DETAILED ACTION
Acknowledgements
This Office Action is in reply to Applicant’s response filed 8/8/2025.
Claims 1, 2, 4, 6, 8, 9, 11, 13, 15, 16, 18, 20 are currently amended.
Claims 1-20 are currently pending.
Claims 1-20 have been examined.
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 .
Response to Amendment
In the August 2025 Claim Amendments and with respect to claims 1, 4, 8, 11, 15, 18, Applicant deleted words from the claim without showing appropriate markup reflecting the deletion. Specifically, in claims 1, 8, 15 Applicant shows “
37 C.F.R. §1.121 as discussed in MPEP §714 II. C. sets forth the manner of making claim amendments. In particular, 37 C.F.R. §1.121(c)(2) states “The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters.”
Because of the foregoing, the August 2025 Claim Amendments are a Non-Compliant Amendment. See MPEP §714 II. F.
Because this application is not in condition for allowance, because the error noted above is considered an error that would not otherwise prevent the subsequent examination of this application, and to show a good faith effort by the Examiner to advance prosecution, the Claim Amendments are being examined.
However, Applicants are given actual notice that should any future amendment be non-compliant because the amendment does not (for any reason) comply with 37 C.F.R. §1.121 (as discussed in MPEP §714), the amendment will be considered a non-compliant amendment and the Examiner will issue a “Notice of Non-Compliant Amendment (37 CFR 1.121)” See USPTO Form PTOL-324.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 1, 8, 15
Claim 1 recites, in relevant part:
receiving an acceptance of a transfer of the fractional share from the first user to the second user based on the transfer event trigger;
There is no antecedent basis for “the fractional share” and it is therefore unclear what is being referenced. For prior art purposes it is interpreted as referring to the “subset of fractional shares”.
Regarding claims 4, 6, 11, 13, 18, 20
These claims each recite “each owner with an interest in any fraction of the fractional non-fungible token”. There is no antecedent basis for “the fractional non-fungible token”, “any fraction”, or “each owner”. Furthermore, there is no definition given in the specification for what it means to have “an interest” in a fraction. It is unclear who is being referred to, what they own, or what a fraction is.
Regarding claims 2, 3, 5, 7, 9, 10, 12, 14, 16, 17, 19
These claims are indefinite by virtue of their dependence on claims 1, 8, or 15.
Claim Rejections - 35 U.S.C. § 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 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Each of claims 1-20 falls within one of the four statutory categories. Each of claims 1-7 falls within the category of process; each of claims 8-14 falls within the category of machine; and each of claims 15-20 is directed to a “computer-readable medium” and therefore falls within the category of manufacture.
Step 2A – Prong 1
The abstract idea is set forth or described by the following italicized limitations:
A processor-implemented method, the method comprising:
generating a non-fungible token, with a plurality of fractional shares, associated with a real-world entity, wherein ownership or authority over the non-fungible token at the generation is assigned to a first user with ownership or authority over a real-world entity corresponding to the non-fungible token, and wherein a plurality of parameters are associated with the non-fungible token, and wherein the plurality of parameters comprise a number of fractions, a transfer event trigger, transfer event rules;
determining a transfer event trigger has occurred for a subset of fractional shares of the plurality of fractional shares from the first user to a second user;
receiving an acceptance of a transfer of the fractional share from the first user to the second user based on the transfer event trigger;
generating a new fractional share to be part of the plurality of fractional shares by merging each fractional share in the subset, wherein the new fractional share comprises a same fractional amount of the non-fungible token as the subset;
transferring ownership of the new fractional share from a first on-chain wallet associated with the first user to a second on-chain wallet associated with the second user based on the plurality of parameters; and
destroying the subset.
The italicized limitations of “generating a […]… with a plurality of fractional shares…” is directed towards the abstract idea of fractionalizing ownership, which is a fundamental economic practice.
The italicized limitations of “determining a transfer event trigger has occurred for a subset of fractional shares…”, “generating a new fractional share to be part of the plurality of fractional shares by merging each fractional share in the subset…”, “transferring ownership of the new fractional share…”, and “destroying the subset” are directed towards merging and transacting with fractional shares, which is also a fundamental economic practice.
