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 .
Claims 1-5 and 7-11 have been examined.
Claim Objections
Claims 7-11 are objected to because of the following informalities: In the eighth line of claim 7, “both between said virtual goods property rights and said real-world asset” should be “both said virtual goods property rights and said real-world asset”. Appropriate correction is required.
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 1-5 and 7-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
First, it is determined whether the claims are directed to a statutory category of invention under Step 1 of the Alice/Mayo test. See MPEP 2106.03 (II). In the instant case, claims 1-5 are directed to a system comprising an image capture device and at least one process, etc., and therefore fall within the statutory category of machine. Claims 7-11 are directed to a method, and therefore fall within the statutory category of process. Therefore, claims 1-5 and 7-12 are directed to statutory subject matter under Step 1 of the Alice/Mayo test. (Step 1: YES).
The claims are then analyzed to determine whether the claims are directed to a judicial exception. See MPEP 2106.04. The claims are analyzed to evaluate whether they recite a judicial exception (Step 2A, Prong One) as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Step 2A, Prong Two). See MPEP 2106.04.
Next, under Step 2B of the Alice/Mayo test, the claims are analyzed to determine whether there are additional claim limitations that individually, or as an ordered combination, ensure that the claims amount to significantly more than the abstract idea. See MPEP 2106.05.
Under Step 2A, Prong One, claim 1 is directed to an abstract idea, specifically to commercial interactions, under the category of certain methods of organizing human activity. Parallel method claim 7 is directed to the same abstract idea, as are the respective dependents of the two independent claims. (Step 2A, Prong One: YES)
Claim 1 recites the elements set forth below, with elements involving technology, rather than commercial interactions, bolded:
A system comprising:
a display;
a user interface;
an image capture device;
at least one processor and memory configured to permit accessing of virtual goods object in a 3D environment;
said at least one processor and memory associating said virtual goods object owned by a user with property rights to a real-world asset, item, offer, or object;
said at least one processor and memory further comprising a software module configured to obtain property rights in said virtual goods object;
said software module further configured to connect said property rights in said virtual goods object with property rights in the real-world asset, item, offer, or object to create a bundle of property rights conferring direct ownership of both said virtual goods property rights and said real-world asset, item, offer, or object property rights;
said software module further configured to create a smart contract containing the property rights in said virtual goods object and the property rights in said real-world asset, item, offer, or object;
said software module storing the smart contract within a blockchain;
said smart contract configured for selection, purchase, and acquisition conferring upon the user any of the property rights within said bundle of said property rights; and
said software module further configured to utilize the smart contract to transfer or exchange ownership of said property rights in said virtual goods object and said real-world asset, item, offer or object in a single transaction where the transfer of ownership permits the user to own, make, print, fabricate, and/or further exchange said virtual goods object and said real-world asset, item, offer, or object.
Applying Step 2A, Prong Two, claim 1 does not recite any of the specific limitations which are indicative of integration into a practical application, and does not otherwise apply or use the judicial exception in some other meaningful way beyond generally linking the judicial exception to a particular technological environment. Technological items, such as a processor and image capture device, are recited, but at a high level of generality, and for the purpose of implementing commercial interactions. This also applies to parallel independent claim 7, and the claims depending from claims 1 and 7. (Step 2A, Prong Two: NO)
Under Step 2B, considerations overlapping those of Step 2A, Prong Two are applied, in this case with the same conclusion. It is further considered whether the claims have specific limitations other than what is well-understood, routine, and conventional in the field. Regarding the recited display and image capture device, Schockaert et al. (U.S. Patent Application Publication 2018/0067197) discloses (paragraph 76, emphasis added), “The computer system suitably comprises a processor coupled (where appropriate via DACs and ADCs, or other interfaces) to RAM, ROM, storage devices, image capture and/or image capture devices, display driver and display devices, data communication and other peripherals, as is well known to persons skilled in the art; therefore, these will not be illustrated or discussed further.” Regarding the recited user interface, Gortler et al. (U.S. Patent Application Publication 2017/0287230) discloses (paragraph 39, emphasis added), “User interfaces 300, e.g., graphical user interfaces (GUI), touch-sensitive screens, and the like, provide a vehicle for human interaction, with a machine, e.g., the processing device 100, in which the human user provides input to direct the machine’s actions while the machine provides output and other feedback to the user for use in future input. User interfaces 300 are well known to the art and will not be described in detail except in connection with the computer graphics system of the present invention. In the current context, in some embodiments, the user interface enables users to manipulate the location and orientation of objects in a 3D scene in 3D space.”
