DETAILED CORRESPONDENCE
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 .
Acknowledgments
This action is in response to the amendment filed on June 26, 2025. Claims 1-2, 4-11, and 13-22 are currently pending and have been fully examined. Claims 3 and 12 have been cancelled by Applicant and claim 22 is newly added.
Response to Arguments
With respect to the 103 rejections Applicant argues, on page 11 of the remarks, that the cited art fail to teach the amended claimed features. The examiner notes that Applicant’s arguments are moot in light of new grounds of rejection.
Applicant further argues that Paya teaches that the ledger may be maintained in a database in a sidechain and subsequently published and stored as part of a blockchain. Applicant concludes that since the ledger contains the transactions and is eventually published on the blockchain, then the transactions are in fact broadcasted to the blockchain. The examiner respectfully disagrees and notes that Applicant’s reasoning concerns beyond the features of Paya that are comparable with the claimed features. What is performed after completion of an off-chain transaction is not part of the present claims, and therefore is outside the scope of the claim.
With respect to claim 21, Applicant argues, on page 12 of remarks, that Khalil merely assumes a situation where no gas costs and fees are paid to a payment hub. The examiner respectfully disagrees and notes that Kahlil, for example, in paragraph [0053] teaches that the off-chain payment hub may enforce administrative fees. However, theses administrative fees are different from a gas fee enforced by a blockchain, as Khalil, for example, in [0091] teaches that “a user registers off-chain with a NOCUST™ brand hub server, thus without an on-chain transaction costs.”
Applicant further argues, on page 12 of remarks, that Khalil does not teach the specific situation in which an identifier associated with an NFT can be updated (to indicate a transfer of the ownership of the NFT) without paying a gas fee. The examiner respectfully notes that neither Applicant’s Specification discloses a direct connection between updating an identifier and not paying a gas fee. In fact, in Applicant’s Specification updating an identifier to indicate transfer of ownership is part of a transaction and the transaction is performed without paying a gas fee. Similarly, Khalil teaches performing an off-chain transaction without paying a gas fee.
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 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 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 1-2, 4, 11, 16-18 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Mir et al. (US Patent Publication No. 2023/0130182), in view of Paya et al. (US Patent No. 11,501,370,) further in view of Khalil et al. (US Patent Publication No. 2019/0139037.)
With respect to claims 1, 11 and 18, Mir et al. teach:
providing a single omnibus digital wallet application associated with a service provider, (custodial wallet/software wallet: [0024])
wherein the single omnibus digital wallet application is executable to enable transactions involving a non-fungible token (NFT) marketplace, ([0032], [0048])
wherein the NFT marketplace corresponds to a decentralized blockchain associated with an entity that is different from the service provider; (service provider provides wallets for users: [0024], user may own NFTs from the marketplace in their wallets in a blockchain: [0028]- [0029], each user has a cryptocurrency wallet which is maintained as part of a custodial wallet (i.e., omnibus wallet) maintained by a service provider: [0024])
The examiner notes that the claim recitation “…while a plurality of users of the service provider lack decentralized wallets (in claim 1) (“in an absence of …decentralized wallets” (in claim 18) to connect to the NFT marketplace…” indicates non-functional descriptive material that merely describes an entity (i.e., decentralized wallet) that is neither used by nor is a component of the claimed features and therefore does not further limit the scope of the claim. The fact that the users have or do not have decentralized wallets does not affect the scope of the claim in any way.