Step 2A – Prong 2
Claim 1 does not include additional elements (when considered individually, as an ordered combination, and/or within the claim as a whole) that are sufficient to integrate the abstract idea into a practical application. The additional elements are represented by the above non-italicized limitations.
The additional element “non-fungible token” is recited at a high level of generality and merely links the abstract idea to a blockchain environment. It requires that NFTs be used to represent ownership of the real-world entity. Therefore, this sole additional element does not integrate the abstract idea into a practical application.
Step 2B
Claim 1 does not include additional elements, when considered individually and as an ordered combination, that are sufficient to amount to significantly more than the abstract idea. The reasons for reaching this conclusion are substantially the same as the reasons given above in § Step 2A – Prong 2. For brevity only, those reasons are not repeated in this section.
Dependent Claims 2-7
Dependent claims 2-7 fail to cure this deficiency of independent claim 1 (set forth above) and are rejected accordingly. Particularly, claims 2-7 recite limitations that represent (in addition to the limitations already noted above) either the abstract idea or an additional element that merely limits the abstract idea to a particular technological environment.
Claim 2 recites:
The method of claim 1, further comprising: verifying the first user owns or has authority to generate the non-fungible token.
which merely adds a step that is part of the fundamental economic practice of fractionalizing ownership.
Claim 3 recites:
The method of claim 1, wherein the entity is selected from a group consisting of an organization, a piece of real estate, and a tangible item.
which is not given patentable weight.
Claim 4 recites:
The method of claim 1, wherein the event is a takeover event further comprising:
receiving an offer and a down payment in escrow from an offeror;
prompting each owner with an interest in any fraction of the fractional non-fungible token to vote as to whether to accept the offer;
in response to determining, based on the plurality of parameters, the offer is accepted:
executing a payment equal to a value of the down payment to each owner;
transferring ownership of each fraction of the fractional non-fungible token from each owner to the offeror, wherein the offeror becomes a sole owner of all fractions of the non-fungible token;
generating a non-fungible token from the fractional non-fungible token, wherein the generated non-fungible token assumes the plurality of parameters of the fractional non-fungible token; and
burning the fractional non-fungible token.
which adds the fundamental economic practice of selling an asset which has fractionalized ownership. The fractional non-fungible token, as before, is merely a general link to a blockchain environment.
Claim 5 recites:
The method of claim 4, further comprising: modifying the plurality of parameters associated with the generated non-fungible token based on selections made by the sole owner.
which is recited at a high level of generality and merely refines the abstract idea.
Claim 6 recites:
The method of claim 1, wherein the event is a fraction splitting event further comprising:
prompting each owner with an interest in any fraction of the fractional non-fungible token to vote as to whether to execute the fraction split; and
in response to determining, based on the plurality of parameters, to split each fraction of the fractional non-fungible token, executing the split based on the plurality of parameters.
which adds the fundamental economic practice of further fractionalizing the ownership. The fractional non-fungible token, as before, is merely a general link to a blockchain environment.
Claim 7 recites:
The method of claim 1, wherein the event is selected from a group consisting of a takeover event, an aggressive takeover event, a fraction splitting event, and a reverse fraction splitting event.
which is similar (broader) to claim 4 or claim 6.
Claims 8-20
Claims 8-14 and 15-20 contain language similar to claims 1-7, respectively, as discussed in the preceding paragraphs, and for reasons similar to those discussed above, claims 8-20 are also rejected under 35 U.S.C. § 101.
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.
The factual inquiries 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 1-3, 6-10, 13-17, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Khandelwal et al. (US 20250045850 A1) in view of “Stock Splits 101”.
