DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The following is a FIRST, NON-FINAL OFFICE ACTION for Application #19/404,406, filed on 12/01/2025. This application claims priority to Japanese Application #2024-218280, filed on 12/12/2024.
Claims 1-13 are now pending and have been examined.
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 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The rationale for this finding is explained below.
Per Step 1 of the analysis, in the instant case, independent claim 1 is directed to an apparatus comprising a processor and a memory. An apparatus is a statutory category for patentability. Claim 12 is directed to a method, or process. A process is a statutory category for patentability. Claim 13 is directed to a non-transitory computer-readable storage medium. The medium is interpreted as an article of manufacture, which is a statutory category for patentability. Further, the claim is in conformity with the Kappos Memorandum of 2010 regarding medium claims, as it includes the phrase “non-transitory.”
Per Step 2A, Prong 1 of the analysis, the examiner now determines if the claims recite an abstract idea. The claims recite “determining whether or not content used in a metaverse space is similar to at least one of a plurality of NFT-ized contents and issuing a warning related to the content used in the metaverse space in a case where the content is determined to be similar to at the least one of the plurality of NFT-ized contents.” The claims recite an abstract idea, namely “certain methods of organizing human activity,” specifically “fundamental economic practices, legal obligations.” The claims recite the identification of a similarity between content in a virtual space such as the metaverse and NFT-ized content and the subsequent issuing of a warning. Entities that manage digital and physical intellectual property rights routinely conduct such enforcement in areas ranging from music to art to books to digital creations to other such media. Comparing created registered works to those being made public in various communication means and then taking action such as issuing a warning is considered part of standard DRM enforcement. Therefore, the claims are determined to recite an abstract idea, namely “certain methods of organizing human activity,” specifically “fundamental economic practices, legal obligations.” The clams secondarily recite a mental process. A human operator with access to the metaverse or other virtual space could identify similarities between content in a virtual space and NFT-ized content and subsequently initiate issuing of a warning or other action. This could all be done as part of analysis of the content and then making a judgment or decision. Comparing registered works to those being made public in various communication means and then taking action such as issuing a warning is considered part of standard DRM enforcement. Therefore, the claims are secondarily directed to an abstract idea, namely a mental process.
Per Step 2A, Prong 2 of the analysis, the examiner must now consider if the claims, either individually or as a whole ordered combination, integrate the abstract idea into a practical application. The additional elements in the claims include “an apparatus comprising at least one memory…at least one processor,” and “a non-transitory computer-readable storage medium.” However, these elements are considered generic recitations of technical elements. These components are recited at a high level of generality and are not directed to a particular machine or transformation (see MPEP 2106.05 (b) and (c)). The components are being used as tools to automate the abstract idea. Therefore, these additional elements are not considered an integrating of the abstract idea into a practical application. The additional elements also include contents being “NFT-ized.” However, the claims only describe the contents as BEING NFT-ized. There is no active step of converting content into an NFT. Further, any use of such conversion on a high level would be considered recited at a high level of generality and generic recitation of a technical element, and the equivalent of “apply it,” or using a computer as a tool to automate the abstract idea (see MPEP 2106.05 (f)). Further, as written, the additional element could be considered non-functional descriptive language, as the content is only described as being “NFT-ized.” Therefore, this additional element is not considered to integrate the abstract idea into a practical application.
Per Step 2B of the analysis, the examiner must now consider if the claims, either individually or as a whole ordered combination, include limitations that are “significantly more” than the abstract idea because the claims include one or more of an improvement to another technology, and improvement to the technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. This would include elements that are more than what is considered to be “well-understood, routine, and conventional” in the related arts. The additional elements in the claims include “an apparatus comprising at least one memory…at least one processor,” and “a non-transitory computer-readable storage medium.” However, these elements are considered generic recitations of technical elements. These components are recited at a high level of generality and are not directed to a particular machine or transformation (see MPEP 2106.05 (b) and (c)). The components are being used as tools to automate the abstract idea. Therefore, these additional elements are not considered significantly more than the abstract idea itself. The additional elements also include contents being “NFT-ized.” However, the claims only describe the contents as BEING NFT-ized. There is no active step of converting content into an NFT. Further, any use of such conversion on a high level would be considered recited at a high level of generality and generic recitation of a technical element, and the equivalent of “apply it,” or using a computer as a tool to automate the abstract idea (see MPEP 2106.05 (f)). Further, as written, the additional element could be considered non-functional descriptive language, as the content is only described as being “NFT-ized.” Therefore, this additional element is not considered significantly more than the abstract idea itself.
