DETAILED ACTION
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
The amendment filed on August 15, 2025 has been entered. Applicant has amended claims 1 and 19. Claims 13018 and 20 were previously cancelled. Claims 1-12 and 19 are now pending, have been examined and currently stand rejected.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-12 and 19 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites, in part, “evaluating, by the smart contract, the data in view of the instructions and processing the instructions to transfer the blockchain-based media of value to the custodial wallet when the conditions associated with the instructions are satisfied”. It is unclear whether the language which recite “when the conditions associated with the instructions are satisfied” is tied/associated to the evaluating step (e.g., the evaluating step occurs when the conditions associated with the instructions are satisfied) or if is tied/associated to the transfer of the NFT (e.g., the the blockchain-based media of value to the custodial wallet is transferred when the conditions associated with the instructions are satisfied). For the purposes of examination, Examiner has interpreted as the “when the conditions associated with the instructions are satisfied” being associated to the evaluating step. Therefore, the portion which recites “evaluating, by the smart contract, the data in view of the instructions and processing the instructions to transfer the blockchain-based media of value to the custodial wallet when the conditions associated with the instructions are satisfied”; is conditional language that not necessarily will happen. MPEP 2111.04 II
Claims 2-12 are also rejected under 35 USC 112(b) at least for they dependency to claim 1.
In claim 19, examiner notes actions attributed to a smart contract (i.e., evaluating, by the smart contract, the data in view of the instructions and processing the instructions to transfer the blockchain-based media of value to the custodial wallet when the conditions associated with the instructions are satisfied). The claims indicates that a smart contract on a blockchain is accessed. Therefore, the smart contract is not part of the claimed invention (i.e., is outside of the scope of the claim).
Claim Rejections - 35 USC § 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 1-12 and 19 are rejected under 35 U.S.C. 101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. MPEP §2106.
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined as Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter). MPEP §2106.03.
Here, the claims are directed to the statutory category of a process (claims 1-12) and a machine (claim 19). Therefore, we proceed to Step 2A, Prong 1. MPEP §2106.
Under a Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. MPEP §2106.04. Independent Claim 1 is selected as being representative of the independent claims in the instant application. Claim 1 recites:
A method, comprising:
receiving conditions for obtaining an object of value;
creating a blockchain-based media of value for the object of value on a blockchain;
generating instructions for the conditions in a smart contract;
establishing an identifier for referencing the smart contract over the blockchain;
providing control over the blockchain-based media of value to the instructions of the smart contract;
instantiating the smart contract over the blockchain; and
providing the identifier for interacting with the instructions of the smart contract on the blockchain.
notifying an enterprise through an interface that the blockchain-based media of value has been created on the blockchain for an award associated with the object of value; and
receiving the identifier and data relevant to the conditions from a mobile application operated by a user and providing the data and a wallet identifier associated with a custodial wallet of
the user to the smart contract using the identifier.
wherein the blockchain-based media of value is a non-fungible token (NFT) on an Ethereum blockchain, and wherein the object of value is redeemable by a customer with an enterprise and is selected from the group consisting of: a coupon, loyalty reward points, merchandise, travel awards, game artifacts for a game being offered by the enterprise, cash back, digital art, entertainment award, and a unique experience offered to the customer.
evaluating, by the smart contract, the data in view of the instructions and processing the instructions to transfer the blockchain-based media of value to the custodial wallet when the conditions associated with the instructions are satisfied.
Here, the claims recite an abstract idea, or combination of abstract ideas, of using a contract to provide control over an object of value using an identifier, notifying that the object of value is created and receiving the identifier from a user. This concept/abstract idea, which is identified in the bolded sections seen above, falls within the Certain Methods of Organizing Human Activity grouping because it describes commercial or legal interaction (e.g., providing control over an object with a contract, notifying an enterprise and receiving data from user). Accordingly, it is determined that the claims recite an abstract idea since they fall within one or more of the three enumerated categories of patent ineligible subject matter. MPEP §2106.04.
