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.
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1-10 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;
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;
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.
Under the broadest reasonable interpretation, A-F 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 is 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 2-5 and 7-9 do not recite 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 recite “a portal,” “an application programming interface (API),” and “web application (WebApp)” as an 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.
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 1-10 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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2023/233393 (herein as “Mann”) 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);
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).
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.
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
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 ([0074] – “The smart contract (between the shoe manufacturer and its customers) can specify that certain products or services (e.g…physical product…) can be made available (for physical production) to a customer based on a certain condition (predefined criteria) when performed by the customer…Examples of these conditions include performing certain activities with the digital or physical product”).
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’s evaluating of the cryptographical digital asset to include the teachings of evaluating whether the cryptographic digital asset meets predefined criteria for physical production in Nieto. One would be motivated to make this combination to increase overall engagement with the products offered through a company’s various platforms Nieto, [0003].
Re Claim 2, Mann in view of Nieto teach the method of claim 1, Mann in view of Nieto further teach wherein the predefined criteria include one or more of:
an age of the cryptographic digital asset exceeding a predefined age;
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
an evolutionary stage of the cryptographic digital asset 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 modify Mann’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 3, Mann in view of Nieto teach the method of claim 1, and Mann in view of Nieto further teach further comprising:
determining, by the rules engine, a maximum number of physical units the user is permitted to order […] (Mann, pg. 20, lines 9-10 – “the smart contract 240 may further define a maximal number of copies of the physical item to be produced”); and
restricting the user's request based on the determined maximum number (Mann, 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”).
However, Mann does not expressly disclose 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 product 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”.
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’s determining, by the rules engine, a maximum number of physical units the user is permitted to order with the teachings of producing physical products based on digital asset factors and user 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 4, Mann in view of Nieto teach the method of claim 3, and Mann in view of 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’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 Nieto teach the method of claim 3, and Mann in view of 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’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 Nieto teach the method of claim 1, and Mann in view of 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 does not expressly disclose
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’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 Nieto teach the method of claim 1, and Mann in view of 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’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 Nieto teach the method of claim 1, Mann in view of 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’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 Nieto teach the method of claim 1, and Mann in view of 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 Nieto teach the method of claim 1, Mann in view of 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’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].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Dashkov U.S. 2024/0078536 directed to systems and methods using digital assets. See at least [0020], [0023].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE DANG whose telephone number is (571)270-5880. The examiner can normally be reached M-F 9-5pm MT.
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/CHRISTINE DANG/Examiner, Art Unit 3698