Regarding claim 1
Khandelwal teaches:
A processor-implemented method, the method comprising: {Abstract “A system and method of enforceable and divisible tokenization of property.”}
generating a non-fungible token, with a plurality of fractional shares, associated with a real-world entity, wherein ownership or authority over the non-fungible token at the generation is assigned to a first user with ownership or authority over a real-world entity corresponding to the non-fungible token, and wherein a plurality of parameters are associated with the non-fungible token, and wherein the plurality of parameters comprise a number of fractions, a transfer event trigger, transfer event rules; {Abstract “The system and method include the minting [o]f validated [non-fungible token] and child [fractional shares] NFTs for a piece of property (intellectual or real) which may represent ownership of the piece of property. Legal contracts, voting smart contracts and/or payment smart contracts [plurality of parameters] may be included in the NFTs that define different ownership, voting or revenue agreements associated with the validated and child NFTs.”}
determining a transfer event trigger has occurred for a subset of fractional shares of the plurality of fractional shares from the first user to a second user; {[0088] “Child NFTs can either be minted and immediately be owned by the contracting party in the corresponding transaction or can be minted to the owner of the Validated NFT or 3rd party platform (in custody) and transferred to the ultimate owner/buyer.”}
Khandelwal does not explicitly teach determining an event trigger has occurred. However, Khandelwal teaches transferring child NFTs (fractional shares) to a contracting party, which implies an offer and an acceptance. The offer reads on transfer event trigger.
receiving an acceptance of a transfer of the fractional share from the first user to the second user based on the transfer event trigger; {[0088] “Child NFTs can either be minted and immediately be owned by the contracting party in the corresponding transaction or can be minted to the owner of the Validated NFT or 3rd party platform (in custody) and transferred to the ultimate owner/buyer.”}
Khandelwal does not explicitly teach receiving an acceptance of a transfer. However, Khandelwal teaches transferring child NFTs (fractional shares) to a contracting party, which implies an offer and an acceptance. The acceptance reads on receiving an acceptance.
transferring ownership of the new fractional share from a first on-chain wallet associated with the first user to a second on-chain wallet associated with the second user based on the plurality of parameters; and {[0088] “Child NFTs [..] can be minted to the owner of the Validated NFT or 3rd party platform (in custody) and transferred to the ultimate owner/buyer.” [0089] “The legal contract/document [plurality of parameters] can include, but not limited to, rights such as duration of the agreement, payment handling, and transferability.”}
Khandelwal does not teach, however Stock Splits 101 teaches:
generating a new fractional share to be part of the plurality of fractional shares by merging each fractional share in the subset, wherein the new fractional share comprises a same fractional amount of the non-fungible token as the subset; {page 2 “A stock split is a financial decision that results in a company’s stock being split into either a larger number of shares (regular or forward split) or a smaller number of shares (reverse split). […] For example, if you had 400 shares of a company and there was a 1-for-4 reverse split, your 400 shares would now be equal to 100 shares, and the price of each new share would be worth four times more.”}
destroying the subset. {page 2 “A stock split is a financial decision that results in a company’s stock being split into either a larger number of shares (regular or forward split) or a smaller number of shares (reverse split). […] For example, if you had 400 shares of a company and there was a 1-for-4 reverse split, your 400 shares would now be equal to 100 shares, and the price of each new share would be worth four times more.”}
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to add the share merging of Stock Splits 101 to the child NFT (fractional shares) system of Khandelwal to maintain some minimum price per child NFT (Stock Splits 101 page 3 “It is also sometimes done to meet the minimum price per
share required for a company to be listed on a stock exchange”).
Regarding claim 2
Khandelwal teaches:
The method of claim 1, further comprising: verifying the first user owns or has authority to generate the non-fungible token. {[0056] “Initially, as with the method of FIG. 2, an individual, such as the author or creator of the creative work uploads the creative work along with any supporting documents and the legal contract into the system. The input (which may also be seen as a submission) is received by the system (300). The legal contract may define ownership rights, voting rules, payment rules, etc., as discussed above. The system then validates the submission (302). In one embodiment, the system transmits the relevant creation information to the decentralized validation of intellectual property component to validate an originality or authenticity of the creative work. In one embodiment, this validation process may include receiving input from a decentralized network of certified validators who work to validate the authorship and ownership [owns or has authority to generate the non-fungible token] of the creation, and that it is the creator's unique creation, among other things.”}
Regarding claim 3
Khandelwal teaches:
The method of claim 1, wherein the entity is selected from a group consisting of an organization, a piece of real estate, and a tangible item. {Abstract “The system and method include the minting [o]f validated and child NFTs for a piece of property (intellectual or real) which may represent ownership of the piece of property.”}
The above limitation is not given patentable weight. The step from claim 1 is “generating a non-fungible token… associated with an entity…”. The type of entity does not affect, in any manipulative sense, the step of “generating a non-fungible token…”. However, it is taught by Khandelwal.