Since it is determined that the claim(s) contain a judicial exception, it must then be determined, under Step 2A, Prong 2, whether the judicial exception is integrated into a practical application of the exception. MPEP §2106.04. In order to make this determination, the additional element(s) are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. Here claim 1 recites the additional element of a blockchain-based media of value, an interface, a mobile application, a blockchain, instantiating a smart contract and a non-fungible token (NFT) on an Ethereum blockchain. Independent claim 19 recites the additional elements of a system, a server, at least one processor, a non-transitory computer-readable storage medium, executable instructions, a blockchain-based media of value, a blockchain, instantiating a smart contract and a non-fungible token (NFT) on an Ethereum blockchain. These additional elements are all recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception, or a portion thereof, using a generic computer component. See MPEP 2106.05. Furthermore, as indicated above, in the 112(b) rejections, the portion which recites evaluating, by the smart contract, the data in view of the instructions and processing the instructions to transfer the blockchain-based media of value to the custodial wallet when the conditions associated with the instructions are satisfied; is conditional language that not necessarily will happen. MPEP 2111.04 II
See MPEP 2111.04 II. “[t]he broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur." Schulhauser at 14. Therefore "[t]he Examiner did not need to present evidence of the obviousness of the [ ] method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim (e.g., instances in which the electrocardiac signal data is not within the threshold electrocardiac criteria such that the condition precedent for the determining step and the remaining steps of claim 1 has not been met);" however to render the claimed system obvious, the prior art must teach the structure that performs the function of the contingent step along with the other recited claim limitations. Schulhauser at 9, 14.”
Additionally, Examiner finds no indication in the Specification, that the operations recited in the independent claims require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any allegedly inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. Furthermore, there is no indication in the claim(s) that the use of a system, a server, at least one processor, a non-transitory computer-readable storage medium, executable instructions, a blockchain-based media of value (e.g., NFT) a mobile application, and a blockchain (e.g., Ethereum) in combination with the abstract idea leads to an improvement of the processor, memory, another technology, or to a technical field. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Looking at the elements as a combination does not add anything more than the elements analyzed individually. Examiner further notes that even though the claims may not preempt all forms of the abstraction, this alone, does not make them any less abstract.
When analyzed under step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a generic computing component (e.g., a system, a server, at least one processor, a mobile application, a non-transitory computer-readable storage medium, executable instructions) to implement the abstract idea amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept or significantly more than the judicial exception. Considered as an ordered combination, the additional elements recited in the claim(s) add nothing that is not already present when the steps are considered separately.
Therefore, claims 1 and 19 are rejected under 35 U.S.C. §101 and are not patent eligible. Dependent claims 2-12 when analyzed are held to be patent ineligible under 35 U.S.C. §101 because the additional recited limitation(s) fail to establish that the claim(s) is/are not directed to an abstract idea.
Dependent claim 2 further refine the abstract idea by indicating that the identifier is received and data is received from the user. This claim fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 3 further refine the abstract idea by transferring the blockchain value to the user’s wallet. This claim fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 4 further refine the abstract idea by crediting the user’s wallet with the blockchain value. This claim fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 5 describes an additional abstract idea of crediting an enterprise wallet a blockchain based media of value based on user authorization. This claim fails to include any new additional elements that integrate the abstract idea(s) into a practical application or provide significantly more than the abstract idea(s).
Dependent claim 6 further refine the abstract idea by describing how conditions are received and describing the object of value. This claim fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 7 further refine the abstract idea by indicting that the enterprise is notified when the blockchain-based media of value is created. This claim fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 8 further refine the abstract idea by indicating that the smart contract controls the blockchain-based- media of value and includes a wallet identifier. This claim fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 9-10 further refine the abstract idea by indicating that a wallet for the smart contract is generated and blockchain-based media value is transferred to the wallet which is used for an enterprise. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 11-12 further refine the abstract idea by describing how the identifier is provided. These claim fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract ideas itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, the dependent claims are also not patent eligible.
Accordingly, it is determined that all claims are directed to non-statutory subject matter under 35 U.S.C. 101 and are ineligible.
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, 6-11, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kaleal et al. (US 2022/0384027 A1) “Kaleal” in view of Haruna et al. (US 20240265375 A1) “Haruna” in view of Dalmia (US 2023/0241514 A1), “Dalmia”.
