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 .
Acknowledgements
The instant application is a divisional of application 18/444,327, which claims
benefit to provisional application 62/776,699, filed 12/07/2018. Examiner notes that the
subject matter being claimed in the instant application is not supported in the provisional
application or any of the subsequent applications preceding application 18/444,327. Therefore,
the current effective filing date of the claimed subject matter is 02/16/2024.
Status of Claims
The reply filed 06/17/2026 is acknowledged. Claims 1-2 have been amended. Claim 3 has been canceled. Claim 11 is new. Claims 1-2 and 4-11 are pending and presented for examination.
Response to Arguments
Applicant's arguments, filed 06/17/2026, with respect to the 35 U.S.C. 101 rejection of claims 1-10 have been fully considered, but they are not persuasive.
In response to the Applicant’s remarks that claim 1 is integrates the authorization decision into a concrete manufacturing pipeline on pgs. 5-6, reciting steps that at most contributes to a manufacturing pipeline is an abstract idea. Evaluating whether a digital asset meets a predefined criteria for physical production and then retrieving design files to determine product specifications and materials are all analogous to a commercial or business interaction. Furthermore, the claimed limitations do not actively claim a manufacturing process or “producing physical units” as implied by the remarks. Rather, at most, the steps are no more than a process of preparing to manufacture the physical unit, which is considered a commercial interaction. None of the recited steps are technical in nature, i.e. they do not require a computer, and the claimed invention as a whole does not achieve any technical or practical result. The claimed invention does not use “rules to achieve a specific technical result,” it uses predefined criteria to direct a business decision, i.e. to allow a user to request a production, and the business decision to allow the user to request a production results in retrieving design files and determining product specifications, neither of which are technical steps or technical results. Therefore, the amended claimed invention does not apply the exception, i.e. commercial interaction, in a meaningful way to achieve any particular result other than elaborating on the commercial interaction since both retrieving the design files and determining the product specifications and materials are reasonably a part of the abstract idea.
In response to the Applicant’s remarks that the amended limitations (“retrieving digital design files…” and “determining product specifications and materials…”) integrates the “abstract gating determination into a concrete sequence of technical steps that yield a physical product” on pg. 6, the steps are not technical in nature, i.e. they do not require a computer, and the amended claimed invention does not yield any physical products. Rather, the amended limitations are reasonably grouped under the abstract idea of commercial interaction as noted above. Please see below for an updated patent eligibility analysis in light of the amendments.
Applicant’s amendments, filed 06/17/2026, to claim 1 has overcome the prior art rejection. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Andon et al. U.S. 2020/0273048.
In response to the Applicant’s remarks that Nieto et al. U.S. 2023/0110817 does not disclose a cap-determination step on pg. 9, under the broadest, most reasonable interpretation, the language “one or more of” means there could be two factors from the list of factors disclosed in Nieto [0071]: “the digital assets, the user’s interactions with the digital assets, the commercial attributes of the physical products, and other user information.” At least “the user’s interactions with the digital assets and other user information” are reasonably considered “user factors” and “the digital assets and the user’s interactions with the digital assets” are reasonably considered “digital asset factors.” Such language “one or more of” does not preclude from multiple factors being used, when in fact, it does the opposite. Furthermore, Applicant is reminded that it is the combination of Mann et al. WO 2023/233393 in view of Nieto that teaches the determining step. Mann discloses monitoring, controlling, and/or restricting the number of physical items according to one or more defined conditions on at least pg. 23, lines 28-30, and the condition can include, for example, the maximal number of copies of the physical item pg. 20, lines 12-14, However, Mann does not expressly disclose that the conditions also include digital asset factors and user factors. Nieto discloses sending signals to the manufacturing system to produce physical products based on digital assets and user information [0071]. Therefore, Nieto discloses the conditions of digital asset factors and user factors that control the production of physical products. Modifying Mann’s determining step with the conditions of digital asset factors and user factors in Nieto would arrive at the claimed invention. One would be motivated to make this combination to help regulate scarcity or rarity of assets, thereby maintaining their popularity, as suggested by Nieto [0095]. The remarks have not addressed this particular combination and the provided rationale to combine, but instead, has attacked the references individually. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Furthermore, the claim limitations are not “applying digital asset factors and user factors to a quantity computation” or “computing a maximum-units number from the combination of asset-side factors and user-side factors.” The claimed invention does not specifically claim any quantity computation or the like, let alone applying the factors to such computation. Therefore, the remarks are based on a limitation that is not being claimed and cannot be persuasive.