Regarding claim 6
Khandelwal teaches the event may be voting whether or not to amend a legal contract included in the validated NFT which defines different ownership, voting or revenue agreements associated with the validated and child NFTs. Khandelwal does not teach such event may be a fraction splitting event. However, “Stock Splits 101” teaches:
The method of claim 1, wherein the event is a fraction splitting event further comprising: {page 2 “A stock split is a financial decision that results in a company’s stock being split into either a larger number of shares (regular or forward split) or a smaller number of shares (reverse split).”}
prompting each owner with an interest in any fraction of the fractional non-fungible token to vote as to whether to execute the fraction split; and
in response to determining, based on the plurality of parameters, to split each fraction of the fractional non-fungible token, executing the split based on the plurality of parameters. {page 2 “Usually, splits must be voted on by the company’s board of directors and approved by its shareholders.”}
“Approved by its shareholders” implies a vote. Khandelwal teaches the legal contract (plurality of parameters) defining voting and ownership rights and therefore any event being executed based on the plurality of parameters is implied.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the stock split of “Stock Splits 101” as the contract amendment of Khandelwal because “A forward stock split allows a company to make its stock [fraction] more affordable for smaller investors, particularly when the price of the stock is very high.” (Stock Splits 101 page 2).
Regarding claim 7
Khandelwal in view of “Stock Splits 101” teaches:
The method of claim 1, wherein the event is selected from a group consisting of a takeover event, an aggressive takeover event, a fraction splitting event, and a reverse fraction splitting event.
See claim 6.
Regarding claims 8-10, 13-14, 15-17, 20
Claims 13-14 and 20 are substantially similar to claims 6-7, respectively, and are treated the same with respect to prior art rejections. Claims 8-10 and 15-17 are substantially similar to claims 1-3, respectively, and are treated the same with respect to prior art rejections.
Claims 4-5, 11-12, 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Khandelwal et al. (US 20250045850 A1) in view of “Stock Splits 101”, in view of “Advising Shareholders in Takeovers”, in view of Applicant Admitted Prior Art, and further in view of “Understanding Earnest Money”.
Regarding claim 4
Khandelwal in view of “Stock Splits 101” teaches the event may be voting whether or not to amend a legal contract included in the validated NFT which defines different ownership, voting or revenue agreements associated with the validated and child NFTs. Khandelwal in view of “Stock Splits 101” does not teach such event may be a takeover event. However, “Advising Shareholders in Takeovers” teaches:
The method of claim 1, wherein the event is a takeover event further comprising:
receiving an offer […] from an offeror {page 1 “a bidder makes a tender offer to acquire the firm”}
prompting each owner with an interest in any fraction of the fractional non-fungible token to vote as to whether to accept the offer;
in response to determining, based on the plurality of parameters, the offer is accepted:
transferring ownership of each fraction of the fractional non-fungible token from each owner to the offeror, wherein the offeror becomes a sole owner of all fractions of the non-fungible token; {page 1 “Given the board’s recommendation, each shareholder [owner] decides [vote] whether to accept or reject the offer. The takeover is approved if and only if the majority of target shareholders tender their shares [each fraction]”}
“Advising Shareholders in Takeovers” teaches receiving a bid to buy all shares (fractional ownership) and accepting or rejecting the offer based on a decision (implies a vote) by the majority of shareholders. The shares of “Advising Shareholders in Takeovers” are analogous to the child NFTs of Khandelwal since they both represent fractional ownership.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the takeover offer of “Advising Shareholders in Takeovers” as the contract amendment of Khandelwal because it would allow the owners to sell their fractional ownership.
Khandelwal in view of “Stock Splits 101” in view of “Advising Shareholders in Takeovers” does not teach, however Applicant Admitted Prior Art teaches:
generating a non-fungible token from the fractional non-fungible token, wherein the generated non-fungible token assumes the plurality of parameters of the fractional non-fungible token; and
burning the fractional non-fungible token.
An NFT is a piece of data on a blockchain. Applicant admitted prior art teaches that generating a new non-fungible token with the same parameters as the original, and then burning the original NFT is equivalent to merely transferring ownership of the original NFT, as taught by the combination of Khandelwal in view of “Advising Shareholders in Takeovers”, and it would have been obvious to make the substitution of equivalents.
