DETAILED ACTION
Acknowledgements
This Non-Final Office Action is in reply to Applicant’s RCE filed April 1, 2026.
Claims 1, 3, 14, 16, 28, 29, 31, 32 are currently amended. Claims 2, 4, 15, 17 are currently cancelled.
Claims 1, 3, 14, 16, 28-32 are currently pending.
Claims 1, 3, 14, 16, 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 1, 2026 has been entered.
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, 14, 16, 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) in view of Randazzo (US 20230153874 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” and therefore it is at least implied.
creating, via the blockchain bridge platform, a second NFT […]; {[0033] “depositing [creating] the NFT to the second blockchain module;”}
storing the second NFT and […] on the blockchain bridge platform; {[0033] “The system is configured for: withdrawing [storing] the NFT from the first blockchain module;”}
recording the second NFT and […] on a block of a second blockchain; {[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 at the blockchain bridge platform 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 and […] on a third blockchain. {[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 at the blockchain bridge platform 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 the following bolded language:
transferring the digital content from the web server, and a first smart contract comprising terms of sale of the first NFT from the first blockchain, to a blockchain bridge platform; {[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, via the blockchain bridge platform, 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];”}
storing the second NFT and the second smart contract 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;”}
recording the second NFT and the second smart contract on a second blockchain; {[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, via the blockchain bridge platform, 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];”}
recording the third NFT and the third smart contract on a third blockchain. {[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;”}
receiving input from the second user providing payment for the third NFT according to the terms of sale of the third smart contract; {[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.
Panchenko in view of Goldston does not teach, however Randazzo teaches the following bolded language:
storing the digital content on a web server;
creating, via the blockchain bridge platform, a second NFT based on the digital content transferred from the web server to the blockchain bridge platform;
transferring the digital content from the web server […] to a blockchain bridge platform; {[0051] “Additionally, an NFT may be associated with a user uploaded [transferred] image, which may be stored directly on the blockchain or on a centralized or decentralized database [blockchain bridge platform]. […] If an image is also associated with the NFT, it may be viewable directly on the blockchain or viewed by accessing the image file location recorded in the metadata.”; [0085] “the image file (block 310) is stored on a centralized or decentralized database (block 312) for later use when uploading the data for NFT minting”}
The location the image is uploaded from reads on web server.
Panchenko in view of Goldston teaches a system which mints NFTs based on content from a content provider, and also includes a bridges module for transferring NFTs among multiple blockchains. Panchenko in view of Goldston is silent with respect to the storage location of the content.
Randazzo teaches content (an image) referenced by an NFT can be stored on the blockchain or in an off-blockchain location referenced by NFT metadata. Randazzo further teaches uploading (transferring) the content to be referenced by the minted NFT. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to upload the content from the content provider of Panchenko to a centralized database to be referenced by the minted NFT metadata, as taught by Randazzo, because it would have the advantage of reducing the storage space needed on the blockchain.
Regarding claims 3, 16
Panchenko teaches:
The method according to claim 1, 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 1, the content provider is a web server. The broadest reasonable interpretation of widget is software.
Regarding claim 29
Panchenko teaches:
The computer-implemented method of claim 1, further comprising:
receiving input at the blockchain bridge platform from the first user selecting the digital content stored at the web server; {[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 and […] on the first blockchain; {[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 at the blockchain bridge platform 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 the following bolded language:
creating, via the blockchain bridge platform, the first smart contract comprising terms of sale of the first NFT;
recording the first NFT and the first smart contract on the first blockchain;
{[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 input at the blockchain bridge platform 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, the web server, the 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 amended claim 1 now requires transfers to a blockchain bridge platform of two separate items (digital content and a smart contract) from two separate locations (a web server and a blockchain, respectively). Previously, the digital content was coming from the blockchain instead of a web server.
Applicant points to specification paragraphs [0009], [0017], and [0038] as providing support for transferring digital content from a web server to a blockchain bridge platform. These paragraphs refer to a transfer of digital content from a web server to a central server. The claimed blockchain bridge platform therefore appears to be equated to the disclosed central server. Paragraph [0064] further discloses:
[0064] To streamline minting processing, a widget 440 is installed in the web server 430. When the widget 440 is initiated by the content owner, the widget 440 automatically crawls each webpage on the website, retrieves the digital content saved in the web server 430, and transmits the retrieved digital content to a central server 410.
This appears to map very closely with the teachings of Randazzo, which has now been added to the updated rejection. Randazzo similarly teaches an upload of an image (digital content) to be referenced by a minted NFT.
Applicant further argues:
Claim 1 as amended herein further recites creating, via the blockchain bridge platform, a second NFT based on the digital content transferred from the web server to the blockchain bridge platform. Thus, the second NFT is created based on digital content transferred from the web server to the blockchain bridge platform. The second NFT is not created based on the first NFT or details of the first NFT.
However, Panchenko teaches a bridge module for transferring an NFT among multiple blockchains. “Transferring” an NFT to another blockchain implies creating a second NFT which is based on the first, in the same way that “transferring” a file from a first computer to a second computer would suggest creating a file on the second computer which is based on the file on the first computer. Therefore, this limitation is taught by Panchenko.
Applicant further argues that Panchenko in view of Goldston does not teach creating a second smart contract based on a first smart contract which comprises terms of sale of the first NFT. However, the term “smart contract” as used in the claims is merely a label for data associated with the NFT. The claims further specify that said data comprises “terms of sale”. Panchenko teaches minting an NFT and transferring that NFT among multiple blockchains. Transferring the NFT among multiple blockchains implies creating a new NFT on a target blockchain which is a copy of the NFT being transferred. Therefore, Panchenko teaches creating second data on a second blockchain based on first data on a first blockchain. Goldston is merely brought in to teach the inclusion of “terms of sale” in the data.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Opensea “Metadata Standards” teaches use of metadata in an NFT to refer to data stored off the blockchain:
(page 1) “Providing asset metadata allows applications like OpenSea to pull in rich data for digital assets and easily display them in-app. Digital assets on a given smart contract are typically represented solely by a unique identifier (e.g., the token_id in ERC721), so metadata allows these assets to have additional properies, such as a name, description, and image.”
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/S.M.D./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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