Regarding the processor and memory, Avidan et al. (U.S. Patent Application Publication 2017/0193592) discloses (paragraph 25, emphasis added), “Although not illustrated, it should be appreciated that the ecommerce server 110, the merchant computer 120, and the merchant computer 130 each include conventional components, such as a processor and a memory medium storing computer-readable instructions that are executable by the processor to perform various operations including those described herein.” Regarding the software module, Zhou (U.S. Patent Application Publication 2017/0269556) discloses (paragraph 70, emphasis added), “In another aspect, it is well-known that various software modules or software units can be inherently stored in the non-transitory program storage medium and executed by the processor(s).” Regarding the smart contract, Bayne (U.S. Patent Application Publication 2021/0090166) discloses (paragraph 27, emphasis added), “A smart contract is a digital contract that is run in a blockchain ecosystem (e.g., Ethereum virtual machine), that is coded so that its terms are self-executing when specified conditions occur. Smart contracts are well known by those skilled in the art, and not discussed in further detail herein.” Regarding blockchain, Chan et al. (U.S. Patent Application Publication 2018/0068130) discloses (paragraph 33, emphasis added), “Conventional blockchain ledger architectures enable the public to review the content of the ledgers and verify ownership details. The decentralized nature of conventional blockchain ledgers enables multiple distributed networks to verify the contents of a single ledger. The resulting redundancy may render conventional blockchain ledger architectures more robust than centralized server systems, and effectively eliminates the falsification of ledger data by malicious parties.” Hence, the various technological elements of claim 1 require only the use of well-understood, routine, and conventional technology. The limitations of claim 1, whether considered separately or in combination with each other, do not raise the claimed system to significantly more than an abstract idea. (Step 2B: NO)
Claim 2, which depends from claim 1, recites that the 3D environment accessed by said at least one processor and memory is characterized as augmented reality, virtual reality, 3D world, 3D environment, 3D browser, 3D viewer, and/or 3D application. Zhu (U.S. Patent Application Publication 2018/0061103) discloses (paragraph 4, emphasis added), “Conventional systems for Virtual Reality (VR) and/or Augmented Reality (AR) typically have a conventional arrangement that includes a conventional head-mounted display (HMD) device mounted to a user’s head.” Hence, implementing the system as recited in claim 2 would require only the use of well-understood, routine, and conventional technology. The limitation of claim 2, whether considered separately or in combination with the limitations of claim 1, does not raise the claimed system to significantly more than an abstract idea.
Claim 3, which depends from claim 1, recites that the virtual goods object is a 2D or 3D object rendered, displayed, and/or interacted with by a user in a 3D environment accessed by one or more processors. In view of Gortler’s disclosure that user interfaces “are well known to the art and will not be described in detail”, and Gortler’s teaching, “In the current context, in some embodiments, the user interface enables users to manipulate the location and orientation of objects in a 3D scene in 3D space” (above, quoted with regard to claim 1), no further evidence may be needed. Nonetheless, Examiner notes that Marti et al. (U.S. Patent Application Publication 2011/0285622) discloses (paragraph 32, emphasis added), “A rendering module 314 takes the virtual camera position data used to display the 3D content on a display 316 of the device. The rendered content may be 3D (computer-generated or modeled based on a 3D scan of a physical object) or it may be 2D (more typical conventional content at the time of the invention). In either case, however, the content is rendered in a 3D or virtual environment.” Hence, implementing the system as recited in claim 3 would require only the use of well-understood, routine, and conventional technology. The limitation of claim 3, whether considered separately or in combination with the limitations of claim 1, does not raise the claimed system to significantly more than an abstract idea.