Regarding claim 1: Wuehler discloses a method, comprising:
receiving conditions for obtaining an object of value; (See at least Kaleal, Fig. 20; [0261]; [0257]; [0285-0286]; where conditions (i.e., conditions and/or definable health and fitness criteria) for obtaining an object of value (i.e., goods and funds or reward) are received.)
creating a blockchain-based media of value for the object of value on a blockchain; (See at least Kaleal, [0257-0258]; [0262]; [0264]; [0271]; [0281]; [0285]; [0293] where a blockchain-based media of value (i.e., NFT) is created for the object of value (i.e., good, fund or reward) on a blockchain. (NFTs) tokens that can represent a variety of digital and real-world assets)
generating instructions for the conditions in a smart contract; (See at least Kaleal, [0261]; [0285]; e.g., when the smart contract is coded.)
providing control over the blockchain-based media of value to the instructions of the smart contract; (See at least Kaleal, [0261-0263]; [0285] the NFT is transferred when conditions within the smart contract are satisfied e.g., the smart contract instructions provide control over the blockchain-based media of value).)
instantiating the smart contract over the blockchain; and (See at least Kaleal, [0261-0263]; the smart contract is encoded on the blockchain network.)
receiving data relevant to the conditions from a mobile application operated by a user and providing the data and a wallet identifier associated with a wallet of the user to the smart contract. (See at least Kaleal, [0261]; [0285]; Once the contract is created, and the conditions for an exchange are fulfilled, goods and funds (e.g., NFTs) are transferred according to terms of the contract upon satisfaction of the terms based on the verifiable data recorded on the blockchain; the smart contract will self-execute and result in automatically providing the user with the corresponding NFT reward. For example, the user can receive a notification (e.g., generated by the blockchain network 1702 and/or the reward provider) that they have received an NFT reward, information describing the reward and so on, an access their reward at their corresponding blockchain address using their private key and digital wallet.)
wherein the blockchain-based media of value is a non-fungible token (NFT) on a blockchain, and wherein the object of value is redeemable by a customer and is selected from the group consisting of: a coupon, loyalty reward points, merchandise, travel awards, game artifacts for a game being offered by the enterprise, cash back, digital art, entertainment award, and a unique experience offered to the customer. (See at least Kaleal, [0020]; [0257]; [0281-00282] Fig. 17; Fig. 20. where wherein the blockchain-based media of value is a non-fungible token (NFT) (i.e., reward in the form of NFT) on a blockchain (i.e., using blockchain technology) and wherein the object of value is redeemable by a customer (i.e., redeemable by the user) and is selected from the group consisting of: a coupon, loyalty reward points, merchandise, travel awards, game artifacts for a game being offered by the enterprise, cash back, digital art, entertainment award, and a unique experience offered to the customer (i.e., a digital collectible, digital badge, certificate).)
evaluating, by the smart contract, the data in view of the instructions and processing the instructions to transfer the blockchain-based media of value to the custodial wallet when the conditions associated with the instructions are satisfied. (See at least Kaleal, [0364] Smart contracts may execute based on data received from entities that are not on the blockchain or off-chain resources. For example, a smart contract may be programmed to execute if a temperature reading from a smart sensor or IoT sensor falls below 10 degrees. Since validation of a transaction is based on consensus across nodes, even small variations in the received data may result in a condition of the smart contract to be evaluated as being not satisfied.)
Kaleal discloses for example, the smart contracts can be created by the avatar system, other third-party health and fitness systems that record user health and fitness activity data on the blockchain, and other third-party retailors that provide goods and services that can be represented and gifted as NFTs (e.g., health and fitness merchants and other merchants). Kaleal further discloses receiving that conditions of the smart contract are met. In various embodiments, reward NFTs (and any other type of NFT described herein) can be linked to respective entities to which they are owned (e.g., reward providers prior to distribution, users to which they are provided as rewards, and the like) via digital wallets.) (See at least Kaleal, [0262]; [0283-0285]). However, Kaleal does not explicitly disclose establishing an identifier for referencing the smart contract over the blockchain; receiving and using the identifier; providing the identifier for interacting with the instructions of the smart contract on the blockchain and notifying an enterprise through an interface regarding the blockchain based object of value.
Haruna, on the other hand, teaches the use of assign in identifier to the smart contact to interact with it an using the smart contract identifier to reference data to interact with the blockchain-based media of value (i.e., NFT) and notify via interface about the generation of the NFT. (See at least Haruna, Fig. 12; [0124]; [0127]; [0181]; [0198]; [0247-0249])
It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention, to combine Kaleal’s system that creates and distributes NFT’s using smart contracts the ability to use a smart contract identifier to facilitate interaction as taught by Haruna since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
The combination of Kaleal and Haruna disclose rewards given to customers using NFT. However, the combination does not explicitly disclose using an Ethereum blockchain and the object of value is redeemable by a customer with an enterprise.