receiving, from a first user of the plurality of users of the service provider, a request… (request from a derivative creator: [0024], [0027], claim 20)
wherein the first user is associated with a first identifier and with a first digital wallet at the service provider; (each person has a wallet with a wallet address (i.e., identifier): [0015], [0027], [0029])
determining that the specified source address corresponds to the service provider; ([0027])
based on determining that the specified source address corresponds to the service provider:
determining that the NFT is owned by a second user of the service provider associated with a second identifier; (ownership terms are determined from the license registry [0030], FIG. 4A, [0042]- [0046])
identifying a second digital wallet at the service provider that corresponds to the second user; (NFT owner’s wallet: [0046]- [0048])
updating… an identifier associated with the NFT from the second identifier associated with the second user to the first identifier associated with the first user... (purchaser’s wallet address receives ownership: [0046], [0052], license registry generates a record of ownership: [0054])
Moreover, with respect to claims 1 and 18, Mir et al. teach:
a non-transitory memory; and
one or more hardware processors coupled to the non-transitory memory and configured to execute instructions from the non-transitory memory to cause the system to perform operations… (FIG. 5, [0070]- [0075])
responsive to determining that the specified source address corresponds to the service provider, identifying a second user of the service provider as having ownership of the NFT, wherein the second user is associated with a second identifier and a second digital wallet of the plurality of digital wallets; (ownership terms are determined from the license registry [0030], FIG. 4A, [0042]- [0046], NFT owner’s wallet: [0046]- [0048])
transferring the ownership of the NFT from the second user to the first user by updating an identifier associated with the NFT from the second identifier associated with the second user to the first identifier associated with the first user. (purchaser’s wallet address receives ownership: [0046], [0052], license registry generates a record of ownership: [0054])
Mir et al. do not explicitly teach:
receiving, … a request to perform a transaction involving a purchase, via the NFT marketplace, of an NFT associated with a specified source address;
updating as a part of an off-chain transaction involving the purchase of the NFT…
…wherein the updating occurs off the decentralized blockchain without broadcasting the off-chain transaction involving the purchase of the NFT to the decentralized blockchain and without paying a gas fee but indicates that an ownership of the NFT has transferred from the first user to the second user within the single omnibus digital wallet application.
However, Paya et al. teach:
receiving, from a first user of the service provider associated with a first identifier and a first digital wallet of the plurality of digital wallets, a request to perform a transaction involving a purchase, via the NFT marketplace, of an NFT associated with a specified source address; (customer associated with an account identifier and a wallet sends a request to purchase a digital asset using the wallet: Col. 20 l. 63-Colo. 21 l. 26, Col. 21 l. 55-Col. 22 l. 19)
…wherein the updating occurs off the decentralized blockchain and indicates that an ownership of the NFT has transferred from the first user to the second user within the single omnibus digital wallet. (digital asset maintained in a pooled or omnibus digital wallet: Col. 45 l. 14-Col. 46 l. 8, asset ownership is transferred from seller to buyer: Col. 47 ll. 6-38, wallets and transactions may be performed offline (i.e., off the blockchain: Col. 45 ll. 22-30)
…updating is performed without broadcasting the transaction to the decentralized blockchain. (digital assets are maintained off the blockchain in a sidechain: Col. 19 ll. 10-26, Col. 22 ll. 25-44, Col. 28 l. 41-Col. 29 l. 7)
The examiner notes that the claim recitation “…indicates that an ownership of the NFT has transferred from the first user to the second user within the single omnibus digital wallet …” indicates non-functional descriptive material that merely describes the ownership transfer. The claim recitation does not include a function performed as part of the claimed features and therefore does not further limit the scope of the claim.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate the offline digital asset trading in a digital asset exchange based on a purchase request and using an omnibus wallet, as taught by Paya et al., into the NFT transaction system of Mir et al., in order to trade NFTs offline using an omnibus wallet based on receiving a request. (Paya et al.: Abstract, Col. 6 ll. 20-54)
Mir et al. and Paya et al. do not explicitly teach; however, Khalil et al. teach:
updating as a part of an off-chain transaction involving the purchase of the NFT…
…wherein the updating occurs off the decentralized blockchain without broadcasting the off-chain transaction involving the purchase of the NFT to the decentralized blockchain and without paying a gas fee
However, Khalil et al. teach:
…wherein the updating occurs off the decentralized blockchain without broadcasting the off-chain transaction involving the purchase of the NFT to the decentralized blockchain and without paying a gas fee. (avoid costly on-chain transactions: [0027], off-chain payment: [0051]-[0053], alleviate the need for costly on-chain transactions: [0087], [0091])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate off-chain payment, as taught by Khalil et al., into the NFT transaction system of Mir et al., Paya et al., in order to reduce transaction cost by processing payment off-chain. (Khalil et al.: Abstract, [0027])
The examiner notes that the claim recitation: “updating as a part of an off-chain transaction involving the purchase of the NFT…” indicates non-functional descriptive material that merely describes data that does not affect the “updating” function and therefore does not further limit the scope of the claim.