In response to the Applicant’s remarks that the motivation to combine is insufficient on pgs. 9-10, the remarks are in light of the newly amended limitations in claim 1. Therefore, for purposes of brevity, please see the updated prior art rejection with the associated updated rationales below as a response to the remarks.
Claim Objections
Claim 11 is objected to because of the following informalities: “materials” in line 5 should be “materials.” 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 4-5 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 4-5 depend from a canceled claim. Therefore, the scope of the claim is indefinite since it cannot be determined. For purposes of compact prosecution, claims 4 and 5 shall be interpreted to be dependent from claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 4-5 are rejected as being of improper dependent form for failing to reference a claim previously set forth. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. For purposes of compact prosecution, claims 4 and 5 shall be interpreted to be dependent from claim 1.
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 1-2 and 4-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1-2 and 4-11 fall into at least one of the four categories of statutory subject matter. The eligibility analysis proceeds to Step 2A.1.
Step 2A.1:
The limitations of independent claim 1 have been denoted with letters by the Examiner for easy reference. The judicial exceptions recited in claim 1 are identified in bold below:
A method for producing physical products based on a cryptographic digital asset, the method comprising:
receiving, by a host system, an indication that a cryptographic digital asset is owned by a user;
evaluating, by a rules engine communication with the host system, whether the cryptographic digital asset owned by the user meets predefined criteria for physical production, wherein the predefined criteria include at least one of: an age of the cryptographic digital asset exceeding a predefined age; or an evolutionary stage of the cryptographic digital asset reaching a predefined evolutionary stage;
authorizing, upon satisfaction of the predefined criteria, the user to request a production of a predetermined number of physical units matching the likeness of the cryptographic digital asset;
determining, by the rules engine, a maximum number of physical units the user is permitted to order based on digital asset and user factors;
restricting the user’s request based on the determined maximum number; and
receiving, by the host system, the user's request for the production of the physical units; and
initiating, based on the received request, the manufacturing process for the production of the physical units to match the appearance of the cryptographic digital asset, wherein initiating the manufacturing process includes retrieving digital design files associated with the cryptographic digital asset and determining product specifications and materials for the physical units from the digital design files.
Under the broadest reasonable interpretation, the bolded limitations of A-H recite limitations that are reasonably categorized under certain methods of organizing human activity. Specifically, the claimed limitations can be grouped as commercial or legal interactions. Evaluating whether a digital asset meets a criteria for physical production and retrieving digital design files to determine product specifications and materials for the physical unit based on a user request are analogous to a commercial or business relationship/interaction.
Claim 1 recites at least one abstract idea. The eligibility analysis proceeds to Step 2A.2.
Step 2A.2:
The judicial exception is not integrated into a practical application. In particular, claim 1 recites the additional element(s) not in bold above.
The additional elements have all been recited at a high-level of generality such that they amount to no more than generic computing components. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, the claims amount to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. These 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.
Claim 1 does not recite additional elements that integrate the judicial exception into a practical application. The eligibility analysis proceeds to Step 2B.
Step 2B:
The additional elements, both individually and as an ordered combination, do not amount to significantly more than the judicial exception because the outcome of the considerations at Step 2B will be the same when considerations from Step 2A.2 are re-evaluated. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Claim 1 is not patent eligible.