Dalmia, on the other hand teaches rewards given to customers using NFT. However, the combination does not explicitly disclose using an Ethereum blockchain and the object of value is redeemable by a customer with an enterprise. (See at least Dalmia, [0103]; [0284] For example, a player that wins a gameplay executed by a metaverse gaming device and is thereafter awarded a digital asset (e.g., an NFT) is not able to redeem the digital asset via different gaming entities associated with one or more physical gaming environments and/or via other entities (e.g., product and/or service vendors) associated with one or more other physical, real-world environments; While Bitcoin and Ethereum may be referred to herein for the purpose of convenience and illustration, it should be noted that the disclosure is not limited to use with the Bitcoin or Ethereum blockchains and alternative blockchain implementations and protocols fall within the scope of the present disclosure).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to enable redemption of NFTs using the Ethereum blockchain and further allow such rewards to be redeemable across enterprises or entities as taught by Dalmia, in the system executing the method of Kaleal in view of Haruna. As in Dalmia, it is within the capabilities of one of ordinary skill in the art to implement blockchain-based reward logic redemption functionality using Ethereum and enterprises to the above combination system with the predictable result of enabling interoperable and enterprise-redeemable NFT’s ad needed in Kaleal.
Regarding claim 2: The combination of Kaleal in view of Haruna in view of Dalmia disclose the method of claim 1. Kaleal further discloses: receiving data relevant to the conditions from a mobile application operated by a user; and providing the data and a wallet identifier associated with a custodial wallet of the user to the smart contract using the identifier. (See at least Kaleal, [0263]; [0273] health metrics are received and provided to the smart contract (e.g., when data y sent to blockchain network). Haruna further disclose receiving the identifier from a mobile application (See at least Haruna, [0247-0248]
It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention, to combine Kaleal’s system that creates and distributes NFT’s using smart contracts the ability to use a smart contract identifier to facilitate interaction as taught by Haruna since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 3: The combination of Kaleal in view of Haruna in view of Dalmia disclose the method of claim 2. The combination further disclose: receiving the blockchain-based media of value in the custodial wallet from the smart contract. (See at least Kaleal, [0126]; [0147]; [0152]; [0285-0286]. Smart Contract controls the provision of NFT reward (e.g., receives the NFT).)
Regarding claim 4: The combination of Kaleal in view of Haruna in view of Dalmia disclose the method of claim 3. The combination further disclose crediting a user wallet associated with the mobile application with the blockchain-based media of value held in the custodial wallet. (See at least Kaleal, Fig. 17; [0261]; [0264]; [0283]; [0285]; [0293].)
Regarding claim 6: The combination of Kaleal in view of Haruna in view of Dalmia disclose the method of claim 1. The combination further disclose wherein receiving further includes receiving the conditions through an interface from an enterprise, wherein the object of value is associated with an award being offered by the enterprise to customers. (See at least Kaleal, [0257-0258]; [0262]; [0264]; [0271]; [0281]; [0285]; [0293] [0303]; where conditions (i.e., terms and conditions) are received through interface and object of value is associated with an award being offered by the enterprise to customers (i.e., reward).)
Regarding claim 7: The combination of Kaleal in view of Haruna in view of Dalmia wherein creating further includes notifying the enterprise through the interface that the blockchain-based media of value has been created on the blockchain for the award. (See at least Kaleal, [0303]; [0389] E.g., when the created smart contract is recorded in Blockchain.)
Regarding claim 8: The combination of Kaleal in view of Haruna in view of Dalmia disclose the method of claim 1. Kaleal further disclose wherein providing control further transferring the blockchain-based media of value to a wallet controlled by the instructions of the smart contract (See at least Kaleal, [0261-0263]; [0285]; and Haruna further disclose embedding a wallet identifier for the wallet within the instructions. (See at least Haruna, Fig. 19; [0239-0240]).
