DETAILED ACTION
Acknowledgements
This Final Office Action is in reply to Applicant’s response filed August 26, 2025.
Claims 1, 14, 17, 28-30, and 32 are amended. No claims are currently cancelled.
Claims 1-4, 14-17, and 28-32 are currently pending.
Claims 1-4, 14-17, and 28-32 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 .
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 1-4, 14-17, and 28-32 are rejected under 35 U.S.C. 103 as being unpatentable over Panchenko et al. (WO 2022140454 A1) in view of Goldston et al. (US 20210248214 A1).
Regarding claims 1, 14, 28
Panchenko teaches:
A computer-implemented method for trading digital content, comprising: {abstract “Systems and method for performing transfers non-fungible tokens (NFT)”}
responsive to a first user selecting for sale a first non-fungible token (NFT) associated with the digital content and stored on a first blockchain: {[0002] “The disclosure relates to implementing a so-called metaverse that allows many individual users to participate in a virtual environment, in which they can obtain, purchase, trade, sell, and otherwise dispose of many non-fungible tokens (NFTs) or other digital assets. Current implementations of metaverses typically allow only one blockchain to support transactions of NFTs and other digital assets, and fail to offer any methodology by which NFTs can be moved to different blockchains.”
[0040] “The embodiment of FIG. 1 includes the following modules: a marketplace module 148, which is a main interface for trading and exchanges, and an bridges module”
[0058] “They can sell digital items they have or trade digital items using all available functionality described above with respect to FIGS. 1-6.”
[0081] “In one or more embodiments, Fig. 10L-10M depict how users sell items.”
[0082] “In one or more embodiments, Fig. 10N depicts how sell orders are shown.”}
Panchenko does not explicitly teach doing the following steps responsive to a first user selecting a first NFT for sale, but Panchenko does teach an interface for a user selecting an NFT for sale and that the “bridges module” is used “for trading and exchanges” so it is at least implied.
transferring the digital content associated with the first NFT, {[0033] “The system is configured for: withdrawing [transferring] the NFT from the first blockchain module;”}
storing the second NFT {[0033] “The system is configured for: withdrawing [storing] the NFT from the first blockchain module;”}
creating a second NFT based on the digital content associated with the first NFT transferred to the blockchain bridge platform; {[0033] “depositing [creating] the NFT to the second blockchain module;”}
recording the second NFT {[0033] “depositing [recording] the NFT to the second blockchain module;”}
Creating an NFT is interpreted as creating an NFT on a blockchain, and therefore creating and recording are not interpreted as separate steps (see specification [0047] “An NFT is a unique and non-interchangeable unit of data stored on a distributed ledger”). Panchenko teaches withdrawing an NFT from one blockchain and depositing it to another. An NFT is merely data on a blockchain, and there is no difference between an NFT being transferred to a second blockchain or a new NFT referencing the same digital content being minted at the second blockchain. Therefore, the “depositing” of Panchenko is considered equivalent to the claimed “creating”.
providing output at the blockchain bridge platform indicating the second NFT is for sale; {[0058] “They can sell digital items they have or trade digital items using all available functionality described above with respect to FIGS. 1-6.”
[0081] “In one or more embodiments, Fig. 10L-10M depict how users sell items.”
[0082] “In one or more embodiments, Fig. 10N depicts how sell orders are shown.”}
receiving input from a second user selecting the second NFT for purchase; {[0002] “The disclosure relates to implementing a so-called metaverse that allows many individual users to participate in a virtual environment, in which they can obtain, purchase, trade, sell, and otherwise dispose of many non-fungible tokens (NFTs) or other digital assets. Current implementations of metaverses typically allow only one blockchain to support transactions of NFTs and other digital assets, and fail to offer any methodology by which NFTs can be moved to different blockchains.”}
responsive to the second user selecting the second NFT for purchase:
creating a third NFT based on the digital content and the second NFT stored on the blockchain bridge platform; {[0033] “depositing [creating] the NFT to the second blockchain module;”}
recording the third NFT {[0033] “depositing [recording] the NFT to the second blockchain module;”}
These steps of receiving, creating, and recording are merely repeating the previous steps of transferring the NFT and associated smart contract from one blockchain to another. There is no unexpected result in doing so and therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to repeat the steps and move the NFT to another blockchain.
receiving input from the second user providing payment for the third NFT {[0095] “In one or more embodiments, Fig. 11U-11Z depicts payment flow.”}
Panchenko does not teach, however Goldston teaches:
{[0010] “The NFT and associated smart contract can be configured to define the rights transferred with the NFT, which rights may specify what a purchaser can and cannot do with the content purchased.”