Claims 4 and 5, which both depend from claim 1, are concerned with performing commercial interactions, without reciting any technology not already recited in claim 1. Hence, the limitations of claim 4 and of claim 5, whether considered separately or in combination with the limitations of claim 1, do not raise the claimed systems of claims 4 or 5 to significantly more than an abstract idea.
Independent claim 7 is a method claim parallel to system claim 1, and does not raise the claimed method to significantly more than an abstract idea for the reasons set forth above with regard to claim 1. In fact, several of the prior art references applied to claim 1 are not needed, since claim 7 does not recite use of a processor, a memory, a display, a user interface, or an image capture device.
Claim 8, which depends from claim 7, is parallel to claim 2, and therefore shown by Zhu (U.S. Patent Application Publication 2018/0061103) to require only the use of well-understood, routine, and conventional technology. The limitation of claim 8, whether considered separately or in combination with the limitations of claim 7, does not raise the claimed system to significantly more than an abstract idea.
Claim 9, which depends from claim 7, is parallel to claim 3, except for not even including “by one or more processors”, and therefore shown by Gortler et al. (U.S. Patent Application Publication 2017/0287230) and optionally by Marti et al. (U.S. Patent Application Publication 2011/0285622) to require only the use of well-understood, routine, and conventional technology. Hence, the limitation of claim 9, whether considered separately or in combination with the limitations of claim 7, does not raise the claimed system to significantly more than an abstract idea.
Claim 10, which depends from claim 7, is similar to but broader than claim 4, reciting “effected by action of said smart contract” in place of “created by notation in an electronic ledger through action of said smart contract”. Claim 10 is directed to a commercial interaction, rather than to any technology not already recited in claim 7. Hence, the limitation of claim 10, whether considered separately or in combination with the limitations of claim 7, does not raise the claimed system to significantly more than an abstract idea.
Claim 11, which depends from claim 7, is parallel to claim 5, and does not recite any technology not already recited in claim 7. Hence, the limitation of claim 11, whether considered separately or in combination with the limitations of claim 7, does not raise the claimed system to significantly more than an abstract idea. (Step 2B for all of claims 1-5 and 7-11: NO)
Non-Obvious Subject Matter
Claims 1-5 are rejected under 35 U.S.C. 101, but recite non-obvious subject matter.
Claims 7-11 are rejected under 35 U.S.C. 101, and objected to for an informality, but recite non-obvious subject matter.
The following is a statement of reasons for the indication of non-obvious subject matter: The closest prior art of record, Cramer et al. (U.S. Patent Application Publication 2011/0225069), discloses a system (e.g., Abstract), comprising a display and a user interface; specifically, Cramer discloses in paragraph 27, with emphasis added: “FIG. 2 is an illustration of an exemplary user interface on a display showing a view of augmented reality for a user”, with parallel language in paragraph 29. Cramer then discloses (paragraph 55, emphasis added): “FIG. 2 is an illustration of an exemplary 200 user interface on a display showing an augmented reality view 202 for a user, in accordance with one embodiment of the present invention.” Cramer further discloses an image capture device, a camera qualifying as such, (paragraph 38, emphasis added), “For instance, one particular augmented reality view may be associated with the live camera view of a mobile device corresponding to user. As such, the user is presented with an individualized view of augmented reality through the live camera view.” Cramer further discloses (paragraph 55, emphasis added), “The real, live view 204 may be from a camera of a mobile device”.
Cramer discloses at least one processor and memory configured to permit operations (paragraph 35, emphasis added), “In one embodiment, the computer system includes a processor coupled to a bus and memory storage coupled to the bus. The memory storage can be volatile or non-volatile, and can include removable storage media. Cramer then discloses (paragraph 44, emphasis added), “For instance, the term ‘smart marker’ is used herein to represent information that is available through the augmented reality network. A smart marker enables the display and management of information in digital space that is overlaid on real-world locations. In particular, a smart marker is layered over a particular real view, to form, in part, a corresponding augmented reality view. For example, the smart marker may appear as a digital representation (e.g., icon, three dimensional [3D] object, image, etc.) within a corresponding augmented reality at user specified coordinates in the real world.” Thus, as a three dimensional object requires a 3D environment, Cramer discloses that the smart marker can be accessed in a 3D environment.