It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention, to combine Kaleal’s system that creates and distributes NFT’s using smart contracts the ability to use embedding a wallet identifier for the wallet within the instructions as taught by Haruna since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 9: The combination of Kaleal in view of Haruna in view of Dalmia disclose the method of claim 8. The combination further disclose wherein transferring further includes generating the wallet for the smart contract and transferring the blockchain-based media of value to the wallet. (See at least Haruna, [0102-0104])
It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention, to combine Kaleal’s system that creates and transfers NFT’s using smart contracts the ability to generating the wallet for the smart contract and transferring the blockchain-based media of value to the wallet as taught by Haruna since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.Regarding claim 10: The combination of Kaleal in view of Haruna in view of Dalmia disclose the method of claim 9. The combination further disclose wherein transferring further includes using the wallet as a custodial wallet maintained for an enterprise that is providing the object of value in exchange for the blockchain-based media of value. (See at least Haruna, [0126]; [0147]; [0152]; [0102-0104])
It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention, to combine Kaleal’s system that creates and transfers NFT’s using smart contracts the ability to transferring further includes using the wallet as a custodial wallet maintained for an enterprise that is providing the object of value in exchange for the blockchain-based media of value as taught by Haruna since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
The portion which recites “[…] providing the object of value in exchange for the blockchain-based media of value […]” is an intended use of the custodial wallet, i.e., the wallet is maintained for the use or purpose of an enterprise.
Additionally, steps being performed by the enterprise are not positively recited as part of the claimed method and therefore not given patentable weight.
The applicant is reminded that these portions, i.e., intended use/result, do not further limit the scope of the claim as the limitations, or portions thereof, do not claim the functions as being positively recited actions or functions, and/or they do not add any meaning or purpose to the associated manipulative step(s). See MPEP 2103 C and 2111.04. Simply because the limitation recites something as being "for ... [performing a specific functionality]", etc. does not mean that the functions are required to be performed, or are actually performed.
Regarding claim 11: The combination of Kaleal and Haruna disclose the method of claim 1. The combination further disclose wherein providing the identifier further includes providing the identifier to an enterprise through an interface, wherein the enterprise providing the object of value in exchange for the blockchain-based media of value. (See at least Haruna, Fig. 12; [0124]; [0127]; [0181]; [0198]; [0247-0249])
It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention, to combine Kaleal’s system that creates and distributes NFT’s using smart contracts the ability to use a smart contract identifier to facilitate interaction as taught by Haruna since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
The portion which recites “[…] the enterprise providing the object of value in exchange for the blockchain-based media of value […]” is an intended use of the custodial wallet, i.e., the wallet is maintained for the use or purpose of an enterprise.
Additionally, steps being performed by the enterprise are not positively recited as part of the claimed method and therefore not given patentable weight.
The applicant is reminded that these portions, i.e., intended use/result, do not further limit the scope of the claim as the limitations, or portions thereof, do not claim the functions as being positively recited actions or functions, and/or they do not add any meaning or purpose to the associated manipulative step(s). See MPEP 2103 C and 2111.04. Simply because the limitation recites something as being "for ... [performing a specific functionality]", etc. does not mean that the functions are required to be performed, or are actually performed.
Regarding claim 19: A system, comprising:
a server comprising at least one processor (Kaleal, [0287]) and a non-transitory computer-readable storage medium; the non-transitory computer-readable storage medium (Kaleal, [0439]) comprises executable instructions; the executable instructions when executed by the at least one processor from the nontransitory computer-readable storage medium cause the at least one processor to perform operations comprising:
receiving conditions for obtaining an object of value from an enterprise through an interface; (See at least Kaleal, Fig. 20; [0261]; [0257]; [0285-0286]; where conditions (i.e., conditions and/or definable health and fitness criteria) for obtaining an object of value (i.e., goods and funds or reward) are received.)
generating a blockchain-based media of value for the object of value over a blockchain; (See at least Kaleal, [0257-0258]; [0262]; [0264]; [0271]; [0281]; [0285]; [0293] where a blockchain-based media of value (i.e., NFT) is generated for the object of value (i.e., good, fund or reward) on a blockchain. (NFTs) tokens that can represent a variety of digital and real-world assets)
generating instructions for the smart contract based on the conditions; (See at least Kaleal, [0261]; [0285]; e.g., when the smart contract is coded.)
generating instructions for the smart contract based on the conditions; (See at least Kaleal, [0261]; [0285]; e.g., when the smart contract is coded.)
embedding control over transferring the blockchain-based media of value within the instructions of the smart contract; (See at least Kaleal, [0261-0263]; [0285] the NFT is transferred when conditions within the smart contract are satisfied e.g., the smart contract instructions provide control over the blockchain-based media of value).)
instantiating the smart contract on the blockchain; and (See at least Kaleal, [0261-0263]; the smart contract is encoded on the blockchain network.)