Dependent Claims
Dependent claims 2, 4-5 and 7-9 elaborate on the recited abstract idea without reciting any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claim from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent claims 6 and 10-11 recite “a portal,” “an application programming interface (API),” “web application (WebApp),” “a computer system of a product manufacturer,” and “an enterprise resourcing planning (ERP) or manufacturing order system” as additional elements. However, they have been recited at a high-level of generality such that they amount to no more than generic computing components. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, the claims amount to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. These 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. The other limitations not identified as additional elements merely elaborate on the abstract idea of commercial interaction. Placing and creating a manufacturing order, and fulfilling the manufacturing order are all analogous to a commercial interaction at least in the form of a sales activity. Examiner notes that “fulfilling” has been described in [00119] as “may include extracting, by the computer system, digital data or design files associated with the cryptographic digital asset” and/or “may include shipping the produced physical units of footwear or apparel to the user or to a customer of the user.” Therefore, “fulfilling the manufacturing order to produce the physical units” does not necessarily include the step of manufacturing the physical units.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea(s) into a patent eligible application such that the abstract idea amounts to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, claims 1-2 and 4-11 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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 and 4-11 are rejected under 35 U.S.C. 103 as being unpatentable over Mann et al. WO 2023/233393 (herein as “Mann”), in view of Andon et al. U.S. 2020/0273048 (herein as “Andon”), and further in view of Nieto et al. U.S. 2023/0110817 (herein as “Nieto”).
Re Claim 1, Mann discloses a method for producing physical products based on a cryptographic digital asset, the method comprising:
receiving, by a host system Fig. 2, 202, an indication that a cryptographic digital asset is owned by a user (Fig. 3, 302 – the request comprising a unique key is analogous to an indication that a cryptographic digital asset is owned by a user);
evaluating, by a rules engine communication with the host system, whether the
cryptographic digital asset is owned by the user […] (Fig. 3, 304, pg. 25, lines 9-11 – “the smart contract may authenticate the unique key provided by the user 212 in order to verify that the user 212 is indeed the owner of the digital asset and may be therefore entitled to produce the physical item corresponding to the digital asset”;
authorizing, upon satisfaction of the predefined criteria, the user to request a production of a predetermined number of physical units matching the likeness of the cryptographic digital asset (pg. 25, lines 19-20 – “the smart contract 340 successfully authenticates the unique key received from the user 212,” lines 9-11 – successfully authenticating the unique key provided by the user entitles the user to produce the physical item, i.e. authorizing, pg. 20, lines 9-10 – “the smart contract 240 may further define a maximal number of copies of the physical item to be produced,” g. 17, lines 7-10 – “producing the corresponding physical item may include producing the physical items according to the corresponding digital asset which may also include printing one or more designs corresponding to the digital asset of the user 212,” matching the likeness of the cryptographic digital asset);
determining, by the rules engine, a maximum number of physical units the user is permitted to order […] (pg. 23, lines 28-30 – “monitor, control, and/or restrict the number of physical items produced by the distributer(s) according to the conditions defined in the smart contract 240,” pg. 20, lines 9-10 – “the smart contract 240 may further define a maximal number of copies of the physical item to be produced,” pg. 20, 12-14 – “The smart contract 240 may thus control and/or restrict production of the physical item according to one or more of the conditions); and
restricting the user's request based on the determined maximum number (pg. 20, 12-14 – “The smart contract 240 may thus control and/or restrict production of the physical item according to one or more of the conditions, for example, the maximal number of copies of the physical item”); and
receiving, by the host system, the user's request for the production of the physical units (pg. 24, lines 28-29 – “the smart contract 240 may receive a request from a user 212 to produce a physical item corresponding to a digital asset owned by the user 212”);
and
initiating, based on the received request, the manufacturing process for the production of the physical units to match the appearance of the cryptographic digital asset (pg. 25, line 33-pg. 26, line 2 – “the smart contract 240 may transmit the production instructions and/or a production authorization (“GO”) to one or more production sites such as a production system 216, for example, a factory, a manufacturing facility and/or the like instructing them to produce the physical item,” pg. 17, lines 7-10 – “producing the corresponding physical item may include producing the physical items according to the corresponding digital asset which may also include printing one or more designs corresponding to the digital asset of the user 212,” i.e. match the appearance of the cryptographic digital asset), wherein initiating the manufacturing process includes retrieving digital design files associated with the cryptographic digital asset and determining product specifications and materials for the physical units from the digital design files (pg. 23, lines 1-2 – “distribute the production instructions, i.e., provide the production instructions for producing the physical item corresponding to the digital asset” pg. 20, lines 30-34 – “The production instructions, i.e. digital design files, included in the smart contract 240 may define using one or more techniques and/or materials, i.e. product specifications and materials, for printing the authentication design(s) on the physical item. For example, the production instructions may define printing the authentication design(s) using one or more pain materials which are visible to human eye, i.e., in the visible spectrum corresponding to a spectral range of approximately 350-750 nanometer”).