Cramer further discloses (paragraph 101, emphasis added), “For instance, the message may indicate that a smart marker is placed within the user’s augmented reality. Access to the good or service is provided through the smart marker. There may be further information indicating whether the smart marker is associated with a specific location in augmented reality, or whether it is location neutral.” Cramer then discloses (paragraph 103, emphasis added), “In the case of augmented reality, a smart marker is placed into a corresponding augmented reality view as a representation of the good or service. As shown in FIG. 4, a ‘happy face’ is a smart marker 410 representing a good or service that has been purchased and is available for access. Using the pizza example provided above, the smart marker 410 may indicate a pizza business from which the smart marker 410, as a coupon, can be redeemed for an actual pizza.” Thus, the smart marker of Cramer can be used as a coupon, and redeemed for an actual pizza, a form of real-world asset, meaning that property rights in the smart marker, as a virtual goods object, are transferred or exchanged for ownership of a real-world asset, and hence, that property rights in the smart marker, as a virtual goods object, are connected with property rights in a real-world asset, item, offer or object. Cramer does not expressly disclose the smart marker/virtual goods object as being owned by a user, but Mahajan et al. (U.S. Patent Application Publication 2013/0004932) teaches a user/player as being the owner of a virtual goods object (paragraph 207, emphasis added), “The changing of the property of the virtual item may be a result of an in-game action of a player (e.g., the owner of the virtual item) with respect to the virtual item.” Further, Mahajan teaches in paragraph 207, “Thus, the game networking system 120b may communicate with one or more devices integrated into the real-world item to configure the real-world item to reflect changes to a virtual item as they occur within a computer-implemented game.” Mahajan also teaches (paragraph 181, emphasis added), “The item association module may then reflect the trading of the real-world items with respect to the virtual items to which they correspond. For example, the item association module may exchange a first virtual item of a player character of the first user with a second virtual item of a player character of the second user, where the first virtual item corresponds to the first real-world item that was included in a real-world trade, and the second virtual item corresponds to the second real-world item that was included in a real-world trade.”
Cramer also discloses (paragraph 83, emphasis added), “The exchange 302 is able to facilitate the presentation of tangible goods or services for purchase. For instance, in the exchange 302 a seller displays a coupon good for the purchase of large pizza at a pizza establishment (e.g. pizza chain). A buyer views the coupon, and purchases the item via the exchange 302. The coupon may be purchased as a gift that is delivered to a recipient, or for the use by the buyer.” As the buyer may purchase a coupon, and the smart marker may be used as a coupon (paragraph 103, quoted above), it would have been at least obvious to one of ordinary skill in the art of electronic commerce on the date of inventor’s earliest priority filing for property rights in a virtual goods object (the smart marker/coupon) to be obtained (by purchase, as disclosed).
Further based on Cramer and Mahajan, as quoted above, it would have been at least obvious to one of ordinary skill in the art of electronic commerce on the date of inventor’s earliest priority filing to connect transfer and exchange rights as property rights in each of said virtual goods object and said associated real-world asset, item, offer, or object, and transfer or exchange said property rights in said virtual goods object for ownership by said user of said real-world asset, item, offer, or object, for at least the obvious advantage, as in Mahajan, of implementing trades between different users owning properties, and redeeming smart markers as coupons for pizzas or other real-world assets, as per Cramer.
Cramer does not disclose creating a bundle of property rights conferring direct ownership of both the virtual goods property rights and the real-world asset, item, offer, or object property rights. However, Sprague (U.S. Patent Application Publication 2016/0078574) teaches a bundle of such property rights, implying creation of the bundle (paragraph 15, emphasis added), “In certain aspects, control or management authority over an online ‘virtual property’ (VP), that represents a corresponding real-property parcel or estate, can be considered as a separate title or right that is part of an owner’s bundle of rights.” See also paragraphs 16 and 24 of Sprague.