With respect to claim 2, Mir et al., Paya et al. and Khalil et al. teach the limitations of claim 1.
Moreover, Mir et al. teach:
the request … is received via an application programming interface (API) connection of the single omnibus digital wallet application. ([0024]- [0026])
In addition, Paya et al. teaches a purchase request, (Col. 20 l. 63-Colo. 21 l. 26)
With respect to claims 4 and 16, Mir et al., Paya et al. and Khalil et al. teach the limitations of claims 1 and 11.
Moreover, Mir et al. teach:
wherein the first digital wallet of the first user is a hot wallet associated with the service provider, and the operations further comprise: ([0050])
broadcasting an additional transaction to a network of nodes associated with the decentralized blockchain for transferring the NFT from the hot wallet to a corresponding cold wallet maintained by a trusted third-party custodian associated with the service provider. (proxy wallet: [0050])
In addition, with respect to claim 16, the examiner notes that the claim recitation: “the NFT that can be stored” indicates an intended use of the NFT, as it describes a capability of the NFT and the “storing” function is not positively recited. Therefore, the claim recitation does not further limit the scope of the claim.
With respect to claim 17, Mir et al., Paya et al. and Khalil et al. teach the limitations of claim 11.
Moreover, Mir et al. teach:
providing, by the one or more hardware processors, via a graphical user interface (GUI) displayed at a device of the first user, a plurality of options for viewing an image associated with the NFT… (FIG. 1A, [0029], [0031])
Mir et al. and Paya et al. do not explicitly teach:
for viewing… and sharing the image for view by other users…
However, the claim recitation “for viewing an image…” indicates intended use of the providing the options. Therefore, the functions “viewing” and “sharing” are not positively recited and do not further limit the scope of the claim.
With respect to claim 21, Mir et al., Paya et al. and Khalil et al. teach the limitations of claim 18.
Moreover, Khalil et al. teach:
processing the transaction without paying a gas fee. (off-chain payment: [0053], [0091])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate off-chain payment, as taught by Khalil et al., into the NFT transaction system of Mir et al., Paya et al., in order to reduce transaction cost by processing payment off-chain. (Khalil et al.: Abstract, [0027])
With respect to claim 22, Mir et al., Paya et al. and Khalil et al. teach the limitations of claim 1.
Moreover, Mir et al. teach:
the NFT marketplace comprises a decentralized application or website hosted by a third-party broker. (NFT marketplace system operated by a third party: [0042])
The examiner notes that the claim recitation: “the NFT marketplace comprises a decentralized application or website hosted by a third-party broker,” describes the NFT marketplace which is not a component of the claimed system and therefore does not further limit the scope of the claim.
Claims 5-6, 13-14 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Mir et al., in view of Paya et al. and Khalil et al., further in view of Patel et al. (US Patent Publication No. 2023/0066272.)
With respect to claims 5, 13 and 19, Mir et al., Paya et al. and Khalil et al. teach the limitations of claims 1, 11 and 18.
Mir and Paya et al. do not explicitly teach:
wherein the purchase is a group purchase initiated by the first user on behalf of a group that includes the first user and other users associated with the service provider,
minting governance tokens corresponding to the NFT;
determining an amount of a purchase price of the NFT that was paid by each user in the group; and
distributing, to corresponding digital wallets of the other users in the group, the minted governance tokens in proportion to the amount paid by each user in the group for the purchase of the NFT.
