in association with the virtual identifier in a database separate from the centralized or distributed ledger (Natanzon ¶0016, i.e., “metadata may include device identifiers”, ¶0047, i.e., metadata of the objects could be stored in a cloud based database). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify BRODY and Cotta by incorporating the teachings of Natanzon. The motivation would be to reconstruct various objects as necessary from distinct stations (Natanzon ¶0017).
As to claim 5, BRODY as modified by Cotta and Natanzon also teaches the method of claim 1, but fails to explicitly teach wherein recording transfer of the virtual identifier to the second user account further comprises retrieving the metadata of the physical entity from either the centralized or distributed ledger or a database separate from the centralized or distributed ledger. However, in the same field of endeavor, Natanzon teaches recording transfer of the virtual identifier to the second user account further comprises retrieving the metadata of the physical entity from either the centralized or distributed ledger or a database separate from the centralized or distributed ledger (Natanzon ¶0037, i.e., “The metadata 216 can be used to retrieve the objects and reconstruct or evaluate the associated objects or data”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify BRODY and Cotta by incorporating the teachings of Natanzon. The motivation would be to reconstruct various objects as necessary from distinct stations (Natanzon ¶0017).
Claim 13 recites the limitations substantially similar to those of claim 4 and is similarly rejected.
Claim 14 recites the limitations substantially similar to those of claim 5 and is similarly rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER KHONG whose telephone number is (571)270-7127. The examiner can normally be reached Mon-Fri 8am-5pm EST.
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/ALEXANDER KHONG/Primary Examiner, Art Unit 2168
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