Cramer does not disclose a software module creating a smart contract containing the property rights in said virtual goods object and the property rights in said real-world asset, item, offer, or object, and store the smart contract within a blockchain. However, Robertson et al. (U.S. Patent Application Publication 2020/0294011) teaches a smart contract stored on a blockchain (paragraph 57, emphasis added), “Smart contract 305 may be stored on the blockchain 303.” Robertson further teaches the smart contract implementing transfer of assets (paragraph 59, emphasis added), “In one embodiment, asset 307 may be a real-world asset that is represented on a blockchain through a cryptographic token or a smart contract. . . . In one embodiment, ownership of the real-world asset may be tied to a non-fungible token or NFT so that the owner of the NFT is entitled to ownership of the real-world asset. For example, a holder of the NFT may redeem the NFT to a third party holding the real-world asset in order to receive the real-world asset.”
Gill et al. (U.S. Patent Application Publication 2014/0236775) teaches ownership of associated real-world and virtual goods property, with associated property rights. Specifically, Gill teaches (paragraph 28, emphasis added):
“When the virtual environment server 630 receives an indication of a purchased physical product from retail server 620, the virtual environment server 630 can grant the corresponding user account ownership of a virtual version of the purchased physical product. Granting a user account ownership of a virtual version of the purchased physical product can include one or more of permitting an avatar associated with the user account to wear or hold a virtual version of the purchased physical product, placing a virtual version of the purchased physical product on a listing of items owned by the user account, permitting the user to place an image of the purchased physical product on a profile image associated with the user account or any other similar privilege associated with a virtual version of the purchased physical product in the virtual environment.”
Gill also teaches an action of purchasing, and indications of the purchase being carried out being sent, including a file for a virtual version of a physical product, so as to transfer or exchange ownership of virtual goods and a real-world asset, item offer or object (paragraph 27, emphasis added), “In one example, a user of computing device 610 can use a web browser to access 651 retail server 620 to search for available products, to make purchases and the like. When a user makes a purchase, the retail server 620 can send 652 an indication of the purchased physical product. The indication of the purchased physical product can include an identification of the physical product, such as stock keeping unit (SKU) code, a file defining a rendition of a virtual version of the physical product, instructions for rendering a virtual version of the physical product, and other such information.”
Gill further teaches (paragraph 29, emphasis added), “When the user accesses 653 the virtual environment server 630 may have already received indications of one or more purchased physical products and granted ownership of virtual versions of the purchased physical products to the user’s account. The user would then have access to those virtual versions of the purchased physical products and be able to customize an avatar, a profile image and the like, of the user’s account in the virtual environment.”
However, although buying or selling property rights to multiple items in a single transaction is not novel, Cramer does not disclose doing so, and Mahajan, Sprague, Robinson, and Gill do not supply this deficiency, especially not in the context of a bundle of property rights conferring ownership in both virtual goods property rights and a real-world asset, item, offer, or object. Moreover, modifying the disclosure of Cramer by the teachings of four additional references and a fifth pertaining to transferring or exchanging ownership in multiple items in a single transaction would be grounds to argue against the obviousness of the combination.
The above statement is written with particular reference to claim 1, but is also applicable to claim 7, which is essentially parallel, although claim 7 is a method claim omitting some of the technical features recited in claim 1. These technical features are not the basis for a finding of non-obviousness.
Response to Arguments
Applicant’s arguments with respect to claims 1-5 and 7-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Although the matter is open to question, Examiner has, based upon the revised limitations of claims 1 and 7, and Applicant’s arguments in favor of non-obviousness, found that the greater weight is in favor of finding the instant claims non-obvious under 35 U.S.C. 103.
However, claims 1-5 and 7-11 are now rejected under 35 U.S.C. 101, based upon the statute and upon guidance regarding the application thereof to other applications posing comparable eligibility issues, the rejections being set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sprague (U.S. Patent Application Publication 2016/0078574) discloses virtual property management in an interactive geographic information system. Spangenberg et al. (U.S. Patent Application Publication 2020/0250780) disclose a decentralized autonomous evaluation engine for intellectual property assets.
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/NICHOLAS D ROSEN/ Primary Examiner, Art Unit 3689 February 3, 2026