[0215] “With a token transaction, the smart contract can define the parameters of the transaction this can include, for example, terms such as purchase price [terms of sale];”}
creating a second smart contract comprising terms of sale of the second NFT based on the terms of sale of the first NFT obtained from the first smart contract transferred to the blockchain bridge platform; {[0215] “With a token transaction, the smart contract can define the parameters of the transaction this can include, for example, terms such as purchase price [terms of sale];”}
{[0215] “With a token transaction, the smart contract can define the parameters of the transaction this can include, for example, terms such as purchase price;”}
{[0215] “With a token transaction, the smart contract can define the parameters of the transaction this can include, for example, terms such as purchase price;”}
creating a third smart contract comprising terms of sale of the third NFT based on the terms of sale of the second NFT obtained from the second smart contract stored on the blockchain bridge platform; {[0215] “With a token transaction, the smart contract can define the parameters of the transaction this can include, for example, terms such as purchase price [terms of sale];”}
{[0215] “With a token transaction, the smart contract can define the parameters of the transaction this can include, for example, terms such as purchase price;”}
{[0215] “With a token transaction, the smart contract can define the parameters of the transaction this can include, for example, terms such as purchase price [terms of sale];”}
In addition, it would have been obvious to one of ordinary skill in the art, at the time of filing, to modify Panchenko to include the smart contract of Goldston. One would have been motivated to do so, in order to “define the rights transferred with the NFT” and “define the parameters of the transaction”. Furthermore, the Supreme Court has supported that combining well known prior art elements, in a well-known manner, to obtain predictable results is sufficient to determine an invention obvious over such combination (see KSR International Co. v. Teleflex Inc. (KSR), 550 U.S.,82 USPQ2d 1385 (2007) & MPEP 2143). In the instant case, Panchenko evidently discloses a method of transferring an NFT from one blockchain to another. Goldston is merely relied upon to illustrate the functionality of a smart contract associated with the NFT in the same or similar context. As best understood by Examiner, since both the NFT, as well as the smart contract are implemented through well-known computer technologies in the same or similar context, combining their features as outlined above using such well-known computer technologies (i.e., conventional software/hardware configurations), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by Panchenko, as well as Goldston would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Panchenko/Goldston.
Regarding claims 2, 15
Panchenko teaches:
The method according to claim 1, wherein the digital content is included or stored in a web server. {figure 7B
[0037] “the system includes a content provider comprising the first blockchain module, the content provider providing content to a customer”}
It is implicit from the quotes cited above that the content provider is a web server because figure 7B shows the content being provided to a mobile phone screen with a web URL at the top.
Regarding claims 3, 16
Panchenko teaches:
The method according to claim 2, wherein the digital content is obtained by a widget integrated into the web server. {[0037] “the system includes a content provider comprising the first blockchain module, the content provider providing content to a customer.”}
For the reasons stated above for claim 2, the content provider is a web server. The broadest reasonable interpretation of widget is software.
Regarding claims 4, 17
Panchenko teaches:
The method according to claim 3, wherein the digital content is saved at a central server by the widget.
See claim 3 rejection above. It is implicit that the digital content is saved at the content provider because it is able to provide it.
Regarding claim 29
Panchenko teaches:
The computer-implemented method of claim 1, further comprising:
receiving input from the first user selecting digital content stored in a data store accessible to the blockchain bridge platform; {[0033] “In a further embodiment, the system includes a content provider comprising the first blockchain module, the content provider providing content to a customer, wherein the customer interacts [receiving input] with the content provider to mint the NFT.”}
minting the first NFT based on the digital content; {[0033] “In a further embodiment, the system includes a content provider comprising the first blockchain module, the content provider providing content [digital content] to a customer, wherein the customer interacts with the content provider to mint [minting the first NFT] the NFT.”}
recording the first NFT {[0033] “In a further embodiment, the system includes a content provider comprising the first blockchain module, the content provider providing content to a customer, wherein the customer interacts with the content provider to mint the NFT.”}
Minting is interpreted as recording the token on a blockchain.
receiving input from the first user selecting the first NFT for sale. {[0002] “The disclosure relates to implementing a so-called metaverse that allows many individual users to participate in a virtual environment, in which they can obtain, purchase, trade, sell, and otherwise dispose of many non-fungible tokens (NFTs) or other digital assets. Current implementations of metaverses typically allow only one blockchain to support transactions of NFTs and other digital assets, and fail to offer any methodology by which NFTs can be moved to different blockchains.”}
Panchenko does not teach, however Goldston teaches:
creating the first smart contract comprising terms of sale of the first NFT;
{[0008] “According to various embodiments of the disclosed technology, systems and methods may be implemented to create, manage and share one or more content items, along with metadata or other related files associated with those content items”
[0010] “The NFT and associated smart contract can be configured to define the rights transferred with the NFT, which rights may specify what a purchaser can and cannot do with the content purchased.”