However, Patel et al. teach:
wherein the purchase is a group purchase initiated by the first user on behalf of a group that includes the first user and other users associated with the service provider, ([0034])
minting governance tokens corresponding to the NFT; (providing tokens to be fractionally shared: [0031], [0037]- [0038], [0136]- [0138])
determining an amount of a purchase price of the NFT that was paid by each user in the group; ([0066], [0079])
distributing, to corresponding digital wallets of the other users in the group, the minted governance tokens in proportion to the amount paid by each user in the group for the purchase of the NFT. (deposit ownership interest to user account: [0150], [0155], accounts associated with wallets: [0231]- [0232])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate the shared asset purchase by a group of users having fractional ownership, as taught by Patel et al., into the NFT transaction system of Mir et al., Paya et al. and Khalil et al., in order enable users to purchase fractions of NFTs and share ownership. (Patel et al: Abstract, [0030])
Mir et al., Paya et al. and Patel et al. do not explicitly teach a “governance token.” However, according to Applicant’s Specification, governance token “represents fractional shares of ownership” (PGPub [0111]) Therefore, the “fractional shares” as taught by Patel et al. is interpreted as a “governance token.”
The examiner notes that the claim recitation “initiated by the first user on behalf of a group…” indicates a function by users and not by the claimed system. Therefore, the claim recitation does not differentiate over the prior art and does not further limit the scope of thew claim.
With respect to claims 6 and 14, Mir et al., Paya et al., Khalil et al. and Patel et al. teach the limitations of claims 5 and 13.
Moreover, Patel et al. teach:
associating the NFT with a list of identifiers corresponding to the other users in the group; (digital assets (i.e., NFTs) associated with asset profiles (i.e., list of identifiers): [0070], [0124], [0145], [0235])
receiving, from the first user, a second request to transfer a corresponding portion of the distributed governance tokens from the first digital wallet to a third digital wallet that corresponds to a third user of the service provider; (receiving a request from a first user for payment to a second user: [0083], a digital asset or a portion can be transferred: [0207], [0211], [0232] to user accounts/wallets [0214]- [0215])
transferring the corresponding portion of the governance tokens from the first digital wallet to the third digital wallet; (transferring the asset from an account of first user to an account of the second user: [0089], [0092]- [0093])
updating the list of identifiers associated with the NFT to include a third identifier associated with the third user in place of the first identifier associated with the first user. (updating users asset profile (i.e., list of identifiers): [0071], [0111], [0150], [0155])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate the shared asset purchase by a group of users having fractional ownership, as taught by Patel et al., into the NFT transaction system of Mir et al., Paya et al. and Khalil et al., in order enable users to purchase fractions of NFTs and share ownership. (Patel et al: Abstract, [0030])
Claims 7-9 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Mir et al., in view of Paya et al., Khalil et al. and Patel et al., further in view of Winklevoss et al. (US patent No. 10,438,290)
With respect to claims 7 and 15, Mir et al., Paya et al., Khalil et al. and Patel et al. teach the limitations of claims 5 and 13.
Moreover, Mir et al., [0028]- [0029] teach NFT transactions.
Mir et al., Paya et al., Khalil et al. and Patel et al. do not explicitly teach:
…an income-earning digital asset owned by the group,
determining a total income earned by the income-earning digital asset over a time period;
identifying a plurality of digital wallets that correspond to the other users in the group;
distributing the total income to the identified digital wallets in proportion to the governance tokens in each of the identified plurality of digital wallets.
However, Winklevoss et al. teach:
…an income-earning digital asset owned by the group, (exchange digital asset with fiat: Col. 18 ll. 17-30)
determining a total income earned by the digital asset over a time period; (dividends paid on a periodic basis: Col. 37 ll. 15-30)
identifying digital wallets of the plurality of digital wallets that correspond to the users in the group; (payment is made to wallet addresses: (Col. 39 l. 55-Col. 40 l. 4)
distributing the total income to the identified digital wallets in proportion to the governance tokens in each of the identified digital wallets. (Col. 36 l. 60- Col. 37 l. 6, Col. 37 ll. 38-50, Claim 19)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate digital asset exchange, as taught by Winklevoss et al., into the NFT transaction system of Mir et al., Paya et al., Khalil et al., and Patel et al., in order distribute dividends. (Winklevoss et al.: Col. 17 ll. 50-63)
With respect to claim 8, Mir et al., Paya et al., Patel et al., Khalil et al. and Winklevoss et al. teach the limitations of claim 7.