Khandelwal in view of “Stock Splits 101” in view of “Advising Shareholders in Takeovers” in view of Applicant Admitted Prior Art does not teach, however “Understanding Earnest Money” teaches:
receiving […] a down payment in escrow from an offeror;
executing a payment in a value of the down payment to each owner; {page 1 “In most cases sellers will ask for a good faith deposit. It safeguards the interests of the seller and the buyer. It shows the seller you’re serious about buying the home, which can be reassuring to them if they agree to take the house off of the market while awaiting the appraisal and inspection results” page 2 “Typically, you pay earnest money to an escrow account”}
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to add the good faith deposit of “Understanding Earnest Money” to the method of Khandelwal in view of “Advising Shareholders in Takeovers” to safeguard the interests of the seller and buyer.
Regarding claim 5
Khandelwal in view of “Advising Shareholders in Takeovers” teaches:
The method of claim 4, further comprising: modifying the plurality of parameters associated with the generated non-fungible token based on selections made by the sole owner.
Khandelwal teaches legal contracts (plurality of parameters) may be included in the NFTs that define different ownership, voting or revenue agreements. It is therefore implied that this would be modified upon the change in ownership based on selections of the new owner.
Regarding claims 11-12, 18-19
Claims 11-12 and 18-19 are substantially similar to claims 4-5, respectively, and are treated the same with respect to prior art rejections.
Response to Arguments
Official Notice
Examiner notes that Applicant has not traversed Examiner’s taking of Official Notice in the previous Office Action and therefore the assertion that generating a new non-fungible token with the same parameters as the original, and then burning the original NFT is equivalent to merely transferring ownership of the original NFT is taken as Applicant Admitted Prior Art.
35 USC § 101
Applicant argues the independent claims, as currently amended, do not recite mental processes or mathematical concepts. However, the rejection, as updated, asserts that the claims are directed towards the abstract ideas of fractionalizing ownership, transacting with these fractions, and merging fractions, all of which are fundamental economic practices.
Applicant argues that any abstract idea is integrated into a practical application or provides significantly more because the field of non-fungible tokens is improved as by implementing fractional divisions of non-fungible tokens thereby allowing more ownership opportunities. However, there does not appear to be any technical improvement as it is merely using non-fungible tokens to represent fractional ownership. It is merely an implementation of fractionalized ownership using non-fungible tokens.
35 USC § 103
Applicant has made significant amendments to the independent claims and submits that the new limitations are not taught by the cited references. However, the claims are taught by the previously cited art and the rejection has been updated accordingly.
Examiner notes that the amendments to the “generating a non-fungible token…” step do not significantly change the interpretation of that step. The step of “determining a transfer event trigger has occurred…” is very broad as any event can be encompassed by this step. This “determining…” step along with the “receiving an acceptance…” step are interpreted consistent with paragraphs [0044] and [0049]-[0053] as encompassing an offer and acceptance of a purchase agreement.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed in the enclosed PTO-892.
Dalmia (US 20230055064 A1) teaches:
[0061] “A pact NFT in accordance with one or more embodiments of the present disclosure can be acquired by one or more users associated with a computing and/or gaming environment described herein. The pact NFT can include and/or represent a pact (e.g., an agreement) between individual users to split any gains and/or losses incurred by any individual user of the pact according to one or more pre-defined terms. For example, the pact NFT can include and/or represent a pact (e.g., an agreement) between individual users to split any gains and/or losses incurred by any individual user of the pact according to different ownership shares of the pact NFT held by respective individual users in the pact (e.g., according to the ownership percentage of the pact NFT held by each individual user in the pact).”
Young et al. (US 12033147 B2) teaches:
column 5 line 20 “The present invention allows for containerizing a group of NFTs that may be related in some way (tied to a single resource or include multiple resources) and determines an aggregated value for that NFT container. The resulting NFT container can then be used in transactions as a single entity. NFT container can have a different owner than the owners of the individual NFT. For example, an NFT container may represent be the value of an individual's private art collection. Each piece of art may have its own NFT and the value of the individual's private art collection (NFT container) will be the aggregate value of each individual NFT. This NFT container can then be split into 100 equal shares to be sold it in the market by an entity.”
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick McAtee can be reached on (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.M.D./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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