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 communication is a Non-Final Office Action.
Claims 17-35 have been examined in this application. Claims 1-16 are cancelled.
The information disclosure statement (IDS) filed on October 2, 2025 has been considered.
Claim Objections
Claims 18-35 are objected to because of the following informalities: the claims should be reviewed carefully to insure proper antecedent basis. For instance, claim 19 recites “an access link” wherein claim 17 already recites said “an access link.” It is understood that the link is the same and the claim will be examined based on this understanding.
Appropriate correction is required.
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 17-35 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.
Per claim 17, the claim recites “accessing a first hash of the digital asset.” The claim recites a first “digital asset” and a second “digital asset” in the pre-amble and in the first claim limitation. Therefore, it is not clear whether the digital asset is referring to the first or second digital asset. For purposes of examination, any single digital asset will be determined as reading on the claim limitations.
All dependent claims are rejected under the same rational and for mere dependency on the rejected claim.
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 17-35 are rejected under 35 U.S.C. §101 because the claimed invention is directed to non-statutory subject matter.
Claims 17-35 fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter).
Claims 17-35 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of provisioning data to a user to allow the user access to content without significantly more.
The abstract idea is categorized under certain methods of organizing human activity, such as commercial interactions including agreements in the form of contracts, sales activities, and business relations. The determination of whether to allow a user access to content, content management, and associating rules / conditions with the rendering of content explicitly capture the above abstract idea grouping and sub-groupings. Under the broadest reasonable interpretation, the claims also capture mental processes, including concepts performed in the human mind such as observation, evaluation, judgement, and opinion and carried said concepts using pen-and-paper. The claimed scope as a whole can be carried out using a human mind, exchange of information between humans, including the calculations of hashes and token via pen-and-paper and the human mind. The ledger referenced in the claims is equivalent to a ledger comprised of a plurality of humans all in communication with one another.
Claim 17, in pertinent part, recites:
A method for managing a… asset performed by a token rights management service, the method comprising:
receiving a digital rights management data access request to access a… asset, the digital rights management data access request comprising an identifier associated with a user;
accessing a first hash of the… asset;
generating a second hash using a structured combination of at least the first hash and the identifier associated with the user;
generating an asset rights assertion comprising the second hash;
generating a trusted ledger query, the trusted ledger query comprising the asset rights assertion;
issuing the generated trusted ledger query to a trusted ledger service maintaining a trusted ledger comprising a plurality of cryptographically linked ledger entries;
receiving, from the trusted ledger service in response to the issued trusted ledger query, an indication verifying that the second hash included in the asset rights assertion has been previously recorded in a cryptographically linked ledger entry of the plurality of cryptographically linked ledger entries of the trusted ledger;
determining that the user has rights to access the… asset based on the received indications;
generating a rights management query based on determining that the user has rights to access the… asset, the rights management query comprising a key identifier and a key encryption key, the key encryption key comprising a public encryption key associated with the user;
issuing the generated rights management query to a digital rights management service;
receiving, from the digital rights management service in response to the issued rights management query, a digital rights management token associated with the… asset, the digital rights management token comprising an encrypted content key, the encrypted content key comprising a content key for the… asset encrypted with the key encryption key; and
sending the… rights management token and an access… [destination] for accessing the… asset to a system associated with the user.
The judicial exception is not integrated into a practical application. The claims recite the following additional elements: a digital asset and an access link. The additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as sending and receiving data, generating data, analyzing the data, and determining an outcome. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Furthermore, the claims simply add insignificant extra-solution activity to the judicial exception and merely link the user of the judicial exception to a particular technological environment or field of use.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above. Claims 28-34 include additional elements: trusted immutable distributed assertion ledger, a blockchain, and verifying the access token. These additional elements are also recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as manipulating data. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Furthermore, the claims simply add insignificant extra-solution activity to the judicial exception and merely link the user of the judicial exception to a particular technological environment or field of use.
The claims are not patent eligible.
Prior Art
International Application Publication WO/2023044496 to Jakobsson et al. (Jakobsson) teaches several limitations of claim 17. For example Jakobsson teaches:
A method for managing a digital asset performed by a token rights management service, the method comprising (DRM management of digital content including NFTs) [Abstract, Paragraph 0052]:
receiving a digital rights management data access request to access a digital asset, the digital rights management data access request comprising an identifier associated with a user (user sends request to access asset using label data-field and address data field which are identifiers associated with the user-recipient designator) [Abstract, Paragraphs 0052];
Accessing a first hash of the digital asset (hashes are broadcasted allowing them to be obtained with regard to the content) [Paragraphs 0155 and 0364];
generating a trusted ledger query, the trusted ledger query comprising the asset rights assertion [0155];
issuing the generated trusted ledger query to a trusted ledger service maintaining a trusted ledger comprising a plurality of cryptographically linked ledger entries [0155].
Jakobsson does not explicitly disclose the remaining limitations.
U.S. Patent Application Publication 2022/0138283 to Kolev et al. (Kolev) teaches:
generating a rights management query based on determining that the user has rights to access the digital asset, the rights management query comprising a key identifier and a key encryption key, the key encryption key comprising a public encryption key associated with the user [Paragraphs 0040-0060];
issuing the generated rights management query to a digital rights management service [Paragraphs 0040-0060];
receiving, from the digital rights management service in response to the issued rights management query, a digital rights management token associated with the… asset, the digital rights management token comprising an encrypted content key, the encrypted content key comprising a content key for the digital asset encrypted with the key encryption key [Paragraphs 0040-0060]; and
sending the digital rights management token and an access link for accessing the digital asset to a system associated with the user [Paragraphs 0040-0060].
Kolev does not explicitly teach the remaining limitations.
U.S. Patent to Wright et al. (Wright) teaches:
generating a second hash using a structured combination of at least the first hash and the identifier associated with the user [Figure 5 and related text];
generating an asset rights assertion comprising the second hash [Figure 5 and related text].
Limitations:
receiving, from the trusted ledger service in response to the issued trusted ledger query, an indication verifying that the second hash included in the asset rights assertion has been previously recorded in a cryptographically linked ledger entry of the plurality of cryptographically linked ledger entries of the trusted ledger; and
determining that the user has rights to access the digital asset based on the received indications are not clearly taught by any of the above references.
Even if a fourth reference is found to teach the limitations above that are missing, such a combination of references would not be deemed obvious. As a result, the claims are novel over the prior at because the combination of Jakobsson in view of Kolev in view of Wright fail to teach clearly the missing limitations. Other references were considered however they fail to teach the missing limitations. As a result, the claimed scope is novel over the prior art.
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).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 of the instant Applicant is rejected on the ground of non-statutory double patenting as being unpatentable over claim 1 of Patent 12411913. Although claim 1 of the instant Application is not identical to claim 1 of the Patent ‘913, they are not patentably distinct from each other because they are directed to the same scope of invention. The instant Application recites a broader scope compared to Patent ‘913. It would have been obvious to one of ordinary skill in the art to remove the additional limitations in Patent ‘913 to result in claim 1 of the instant Application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on for PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EL MEHDI OUSSIR whose telephone number is (571)270-0191. The examiner can normally be reached M-F 9AM - 5PM.
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Sincerely,
/EL MEHDI OUSSIR/Primary Examiner, Art Unit 3699