notifying the smart contract was instantiated on the blockchain. (See at least Kaleal, [0303]; [0389] E.g., when the created smart contract is recorded in Blockchain.)
receiving data relevant to the conditions from a mobile application operated by a user and providing the data and a wallet identifier associated with a custodial wallet of the user to the smart contract (See at least Kaleal, [0126]; [0147]; [0152]; [0261]; [0285]; Once the contract is created, and the conditions for an exchange are fulfilled, goods and funds (e.g., NFTs) are transferred according to terms of the contract upon satisfaction of the terms based on the verifiable data recorded on the blockchain; the smart contract will self-execute and result in automatically providing the user with the corresponding NFT reward. For example, the user can receive a notification (e.g., generated by the blockchain network 1702 and/or the reward provider) that they have received an NFT reward, information describing the reward and so on, an access their reward at their corresponding blockchain address using their private key and digital wallet.)
evaluating, by the smart contract, the data in view of the instructions and processing the instructions to transfer the blockchain-based media of value to the custodial wallet when the conditions associated with the instructions are satisfied. (See at least Kaleal, [0364] Smart contracts may execute based on data received from entities that are not on the blockchain or off-chain resources. For example, a smart contract may be programmed to execute if a temperature reading from a smart sensor or IoT sensor falls below 10 degrees. Since validation of a transaction is based on consensus across nodes, even small variations in the received data may result in a condition of the smart contract to be evaluated as being not satisfied.)
wherein the blockchain-based media of value is a non-fungible token (NFT) on a blockchain, and wherein the object of value is redeemable by a customer and is selected from the group consisting of: a coupon, loyalty reward points, merchandise, travel awards, game artifacts for a game being offered by the enterprise, cash back, digital art, entertainment award, and a unique experience offered to the customer. (See at least Kaleal, [0020]; [0257]; [0281-00282] Fig. 17; Fig. 20. where wherein the blockchain-based media of value is a non-fungible token (NFT) (i.e., reward in the form of NFT) on a blockchain (i.e., using blockchain technology) and wherein the object of value is redeemable by a customer (i.e., redeemable by the user) and is selected from the group consisting of: a coupon, loyalty reward points, merchandise, travel awards, game artifacts for a game being offered by the enterprise, cash back, digital art, entertainment award, and a unique experience offered to the customer (i.e., a digital collectible, digital badge, certificate).)
Kaleal discloses For example, the smart contracts can be created by the avatar system, other third-party health and fitness systems that record user health and fitness activity data on the blockchain, and other third-party retailors that provide goods and services that can be represented and gifted as NFTs (e.g., health and fitness merchants and other merchants). Kaleal further discloses receiving that conditions of the smart contract are met. In various embodiments, reward NFTs (and any other type of NFT described herein) can be linked to respective entities to which they are owned (e.g., reward providers prior to distribution, users to which they are provided as rewards, and the like) via digital wallets.)(See at least Kaleal, [0262]; [0283-0285]). However, Kaleal does not explicitly discloses establishing an identifier for referencing the smart contract over the blockchain; receiving and using the identifier; providing the identifier for interacting with the instructions of the smart contract on the blockchain and notifying an enterprise through an interface regarding the blockchain based object of value.
Haruna, on the other hand, teaches the use of assign in identifier to the smart contact to interact with it an using the smart contract identifier to reference data to interact with the blockchain-based media of value (i.e., NFT) and notify via interface about the generation of the NFT. (See at least Haruna, Fig. 12; [0124]; [0127]; [0181]; [0198]; [0247-0249])
It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention, to combine Kaleal’s system that creates and distributes NFT’s using smart contracts the ability to use a smart contract identifier to facilitate interaction as taught by Haruna since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
The combination of Kaleal and Haruna disclose rewards given to customers using NFT. However, the combination does not explicitly disclose using an Ethereum blockchain and the object of value is redeemable by a customer with an enterprise.