However, Mann does not expressly disclose the following limitations in italics:
evaluating, by a rules engine in communication with the host system, whether the cryptographic digital asset owned by the user meets predefined criteria for physical production, wherein the predefined criteria include at least one of: an age of the cryptographic digital asset exceeding a predefined age; or an evolutionary stage of the cryptographic digital asset reaching a predefined evolutionary stage.
Andon discloses systems and methods for provisioning cryptographic digital assets for blockchain-secured retail products. Specifically, Andon discloses
evaluating, by a rules engine in communication with the host system, whether the cryptographic digital asset owned by the user meets predefined criteria for physical production, wherein the predefined criteria include at least one of: an age of the cryptographic digital asset exceeding a predefined age; or an evolutionary stage of the cryptographic digital asset reaching a predefined evolutionary stage ([0059] – “as the CryptoKick pet “grows” through various life stages, it may unlock a real-life shoe version of itself that a user can have made. For example, if a CryptoKick pet has evolved into a royal blue athletic shoe for a toddler, the user has unlocked the option to buy a special royal blue athletic shoe in one or more toddler sizes,” the CryptoKick pet is analogous to the cryptographic digital asset, and evolving into a royal blue athletic shoe for a toddler is analogous to reaching a predefined evolutionary stage).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Mann’s evaluating of the cryptographic digital asset to include the teachings of meeting a predefined criteria, wherein the predefined criteria includes an evolutionary stage of the cryptographic digital asset reaching a predefined evolutionary stage in Andon. One would be motivated to make this combination to control production of retail goods while promoting user engagement with the brand, thereby mitigating unauthorized and/or counterfeit production, and preserving a brand’s value and/or exclusivity Andon, [0003, 0005].
However, Mann in view of Andon do not explicitly teach the following limitations italicized
determining, by the rules engine, a maximum number of physical units the user is permitted to order based on digital asset factors and user factors.
Nieto discloses systems and methods for providing a digital asset system that interconnects the processing of digital assets and related physical products. Specifically, Nieto discloses
determining, by the rules engine, a maximum number of physical units the user is permitted to order based on digital asset factors and user factors ([0071] – “may send signals to the manufacturing system to produce physical products based on one or more of the digital assets, the user’s interactions with the digital assets, the commercial attributes of the physical products, and other user information,” therefore, disclosing digital asset factors and user factors that control the production of physical products).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Mann in view of Andon’s conditions for determining, by the rules engine, a maximum number of physical units the user is permitted to order with the teachings of conditions such as digital asset factors and user factors to control the production of physical products in Nieto. One would be motivated to make this combination to help regulate scarcity, or rarity, of assets, thereby maintaining their popularity Nieto, [0095].
Re Claim 2, Mann in view of Andon and Nieto teach the method of claim 1, Mann in view of Andon and Nieto further teach wherein the predefined criteria include one or more of:
a level of digital interaction with the cryptographic digital asset within a digital environment exceeding a threshold level of digital interaction (Nieto, [0085] – “digital activation layer 230A may require a threshold number of interactions…track each members interactions within the system, such as digital asset purchases, trades, burning, or any other activity with the digital activation layer 230A. Once a threshold level of activity is tracked by membership subsystem 232, digital activation layer 230A may provide the user access to backend layer 210 where it may then interact with the subsystems for producing physical products”); or
a predefined minimum number of digital votes associated with authorizing physical production of the cryptographic digital asset.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Mann in view of Andon’s predefined criteria to include the teachings of a level of digital interaction with the cryptographic digital asset within a digital environment exceeding a threshold level of digital interaction in Nieto. One would be motivated to make this combination to ensure that the user is an actual person and not a bot Nieto, [0085].
Re Claim 4, Mann in view of Andon and Nieto teach the method of claim 3, and Mann in view of Andon and Nieto further teach wherein the digital asset factors include one or more of:
a rarity of the cryptographic digital asset Nieto, [0095];
an attribute possessed by the cryptographic digital asset Nieto, [0095]; or
a market demand for the cryptographic digital asset.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Mann in view of Andon’s determining, by the rules engine, a maximum number of physical units the user is permitted to order with the teachings of the digital asset factors in Nieto. One would be motivated to make this combination to help regulate scarcity, or rarity, of assets, thereby maintaining their popularity Nieto, [0095].
