Detailed Action
Continued Examination Under 37 CFR 1.114
A request for continued examination (RCE) under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 5, 2025 has been entered.
Acknowledgements
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the RCE filed on August 5, 2025.
Claims 2, 9, and 19-20 are cancelled.
Claims 1, 3-8, 10-18, and 21-24 are pending.
Claims 1, 3-8, 10-18, and 21-24 are examined.
This Office Action is given Paper No. 20251113 for references purposes only.
Claim Rejections - 35 USC § 112, 1st paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-8, 10-18, and 21-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “destroying the portion of the artist tokens comprises assigning, to the portion of the artist tokens, a public key associated with a wallet location that cannot be accessed in order to transfer the portion of the artist tokens from the first digital wallet of the artist to the wallet location that cannot be accessed.” The specification discloses destroying a portion of the artist tokens based on one or more of the amount of cryptocurrency transferred from the second digital wallet (see specification [0005]). The specification also discloses adjusting values of artist tokens for each of the one or more artists based on a number of destroyed artist tokens (see specification [0006]).
The specification is silent regarding assigning, to a portion of the artist tokens, a public key associated with a wallet location that cannot be accessed. Because the specification does not disclose how to perform this limitation and one of ordinary skill in the art would not know how to assign, to a portion of the artist tokens, a public key associated with a wallet location that cannot be accessed, the claim is rejected under 112. Claims 14 and 21 are similarly rejected.
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, 3-8, 10-18, and 21-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 2A Prong 1: The claims recite an abstract idea of performing a cryptocurrency transaction on a blockchain, which is a certain method of organizing human activity (e.g. fundamental economic principles or practices including hedging, insurance, mitigating risk; commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations; managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions).
Claim 1, representative of claims 14 and 21, includes the following limitations:
Generating a desired number of artist tokens, wherein the artist tokens are a type of cryptocurrency comprising private and public keys;
Transferring an amount of cryptocurrency from a second digital wallet of the consumer to the first digital wallet of the artist, in exchange for one or more of artist tokens, artist songs, and artist merchandise;
Destroying a portion of the artist tokens based on the amount of cryptocurrency transferred from the second digital wallet, and a deduction percentage, wherein destroying comprises assigning, to the portion of artist tokens, a public key associated with a wallet location that cannot be accessed in order to transfer the portion of the artist tokens from the first digital wallet to the wallet location that cannot be accessed.
Step 2A Prong 2: The claim limitations recite the following additional elements that are beyond the judicial exception:
Transmitting the artist tokens to a first digital wallet via a network;
Recording the digital transaction;
Causing the digital transaction to be displayed at the consumer device;
A blockchain.
These additional elements are not indicative of integration into a practical application because:
They add insignificant extra-solution activity to the judicial exception. Note that “extra-solution activity” can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity can include both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process. An example of post-solution activity is an element that is not integrated into the claim as whole. See MPEP 2106.05(g).
They generally link the use of the judicial exception to a particular technological environment or field of use. See MPEP 2106.05(h).
Step 2B: The claim limitations do not recite additional elements, or an ordered combination of additional elements, that are sufficient to amount to significantly more than the judicial exception.
As discussed with respect to step 2A prong 2 above, the additional elements of “transmitting the artist tokens to a first digital wallet via a network”, “recording the digital transaction”, and “causing the digital transaction to be displayed at the consumer device” are extra solution activity that do not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is insignificant extra solution activity under step 2A should be re-evaluated at step 2B. The limitations “transmitting the artist tokens to a first digital wallet via a network”, “recording the digital transaction”, and “causing the digital transaction to be displayed at the consumer device” are re-evaluated to determine whether they constitute well-understood, routine, and conventional activity in the field. The “transmitting of data” is well-understood, routine, and conventional in the field. See Intellectual Ventures v. Symantec, 838 F.3d 1307, 1321 and MPEP 2106.05(d). The “recording of data” (i.e. storing of data) is well-understood, routine, and conventional in the field. See Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 and MPEP 2106.05(d). The “displaying of data” (i.e. presenting data) is well-understood, routine, and conventional in the field. See OIP Technologies, Inc. v. Amazon, Inc., 788 F.3d 1359, 1363. Thus, a conclusion that the limitations “transmitting the artist tokens to a first digital wallet via a network”, “recording the digital transaction”, and “causing the digital transaction to be displayed at the consumer device” are well-understood, routine, and conventional is supported under Berkheimer.