Dalmia, on the other hand teaches rewards given to customers using NFT. However, the combination does not explicitly disclose using an Ethereum blockchain and the object of value is redeemable by a customer with an enterprise. (See at least Dalmia, [0103]; [0284] For example, a player that wins a gameplay executed by a metaverse gaming device and is thereafter awarded a digital asset (e.g., an NFT) is not able to redeem the digital asset via different gaming entities associated with one or more physical gaming environments and/or via other entities (e.g., product and/or service vendors) associated with one or more other physical, real-world environments; While Bitcoin and Ethereum may be referred to herein for the purpose of convenience and illustration, it should be noted that the disclosure is not limited to use with the Bitcoin or Ethereum blockchains and alternative blockchain implementations and protocols fall within the scope of the present disclosure).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to enable redemption of NFTs using the Ethereum blockchain and further allow such rewards to be redeemable across enterprises or entities as taught by Dalmia, in the system executing the method of Kaleal in view of Haruna. As in Dalmia, it is within the capabilities of one of ordinary skill in the art to implement blockchain-based reward logic redemption functionality using Ethereum and enterprises to the above combination system with the predictable result of enabling interoperable and enterprise-redeemable NFT’s ad needed in Kaleal.
Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaleal, Haruna and Dalmia as applied to claim 4 above, and further in view of Schwartz et al (US 2024/0037615 A1), “Schwartz”
Regarding claim 5: The combination of Kaleal, Haruna and Dalmia disclose the method of claim 4. However, the combination does not specifically disclose receiving an authorization from the user to transfer the blockchain-based media of value to a second custodial wallet associated with an enterprise that is providing the object of value in exchange for the blockchain-based media of value; receiving an authorization from the user to transfer the blockchain-based media of value to a second custodial wallet associated with an enterprise that is providing the object of value in exchange for the blockchain-based media of value; crediting an enterprise wallet with the blockchain-based media of value and debiting the user wallet associated with the mobile application and the custodial wallet of the blockchain-based media of value.
Schwartz, on the other hand, teaches: receiving an authorization from the user to transfer the blockchain-based media of value to a second custodial wallet associated with an enterprise that is providing the object of value in exchange for the blockchain-based media of value; (See at least Schwartz, [0010]; [0019]; [0028]; [0035]; [0038-0040]; e.g., when the user decides to redeem the NFT with the venue in which earned the NFT.)
transferring the blockchain-based media of value from the custodial wallet to the second custodial wallet based on the authorization; and (See at least Schwartz, [0010]; [0019]; [0028]; [0035]; [0038-0040]; e.g., when the user decides to redeem the NFT with the venue in which earned the NFT.)
crediting an enterprise wallet with the blockchain-based media of value and debiting the user wallet associated with the mobile application and the custodial wallet of the blockchain-based media of value. (See at least Schwartz, [0010]; [0019]; [0028]; [0035]; [0038-0040]; e.g., when the user decides to redeem the NFT with the venue in which earned the NFT.)
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to enable authorization-based transfer of blockchain-based media of value from user wallet to a second custodial wallet associated with an enterprise, as taught by Schwartz, in the system executing the method of Kaleal in view of Haruna and Dalmia. As in Schwartz, it is within the capabilities of one of ordinary skill in the art to implement user authorization and wallet transfer functionality, including custodial wallet and enterprise redemption, to the above combination with the predictable result of enterprise-redeemable NFT’s and user engagement as needed in Kaleal.
Claim 12 is e rejected under 35 U.S.C. 103 as being unpatentable over Kaleal, Haruna and Dalmia as applied to claim 1 above, and further in view of GUO JINYI (CN111967862A).
Regarding claim 12: The combination of Kaleal, Haruna and Dalmia disclose the method of claim 1. However, the combination does not explicitly disclose wherein providing the identifier further includes assessing a fee to an account associated with the enterprise for creating the blockchain-based media of value and instantiating the smart contract on the blockchain.
Guo, on the other hand, taches wherein providing the identifier further includes assessing a fee to an account associated with the enterprise for creating the blockchain-based media of value and instantiating the smart contract on the blockchain. (See at least Guo, p.6 lines 22-34)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination and include to ensure there is profit while offering the service.
Response to Arguments
The Rejection of Claims Under§ 101
Applicant's arguments (see remarks, pp. 6-9 filed on August 15, 2025) have been fully considered but they are not persuasive.
On page 6 of the remarks, under the Step 2A A Prong 1, Applicant argues that the amended claims are not directed to abstract ideas but rather to specific technological improvements in blockchain integration systems. Examiner respectfully disagrees and contends that Examiner respectfully disagrees and contends that facilitating a conditional redemption of an object of value (e.g., coupon, reward) is an abstract idea. Furthermore, the newly added limitation (i.e., step performed by the smart contact) is conditional language that does not need to be performed in the claims.