Re Claim 5, Mann in view of Andon and Nieto teach the method of claim 3, and Mann in view of Andon and Nieto further teach wherein the user factors include one or more of:
a membership or loyalty tier of the user with a manufacturer;
a past sales velocity or volume of the user;
a customer engagement level of the user Nieto, [0074] – “reaching a milestone with respect to number of followers or posts”; or
an audience reach of the user.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Mann in view of Andon’s determining, by the rules engine, a maximum number of physical units the user is permitted to order with the teachings of the user factors in Nieto. One would be motivated to make this combination to help maintain popularity of the asset Nieto, [0093].
Re Claim 6, Mann in view of Andon and Nieto teach the method of claim 1, and Mann in view of Andon and Nieto further teach further comprising:
upon receiving the order via the portal, retrieving data or digital design files associated with the cryptographic digital asset (Mann, pg. 18, lines 8-9 – “obtain production instructions for producing the physical item corresponding to the digital asset owned by the user 212,” in response to Fig. 1, step 102); and
determining product specifications, materials, and other attributes from the retrieved data or digital design files (Mann, pg. 18, lines 10-13 – “the production instructions may be adapted for producing the physical item…according to one or more attributes, parameters, and/or characteristics of the physical item…lines 15-16 – “may comprise instructions adapted for the textile and/or leather printer(s) for printing one or more designs on the apparel item(s) and/or on the material used to produce the apparel item(s)”).
However, Mann in view of Andon do not explicitly teach
providing the user with a portal for executing an order for the production and delivery of the physical units.
Nieto discloses systems and methods for providing a digital asset system that interconnects the processing of digital assets and related physical products. Specifically, Nieto discloses
providing the user with a portal for executing an order for the production and delivery of the physical units ([0118] – “The actions may be submitted from the user device,” [0120] – “the digital activation layer 230A transmits a signal to the backend layer 210. The signal may be configured to cause the backend layer 210 to initiate the second action associated with the physical product…the second action may be to produce the physical product or to ship the physical product,” [0043] – the digital activation layer 118 may provide a customer-face blockchain network…The customer-facing blockchain network may be for interacting with the backend layer 110 including access and purchasing physical products, accessing and purchasing digital assets…,” therefore, the digital activation layer 118 provides a portal for the user to request production and delivery).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Mann in view of Andon’s method of producing physical items with the teachings of providing the user with a portal for executing an order for the production and delivery of the physical units in Nieto. Mann does disclose an online marketplace pg. 14, lines 10-19. Modifying the online marketplace to a portal for executing an order for the production and delivery of the physical units would improve overall user experience by allowing a user to perform a variety of functions in one place.
Re Claim 7, Mann in view of Andon and Nieto teach the method of claim 1, and Mann in view of Andon and Nieto further teach further comprising:
shipping the produced physical units directly from a manufacturing facility to the user (Nieto, [0161] – “ship the custom physical product directly to the consumer”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Mann in view of Andon’s method of producing physical items with the teachings of shipping the produced physical units directly from a manufacturing facility to the user in Nieto. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
Re Claim 8, Mann in view of Andon and Nieto teach the method of claim 1, Mann in view of Andon and Nieto further teach further comprising:
granting the user exclusive resale rights for a predefined period or market for the produced physical units based on the cryptographic digital asset (Nieto, [0135] – “if registration has completed, user device 240A may be provided access to digital asset subsystem 23 and allowed to perform granted operations,” [0089] – “Digital asset subsystem 235 may include components for managing and customizing digital assets,” “digital assets may be sold and resold by multiple users,” [0116] – “the digital asset may enter a trading period within the digital asset marketplace for a predetermined period of time,” “Actions include at least one of transferring the digital asset to another user device”).