When considered as an ordered combination, the examiner sees only the logical steps necessary to carry out the abstract idea, namely the identification of a similarity between content in a virtual space such as the metaverse and NFT-ized content and the subsequent issuing of a warning. The examiner does not see anything in the combination of elements that would be sufficient to be considered “significantly more" than what is well-understood and conventional in the computer and related arts. So, the consideration of the ordered combination does not change the status of the claims as "not having significantly more than the abstract idea itself."
When considering the dependent claims, claim 2 is considered part of the abstract idea. Claim 3 is considered part of the abstract idea as “detecting a download” recites no technology and is very broad, and therefore detecting could be just looking at data from a log. Claim 4 is considered part of the abstract idea, as “detecting a report” could be done as part of the organization of human activity or mental process. Claim 5 is considered part of the abstract idea, and the notification, even if it was recited as being done electronically over a network, which it is not, would still be considered “receiving, processing, and storage of data,” which is listed in the MPEP 2106.05 (d) (II) (iii-iv) as an example of conventional computer functioning (see “electronic recordkeeping, citing Alice Corp., “storing and retrieving information in a memory,” citing Versata Dev Grp v SAP and OIP Techs v Amazon.com). Claims 6-11 are considered part of the abstract idea, as these claims are recited very broadly and “restricting” or “suspending,” absent further detail, is considered part of a fundamental economic principle or a legal interaction.
Therefore, claims 1-13 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. Vs. CLS Bank International et al., 2014 (please reference link to updated publicly available Alice memo at http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf) and more recently https://www.federalregister.gov/articles/2014/12/16/2014-29414/2014-interim-guidance-on-patent-subject-matter-eligibility.
Claim Rejections - 35 USC § 103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 12, and 13 are rejected under 35 USC 103 as being unpatentable over Kim, Korean Application 20210194591 A, filed on 12/31/2021. In view of Il, et al., Korean Application #KR 20240065700 A, filed on 11/07/2022 (copies of both translations of these publications have been provided with this Office Action).
Regarding Claims 1, 12, and 13, Kim teaches:
An NFT content similarity determination apparatus comprising: at least one memory storing a set of instructions; and at least one processor configured to execute the set of instructions to:
determine whether or not content used in a digital space is similar to at least one of a plurality of NFT (Non-Fungible Tokens)-ized contents (see at least Abstract, paragraph labeled “Technical Field,” page 3 “And when it is determined that an image having a degree of similarity greater than or equal to the preset reference similarity to the user NFT content exists in any document existing in the intellectual property database 200 as a result of the determination in step (c), the tag setting unit 50 of the management server 10 (d) of giving a similar caution tag to the user NFT content is performed,” page 4 “Specifically, in the case of step (e), the content comparison unit 40 of the management server 10 uploads the intellectual property property data included in the document in which the image with the reference similarity or higher exists through the property comparison algorithm input in advance to the database 20 ) by comparing it with the unique attribute data of the user NTF content stored in the ), it is determined whether the user NTF content is in conflict/falsification.”
issue a warning related to the content used in the digital space in a case where the content is determined to be similar to at the least one of the plurality of the NFT-ized contents (see a warning issued such as a tag placed on the NFT as a caution warning or an alarm is sent to the user on at least page 3 “The tag setting unit 50 assigns or deletes a similar caution tag or a conflicting/counterfeit tag to the user NFT content according to the result of determining whether the user NFT content is in conflict/counterfeit by the content comparison unit 40 described above.”, “And when it is determined that an image having a degree of similarity greater than or equal to the preset reference similarity to the user NFT content exists in any document existing in the intellectual property database 200 as a result of the determination in step (c), the tag setting unit 50 of the management server 10 (d) of giving a similar caution tag to the user NFT content is performed. In this case, the communication unit 30 may transmit an alarm to the user terminal 5 informing that a similar caution tag is attached to the corresponding NFT content.”
Kim, however, does not appear to specify:
a metaverse space
Il teaches:
a metaverse space (see Abstract, Figure 1, and Claim 1 in which the NFT’s licensed are in the metaverse space)
It would be obvious to one of ordinary skill in the art to combine Il with Kim because Kim already teaches using NFT’s in a digital/virtual space but does not specify the metaverse, and using the teachings of Kim in the Metaverse would allow for identification and issuing of warnings in an environment which can include a multitude of geographically diverse users and by its nature a less easy environment to naturally identify owners of content, and therefore would allow for better identification of illegal use and better DRM management.