Moreover Winklevoss et al. teach:
wherein the users in the group are owners of the income- earning digital asset, (Col. 27 ll. 18-35)
associating the NFT with a list of identifiers corresponding to the owners of the income-earning digital asset; (token identification information: Col. 13 l. 61-Col. 14 l. 10)
receiving, prior to distributing the total income earned by the digital asset, a notification that a portion of the governance tokens in the first digital wallet of the first user have been transferred to a third digital wallet of a third user of the service provider; track asset ownership: Col. 18 ll. 54-67, transfer log is maintained in a database: Col. 27 ll. 18-35
updating the list of identifiers corresponding to the owners of the income-earning digital asset to include a third identifier associated with the third user, based on the portion of the governance tokens transferred to the third digital wallet, wherein the identified plurality of digital wallets include the third digital wallet of the third user. (update track asset ownership: Col. 18 ll. 54-67, transfer log is maintained in a database: Col. 27 ll. 18-35)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate digital asset exchange, as taught by Winklevoss et al., into the NFT transaction system of Mir et al., Paya et al., Khalil et al., and Patel et al., in order distribute dividends. (Winklevoss et al.: Col. 17 ll. 50-63)
With respect to claim 9, Mir et al., Paya et al., Khalil et al., Patel et al. and Winklevoss et al. teach the limitations of claim 7.
Moreover, Mir et al. teach:
wherein the total income is distributed to the identified plurality of digital wallets as fungible cryptocurrency tokens associated with the decentralized blockchain. ([0032], [0046])
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mir et al., Paya et al., and Khalil et al., further in view of Winklevoss et al.
With respect to claims 10 and 20, Mir et al., Paya et al. and Khalil et al. teach the limitations of claims 1 and 18.
Mir et al., Paya et al. and Khalil et al. do not explicitly teach:
receiving a second request to perform a second transaction involving a sale, via the NFT marketplace, of the NFT owned by the first user of the service provider to a specified destination address;
determining that the specified destination address corresponds to a decentralized wallet of a third-party user of the NFT marketplace;
based on determining that the specified destination address corresponds to the decentralized wallet of the third-party user:
broadcasting the second transaction to a network of nodes associated with the decentralized blockchain to initiate a transfer of the NFT to the specified destination address corresponding to the decentralized wallet of the third-party user;
transferring the NFT to the specified destination address corresponding to the decentralized wallet of the third-party user.
However, Winklevoss et al. teach:
receiving a second request to perform a second transaction involving a sale, via the NFT marketplace, of the NFT owned by the first user of service provider to a specified destination address; (asset sell orders: Col. 28 l. 45- Col. 29 l. 9)
determining that the specified destination address corresponds to a decentralized wallet of a third-party user of the NFT marketplace; (Col. 26 l. 44-Col. 27 l. 17, Col. 27 ll. 50-59)
based on determining that the specified destination address corresponds to the decentralized wallet of the third-party user:
broadcasting the second transaction to a network of nodes associated with the decentralized blockchain to initiate a transfer of the NFT to the specified destination address corresponding to the decentralized wallet of the third-party user; (broadcasting transactions to a network: Col. 11 ll. 1-5, Col. 25 l. 62-Col. 26 l. 14, Col. 27 ll. 36-49)
transferring the NFT to the specified destination address corresponding to the decentralized wallet of the third-party user. (Col. 26 l. 44-Col. 27 l. 17, Col. 27 ll. 50-59)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to incorporate digital asset exchange, as taught by Winklevoss et al., into the NFT transaction system of Mir et al., Paya et al. and Khalil et al., in order enable users to buy and sell NFTs. (Winklevoss et al.: Abstract, Col. 17 ll. 50-63)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Westland (US 2021/0042746.)
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIMA ASGARI whose telephone number is (571)272-2037. The examiner can normally be reached M-F 9am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SIMA ASGARI/Examiner, Art Unit 3698 /PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698