Digital assets correspond to physical products, therefore, reselling digital assets is analogous to reselling the physical products. Since a one-to-one relationship can exist between a digital asset and a physical product [0115], a user that owns the digital asset has the exclusive right to resell the digital asset. Therefore, a user has the exclusive right to resell the physical product to which the digital asset corresponds because they are the only one who owns the particular digital asset.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Mann in view of Andon’s method of producing physical items based on ownership of a corresponding digital asset with the teachings of granting the user exclusive resale rights for a predefined period or market for the produced physical units based on the cryptographic digital asset in Nieto. One would be motivated to make the combination because it provides users with the flexibility of buying, selling, and/or trading their assets, thereby increasing the user’s loyalty to services or products offered by the companies Nieto, [0003-4], [0030].
Re Claim 9, Mann in view of Andon and Nieto teach the method of claim 1, and Mann in view of Andon and Nieto further teach further comprising:
storing, printing, or embedding an identifier onto the produced physical units, wherein the identifier uniquely references the cryptographic digital asset (Mann, pg. 19, lines 4-5 – “printing a certain design, for example, a certain logo on a certain existing physical item,” pg. 23, line 34-pg. 24, line 1 – “producing T-shirts corresponding to a certain digital asset, for example, a certain logo,” i.e. logo is analogous to an identifier that references the digital asset).
Examiner notes that what the identifier uniquely references is nonfunctional descriptive material see MPEP 2111.05. The content of the identifier does not meaningfully limit how it is stored, printed, or embedded onto the produced physical units, and the produced physical unit does not perform any function with respect to the identifier. Therefore, the content of the identifier cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claim 10, Mann in view of Andon and Nieto teach the method of claim 1, Mann in view of Andon and Nieto further teach further comprising:
providing an application programming interface (API) or web application (WebApp) to the user to enable customers of the user to place direct orders with a manufacturer linked to the user's exclusive cryptographic digital asset, wherein shipping and payment details of the customers are directly fed into the manufacturer's system for product fulfillment (Nieto, [0161] – “the enterprise may allow its customers to have direct access to control the production subsystem 212. Direct access may mean that a customer request may be allowed to include specific design details regarding a custom physical product and the smart contract would enable those specific details to be forwarded to the production subsystem 212 where the physical product may be manufactured in accordance with the customer request,” [0038] – “Backend layer 110 may provide access to and manage physical products in the physical inventory 112 that may be implemented as, for example, a website via that user devices 112A-B may interact to select, customize, and/or purchase the physical products”).
Examiner notes that claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure MPEP 2111.04. The limitation “wherein shipping and payment details of the customers are directly fed into the manufacturer's system for product fulfillment” does not meaningfully limit how an API or WebApp is provided to the user. In other words, the “wherein” clause does not give meaning and purpose to the manipulative step of providing. Therefore, the “wherein” clause cannot be given patentable weight.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Mann in view of Andon’s method of producing physical items with the teachings of providing an application programming interface (API) or web application (WebApp) to the user to enable customers of the user to place direct orders with a manufacturer linked to the user's exclusive cryptographic digital asset in Nieto. Mann does disclose an online marketplace pg. 14, lines 10-19. Modifying the online marketplace to a web application (WebApp) to enable customers of the user to place direct orders with a manufacturer would improve overall user experience by allowing a user to customize their physical product Nieto, [0161].
Re Claim 11, Mann in view of Andon and Nieto teach the method of claim 1, and Mann in view of Andon and Nieto further teach wherein initiating the manufacturing process comprises, by a computer system of a product manufacturer, creating a manufacturing order in an enterprise resource planning (ERP) or manufacturing order system that specifies the determined product specifications, materials, and quantity of the physical units, and fulfilling the manufacturing order to produce the physical units according to the determined product specifications and materials (Mann, pg. 25, line 28-pg. 26, line 2 – “transmit the production instructions and/or a production authorization (“GO”) to one or more production sites such as the production system 216, for example, a factory, a manufacturing facility, and/or the like instructing them to produce the physical item,” the production authorization is analogous to the order, and the production instructions include the specifications, materials, and quantity, see pg. 18, lines 14-19, pg. 20, line 30-pg. 21, line 6. Pg. 20, lines 25-26 – “the production instructions define production of a batch of physical items, for example, 50 items.” Transmitting the production instructions and/or a production authorization suggests that the production instructions and/or production authorization were created. Pg. 27, line 18 – “provide it (the produced T-shirt) to the user 212A,” i.e. fulfilling the order).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CHRISTINE DANG/Examiner, Art Unit 3698
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