Regarding Claim 2, the combination of Kim and Il teaches:
the NFT content similarity determination apparatus according to claim 1
Kim further teaches:
detect a predetermined action by a user with respect to the content in the metaverse space (see page 3 “In the case of this process, the user NFT content directly uploaded by the user through the user terminal 5 owned by the user may be stored in the upload database 20, or the communication unit 30 of the management server 10 This may be accomplished by directly connecting to the operation server 100 of an online NFT market where user NFT contents designated by the user exist, and storing the corresponding user NFT contents in the upload database 20 .That is, in the former case, the determination of whether conflicting / counterfeiting can be made piecemeal through individual upload of user NFT contents by the user. Since NFT contents can be stored in the upload database 20, real-time conflict/counterfeiting determination and monitoring can be made.”)
Regarding Claim 3, the combination of Kim and Il teaches:
the NFT content similarity determination apparatus according to claim 2
Kim further teaches:
execute the set of instructions to detect an upload of the content by the user (see page 3 “In the case of this process, the user NFT content directly uploaded by the user through the user terminal 5 owned by the user may be stored in the upload database 20, or the communication unit 30 of the management server 10 This may be accomplished by directly connecting to the operation server 100 of an online NFT market where user NFT contents designated by the user exist, and storing the corresponding user NFT contents in the upload database 20 .That is, in the former case, the determination of whether conflicting / counterfeiting can be made piecemeal through individual upload of user NFT contents by the user. Since NFT contents can be stored in the upload database 20, real-time conflict/counterfeiting determination and monitoring can be made.”)
Regarding Claim 4, the combination of Kim and Il teaches:
the NFT content similarity determination apparatus according to claim 2
Kim further teaches:
execute the set of instructions to detect a report indicating that the content used in the metaverse space is illegal (see page 3 in which the comparison unit reports to the tag setting unit or other components that the NFT content is being used illegally:
The content comparison unit 40 compares and determines images included in documents existing in the intellectual property database with the user NFT content stored in the upload database 20 through a pre-input image comparison algorithm.
In addition, the content comparison unit 40 compares and determines the IPR attribute data included in a document having an image having a reference similarity or higher with the inherent attribute data of the user NFT content stored in the upload database 20 through a pre-input attribute comparison algorithm. Thus, it is possible to determine whether the user's NFT content is in conflict/falsification.
The tag setting unit 50 assigns or deletes a similar caution tag or a conflicting/counterfeit tag to the user NFT content according to the result of determining whether the user NFT content is in conflict/counterfeit by the content comparison unit 40 described above. .
And when it is determined that an image having a degree of similarity greater than or equal to the preset reference similarity to the user NFT content exists in any document existing in the intellectual property database 200 as a result of the determination in step (c), the tag setting unit 50 of the management server 10 (d) of giving a similar caution tag to the user NFT content is performed.)
Regarding Claim 11, the combination of Kim and Il teaches:
the NFT content similarity determination apparatus according to claim 1
Kim further teaches:
determines whether or not the content used in the metaverse space is similar to at the least one of the plurality of the NFT-ized contents by using a comparison algorithm (see Abstract, see also page 3:
(“The content comparison unit 40 compares and determines images included in documents existing in the intellectual property database with the user NFT content stored in the upload database 20 through a pre-input image comparison algorithm.
In addition, the content comparison unit 40 compares and determines the IPR attribute data included in a document having an image having a reference similarity or higher with the inherent attribute data of the user NFT content stored in the upload database 20 through a pre-input attribute comparison algorithm. Thus, it is possible to determine whether the user's NFT content is in conflict/falsification.
Specifically, in the case of step (e), the content comparison unit 40 of the management server 10 uploads the intellectual property property data included in the document in which the image with the reference similarity or higher exists through the property comparison algorithm input in advance to the database 20 ) by comparing it with the unique attribute data of the user NTF content stored in the ), it is determined whether the user NTF content is in conflict/falsification.”)
Kim and Il, however, does not appear to specify:
using a learning model
Kim does, however, teach use of a comparison algorithm to detect NFT illegal use. Further, it is known to one of ordinary skill in the computer arts and it is considered an obvious variant that the use of a comparison algorithm is very often a model or learning model.
Therefore, it would be obvious to one of ordinary skill in the art to combine using a learning model with Kim and Il because Kim already teaches suing a comparison algorithm and a learning model would be able to increase accuracy over time as it learns from multiple data inputs.
Claims 6-10 are rejected under 35 USC 103 as being unpatentable over Kim, Korean Application 20210194591 A, filed on 12/31/2021. In view of Il, et al., Korean Application #KR 20240065700 A, filed on 11/07/2022 and in further view of Il, et al., Korean Application #KR 20240164004 A1, filed on 11/18/2024 (hereby Sung Il). (copy of translation of this publication has been provided with this Office Action).