[0011] “Embodiments may also be implemented to store and associate NFT's with their respective media content items”}
Goldston teaches creating content items and associated data, which includes NFTs and smart contracts. See claim 1 for motivation for combining the smart contract of Goldston with the NFT of Panchenko.
Regarding claim 30
Panchenko teaches:
The computer-implemented method of claim 1, further comprising: responsive to the first user selecting the first NFT for sale:
transferring the second NFT to a digital wallet accessible to the blockchain bridge platform. {[0050] “For example, in one embodiment, the bridges module 301 at logic 420 requests deposit via deposit interface 404. The deposit interface 404 at logic 422 determines if the module (to which the NFT is being deposited) supports custodial wallet locking. In such a case, at block 408 the NFT is transferred to a custodial wallet [wallet accessible to the server] from the customer’s wallet or minted for the first time.”}
Regarding claim 31
Panchenko teaches:
The computer-implemented method of claim 1, further comprising, responsive to the second user selecting the second NFT for purchase:
writing the third NFT to a digital wallet of the second user; and {figure 1, 102 is the user, 104 and 106 are the wallets involved in the NFT transfer, both are owned by the user}
receiving user input from the second user to output the digital content and the third NFT to one or more of a display device and a display space for viewing. {[0037] “the system includes a content provider comprising the first blockchain module, the content provider providing content to a customer.” and [0038] “In a further example, the method further includes providing content to a customer, wherein the customer interacts with the content to mint the NFT.” and [0039] “Schema 100 supports NFT trading and exchange on a marketplace, depositing/withdrawing NFTs from supported external/internal games, and over-the-top (OTT) content watching.”}
Regarding claim 32
The computer-implemented method of claim 1 wherein the blockchain bridge platform comprises one of a central server, a web server, a web server operating in conjunction with the central server, a decentralized blockchain bridge server, a decentralized blockchain bridge server operating in conjunction with or comprising the central server, and a digital wallet at, or coupled in communication with, the central server.
This limitation is not given patentable weight. The type of server does not affect any method step.
Response to Arguments
35 USC § 103
Applicant argues “Panchenko refers to only a single NFT, rather than a first NFT and a second NFT as recited in amended claim 1.” However, an NFT is merely data on a blockchain, and there is no difference between an NFT being “transferred” to a second blockchain or a new NFT referencing the same digital content being minted at the second blockchain. The language used in the reference is different from the language used in the claim, but the concept is the same.
Applicant argues “Panchenko fails to teach or suggest transferring the digital content associated with the first NFT, …, from the first blockchain to a blockchain bridge platform.” Rather, Panchenko discusses withdrawing the NFT itself, not the digital content associated with it.” However, according to the claim, the digital content is transferred from the blockchain. “Digital content” is therefore merely a label for data on the blockchain. Since Panchenko teaches “withdrawing the NFT”, it teaches transferring data from a blockchain to a server.
Applicant argues “withdrawing the NFT” is not the same as transferring the data from a blockchain to a server. However, Applicant doesn’t point to any specific evidence in the reference to argue that “withdrawing” in the reference is different from “transferring” in the claim and the two terms appear to be synonymous.
Applicant argues Goldston does not teach or make any suggestion of different smart contracts and in particular fails to teach or suggest creating a smart contract based on terms of sale of another smart contract. However, as stated in the rejection, since the smart contract is associated with the NFT, the combination of Panchenko in view of Goldston at least implies transferring the smart contract with the NFT. Applicant argues the “parameters of a token transaction, for example, how, where and when payments may be made” of Goldston is not the same as the claimed “terms of sale”. However, this is merely data and Applicant has not pointed to any functional difference between the claimed data and the data in the reference.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Weiksner et al. (US 11189131 B1) teaches:
column 10 line 4 “(44) In this non-limiting example, either game server 202 or game server 256 could then communicate with blockchain bridge 204, either directly or through server gateway 120, to request that a certain number of tokens be moved from the blockchain to sidechain 258.”
Chan et al. (US 20230073337 A1) teaches:
[0022] “Blockchain bridges enable interoperability between different blockchain networks, such as Bitcoin, Ethereum, etc., and between parent blockchains and child blockchains (e.g., sidechains), which may operate under different protocols, consensus rules, cryptographic suites, etc. Interoperability between blockchain networks may include the transfer/exchange of tokens, data, and smart contract instructions between the blockchain networks.”
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/S.M.D./Examiner, Art Unit 3698
/RADU ANDREI/Primary Examiner, Art Unit 3698