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 §101
1. 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.
2. Claims 1-2, 4-6, 8, 10-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the 2019 PEG, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claimed language “a method of transferring ownership of a virtual or digital asset between a provider of the asset; generating a non-fungible token (NFT) associated with the asset…; determining ownership of the asset by the provider by sending an acess request data based on the information stored…; transferring ownership of the asset from the provider to the receiver; confirming the receiver as the owner of the asset…; receiving a request for a temporary transfer of the asset from the provider to the receiver” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Also, the claimed steps “a method of transferring ownership of a virtual or digital asset between a provider of the asset; generating a non-fungible token (NFT) associated with the asset…; determining ownership of the asset by the provider by sending an access request data based on the information stored…; transferring ownership of the asset from the provider to the receiver; confirming the receiver as the owner of the asset…; confirming the receiver as the current owner of the asset…; receiving a request for a temporary transfer of the asset from the provider to the receiver” can be performed in the human mind. Any times that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “updating the NFT record on one or more nodes in the distributed file system…” This additional element, considered in the context of claim 1 as a whole, does not integrate the abstract idea into a practical application because it recites the step of processing data using a generic computer system. The distributed file system, with its already available basic functions, is simply being applied to the abstract idea and being used as a tool in executing the claimed process. Further, the additional limitation can be reasonably characterized as reciting a patent-ineligible insignificant extra-solution activity. For instance, the step of “updating the NFT record on one or more nodes in the distributed file system…,” when considered as a whole, is a mere data gathering step considered to be an insignificant extra-solution activity. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Further, the limitations wherein the NFT is recorded on the distributed file system; wherein data, access rights, and ownership rights related to the NFT are recorded on the distributed file system; wherein the NFT record uniquely identifies an authenticity of the answer of ownership; wherein the distributed file system is a decentralized, distributed ledger system; the temporary transfer limited to a specific time period during which the provider cannot transfer, access, or otherwise use the asset” are recited to further narrow the scope of the abstract idea. In all, these recited steps merely describe an intangible property of the data that does not affect the examiner’s characterization of the additional limitations as insignificant extra-solution activities. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 is the generically recited “distributed file system.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. More specifically, dependent claims 2-6, 8, and 10-15 do not recite additional elements but merely further narrow the scope of the abstract idea.
Response to Arguments
Applicant's arguments filed 03/31/26 have been fully considered but they are not persuasive.
In response to applicant’s argument that the additional elements integrate the judicial exception into a practical application, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including “updating the NFT record on one or more nodes in the distributed file system…” This additional element, considered in the context of claim 1 as a whole, does not integrate the abstract idea into a practical application because it recites the step of processing data using a generic computer system. The distributed file system, with its already available basic functions, is simply being applied to the abstract idea and being used as a tool in executing the claimed process. Further, the additional limitation can be reasonably characterized as reciting a patent-ineligible insignificant extra-solution activity. For instance, the step of “updating the NFT record on one or more nodes in the distributed file system…,” when considered as a whole, is a mere data gathering step considered to be an insignificant extra-solution activity. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Further, the limitations wherein the NFT is recorded on the distributed file system; wherein data, access rights, and ownership rights related to the NFT are recorded on the distributed file system; wherein the NFT record uniquely identifies an authenticity of the answer of ownership; wherein the distributed file system is a decentralized, distributed ledger system; the temporary transfer limited to a specific time period during which the provider cannot transfer, access, or otherwise use the asset” are recited to further narrow the scope of the abstract idea. In all, these recited steps merely describe an intangible property of the data that does not affect the examiner’s characterization of the additional limitations as insignificant extra-solution activities. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
In response to applicant’s argument that the additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field, the examiner disagrees. The examiner contends that there is a clear difference between the improvements in computer functionality, on one hand, and the use of existing computer as tools to perform a particular task, on the other; the solution addressed by the applicant’s claims is a business problem and not a technical problem. Rather than addressing a problem unique to the technology in which the solution is implemented, applicant’s claim 1 merely automates, using generic computer technology, a business process in which profitability is increased by transferring ownership of digital assets. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Further, the examiner contends that the claimed solution stems from the ordinary capabilities of a general-purpose computer, which does not materially alter patent eligibility of the claimed subject matter. Like the claims in FairWarning, the focus of claim 1 is not on an improvement in computer processors as tools, but on certain independently abstract ideas that use generic computer components as tools. See FairWarning, 839 F.3d at 1095.
Further still, the alleged advantages and improvements that applicant touts do not concern an improvement to computer capabilities but instead relate to an alleged improvement in computer-based process; that is, a process in which a computer is used as a tool in its ordinary capacity which is to process data.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. 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, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695
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