Regarding Claim 6-9, Kim and Il teaches:
the NFT content similarity determination apparatus according to claim 1, 2, 3,4
Kim and Il, however, does not appear to specify:
restricts a user of the content that has been warned from interfering with other users active in the metaverse space
Sung Il teaches:
restricts a user of the content that has been warned from interfering with other users active in the metaverse space (see page 5 “The copyright infringement judgment server (600) may be configured to judge copyright infringement of a metaverse platform user terminal based on a media file copyright infringement report through a blockchain ledger, and to request the metaverse platform user to stop using the metaverse platform based on the judgment result. The metaverse platform server (700) may be configured to suspend the use of the metaverse platform by a metaverse platform user upon a request for suspension from a copyright infringement judgment server.”)
It would be obvious to one of ordinary skill in the art to combine Sung Il with Kim because Kim and Il already teach enforcement for illegal NFT use by such as administering warnings and alarms and deleting content, and restricting a user by such as suspending their use of the metaverse or NFT use would add a layer of caution to a user deciding whether to use content illegally by risking a greater consequence.
Regarding Claim 10, the combination of Kim, Il, and Sung Il teaches:
the NFT content similarity determination apparatus according to claim 6
Sung Il further teaches:
suspend an account of the user of the content that has been warned (see page 5 “The copyright infringement judgment server (600) may be configured to judge copyright infringement of a metaverse platform user terminal based on a media file copyright infringement report through a blockchain ledger, and to request the metaverse platform user to stop using the metaverse platform based on the judgment result. The metaverse platform server (700) may be configured to suspend the use of the metaverse platform by a metaverse platform user upon a request for suspension from a copyright infringement judgment server.”)
It would be obvious to one of ordinary skill in the art to combine Sung Il with Kim because Kim and Il already teach enforcement for illegal NFT use by such as administering warnings and alarms and deleting content, and restricting a user by such as suspending their use of the metaverse or NFT use would add a layer of caution to a user deciding whether to use content illegally by risking a greater consequence.
Claim 5 is rejected under 35 USC 103 as being unpatentable over Kim, Korean Application 20210194591 A, filed on 12/31/2021. In view of Il, et al., Korean Application #KR 20240065700 A, filed on 11/07/2022 (copies of both translations have been provided with this Office Action) and in further view of Official Notice.
Regarding Claim 5, the combination of Kin and Il teaches:
the NFT content similarity determination apparatus according to claim 4
Kim and Il, however, does not appear to specify:
notifies, in a case where the determination is performed in response to the detection of the report indicating that the content used in the metaverse space is illegal, a user who has reported that the content used in the metaverse space is illegal of a determination result
The examiner, however, takes Official Notice that it is old and well known in the computer and law enforcement arts to notify a source or informant of the result of a determination or investigation. Reports and results from government enforcement agencies and other such entities are commonly shared with informants after initial reporting by the informant or other party.
Therefore, it would be obvious to one of ordinary skill in the art to combine notifies, in a case where the determination is performed in response to the detection of the report indicating that the content used in the metaverse space is illegal, a user who has reported that the content used in the metaverse space is illegal of a determination result
with Kim and II because Kim and Il already teach enforcement for illegal NFT use in settings in which there are multiple users and members, such as in the metaverse, and it is very likely that a user could identify illegal use of an NFT, and allowing for a reporting and subsequent notification mechanism for users to report illegal use would lead to better enforcement.
**The examiner notes that, as written, the limitation is given little patentable weight because it is a conditional limitation which would only occur in a case in which a determination had a certain outcome.**
Conclusion
The following prior art references were not relied upon in this Office Action but are considered pertinent to the applicant’s invention:
Nandwani, Saurabh, and David Alfred Ostrowski. "Utilizing nft technology and generative ai for deep fake detection and media authentication." 2024 Conference on AI, Science, Engineering, and Technology (AIxSET). IEEE, 2024. (Year: 2024)
Kim, Hanna, et al. "Drainclog: Detecting rogue accounts with illegally-obtained nfts using classifiers learned on graphs." arXiv preprint arXiv:2301.13577 (2023). (Year: 2023)
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to Luis A. Brown whose telephone number is 571.270.1394. The Examiner can normally be reached on M-F 9am-4:30pm EST. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, JESSICA LEMIEUX can be reached at 571.270.3435.
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/LUIS A BROWN/Primary Examiner, Art Unit 3626
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