As discussed with respect to step 2A prong 2 above, the additional element of a “blockchain” generally links the use of the judicial exception to a particular technological environment or field of use, and does not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is mere instructions to apply an exception under step 2A should be re-evaluated at step 2B. Thus, the additional element of a “blockcahin” is re-evaluated to determine whether it constitutes significantly more. Examiner finds that the additional element of a “blockchain” is merely an attempt to limit the use of the abstract idea to a particular technological environment. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 and MPEP 2106.05(h). Additionally, a “blockchain” merely limits the claims to the computer field. See FairWarning v. Iatric Sys., 839 F.3d 1089, 1094-95 and MPEP 2106.05(h).
Therefore, when considering all the additional claim elements both individually and as an ordered combination, Examiner finds that the claim does not amount to significantly more than the exception.
The dependent claims fail to cure this deficiency and are rejected accordingly.
Claim 3 recites the different types of artist merchandise, which is merely describing data and further defining the abstract idea.
Claim 4 recites the artist produced songs are performed, produced, or composed by the artist, which is merely describing data and further defining the abstract idea.
Claim 5 recites storing the artist songs in a non-transitory memory, which is well-understood, routine, and conventional. See Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 and MPEP 2106.05(d).
Claim 6 recites receiving a subscription fee in the form of cryptocurrency, which is insignificant extra-solution activity (e.g. mere data gathering). See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, and MPEP 2106.05(g).
Claim 7 recites calculating a portion of the subscription fee, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 8 recites the deduction percentage is based on artist input, which is merely describing data and further defining the abstract idea.
Claim 10 recites the deduction percentage is a percentage of the cryptocurrency transferred, which is merely describing data and further defining the abstract idea.
Claim 11 recites purchasing a portion of the artist tokens based on a value of the tokens prior to destroying the tokens, which is insignificant extra-solution activity (e.g. mere data gathering). See Ultramercial, Inc. v. Hulu, 772 F.3d 709, 715.
Claim 12 recites assigning a rank to the artist tokens based on a rate of increase in a value of the artist tokens, which is insignificant extra-solution activity (e.g. mere data gathering). See Ultramercial, Inc. v. Hulu, 772 F.3d 709, 715.
Claim 13 recites generating a graph depicting changes in the value of the artist tokens, which is insignificant extra-solution activity (e.g. mere data gathering). See OIP Technologies, Inc. v. Amazon, Inc., 788 F.3d 1359, 1363.
Response to Arguments
101 arguments
Applicant argues that the claims are rooted in computer technology because they are an improvement to blockchain technology for the creation, management, transfer, and destruction of digital tokens. Applicant argues that the claims integrate the invention into a practical application.
Examiner disagrees. The claimed invention is directed to performing a cryptocurrency transaction on a blockchain, which is a certain method of organizing human activity. Applicant has not explained how the invention improves the creation of digital tokens since the claim only recites generating a desired number of artist tokens. Additionally, Applicant has not explained how the invention improves the management and transfer of digital tokens since the claim only recites transferring an amount of cryptocurrency from a second wallet to a first wallet. Furthermore, Applicant has not explained how the invention improves the destruction of digital tokens since the claim only recites assigning a public key associated with a wallet location that cannot be accessed (note the corresponding 112a rejection on this limitation). Finally, Applicant has not explained how the invention is integrated into a practical application.
Claim Interpretation
Applicant is reminded that functional recitation(s) using the word and/or phrases “for”, “adapted to”, or other functional language (e.g. see claims 7 and 23 which recite “to be transmitted”) have been considered but are given little patentable weight because they fail to add any structural limitations and are thereby regarded as intended use language. To be especially clear, all limitations have been considered. However, a recitation of the intended use of the claimed product must result in a structural difference between the claimed product and the prior art in order to patentably distinguish the claimed product from the prior art. If the prior art structure is capable of performing the intended use, then it reads on the claimed limitation. In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) ("The manner or method in which such a machine is to be utilized is not germane to the issue of patentability of the machine itself.”); In re Otto, 136 USPQ 458, 459 (CCPA 1963). See also MPEP §§ 2106 II (C.), 2114 and 2115. Unless expressly noted otherwise by Examiner, the claim interpretation principles in the paragraph apply to all examined claims currently pending.
Conclusion
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from Examiner should be directed to Chrystina Zelaskiewicz whose telephone number is 571.270.3940. Examiner can normally be reached on Monday-Friday, 9:30am-5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Neha Patel can be reached at 571-270-1492.
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/CHRYSTINA E ZELASKIEWICZ/Primary Examiner, Art Unit 3699