Under the Step 2A Prong 2 of the analysis (remarks pp.7-8), Applicant argues that the claims integrate any potential judicial exceptions into practical applications that improve blockchain technology and enterprise systems. Furthermore, Applicant argues the amended claims specifically integrate the smart contract evaluation and processing into a practical application by automating the transfer of blockchain-based media when conditions are satisfied, solving the technical problem of making blockchain technology accessible to enterprises. Examiner respectfully disagrees. The claims do not demonstrate the integration of different systems. Furthermore, as indicated above, the steps attributed to the smart contract are outside of the scope of the claim and also is describes conditional language that does not need to happen in the claim.
Under the Step 2B of the analysis (remarks p. 8), Applicant argues that the amended claims provide significantly more than any alleged abstract ideas through several inventive concepts
Automated Smart Contract Evaluation and Processing: Examiner respectfully disagrees. As indicated above, the steps attributed to the smart contract are outside of the scope of the claim and also is describes conditional language that does not need to happen in the claim.
Custodial Wallet Integration: Examiner respectfully disagrees. The claims indicates that data and a wallet identifier associated with a custodial wallet is provided to a smart contract. This transmission of data do not provide significantly more than the recited abstract idea.
Cross-Platform Integration: Examiner respectfully disagrees. The claims describes steps of a system that provides identifier of a smart contract to an enterprise. This transmission of data do not provide significantly more than the recited abstract idea.
Applicant argues that the amended claims align with the USPTO's 2024 AI Guidance. These arguments are unpersuasive because the claimed invention does not involve artificial intelligence.
Applicant argues that the amended claims specifically improve blockchain technology itself, not merely use blockchain as a generic computer. Examiner respectfully disagrees. The claims describes steps of a system that provides identifier of a smart contract to an enterprise. This transmission of data do not provide significantly more than the recited abstract idea.
Applicant argues that the Examiner's characterization of the claims as merely "using a contract to provide control over an object of value using an identifier" oversimplifies the specific technical improvements recited in the amended claims. Examiner respectfully disagrees. The claimed features, including Ethereum blockchain implementation, NFT creation and management, smart contract instantiation with embedded control mechanisms, automated evaluation and processing by smart contracts and custodial wallet integration merely describe generic computer functions applied to the abstract idea. The claims do not recite any specific technical improvement to blockchain operation itself, but rather apply blockchain to implement a business concept. Therefore, the rejection under 3544 USC 101 is maintained.
The Rejection of Claims Under§ 103
Applicant's arguments (see remarks, pp. 10-13 filed on August 15, 2025) have been fully considered but they are not persuasive. Applicant asserts that Kaleal fails to disclose several key elements of the amended claims:
Enterprise Integration Interface: Kaleal does not appear to disclose the specific enterprise interface for defining conditions and creating blockchain-based media of value for enterprise loyalty systems as described in the specification. Examiner respectfully disagrees because the claims do not recite an enterprise interface for defining conditions and creating blockchain-based media of value for enterprise loyalty. The claims indicate that conditions for obtaining an object of value are received, then a non-fungible token is generated and an identifier of a smart contact with the conditions are notified to a enterprise though an interface. Kaleal disclose conditions for obtaining an object of value are received (See Kaleal, [0286]). Furthermore, secondary reference, Haruna disclose that the notification of creation of the non-fungible token is received. (See Haruna, [0198]).
Custodial Wallet Management: Kaleal does not disclose the specific custodial wallet system described in paragraph 28 that enables enterprises and customers to interact with blockchain technology without direct blockchain access. Examiner respectfully disagrees. The claims do not disclose a wallet system.
Automated Smart Contract Evaluation and Processing: Most importantly, Kaleal does not appear to disclose the specific automated evaluation and processing functionality recited in the amended claims: "evaluating, by the smart contract, the data in view of the instructions and processing the instructions to transfer the blockchain based media of value to the custodial wallet when the conditions associated with the instructions are satisfied." Examiner respectfully disagrees. (See at least Kaleal, [0364] Smart contracts may execute based on data received from entities that are not on the blockchain or off-chain resources. For example, a smart contract may be programmed to execute if a temperature reading from a smart sensor or IoT sensor falls below 10 degrees. Since validation of a transaction is based on consensus across nodes, even small variations in the received data may result in a condition of the smart contract to be evaluated as being not satisfied).
Applicant argues that Haruna's disclosure of smart contract identifiers and blockchain interaction does not cure Kaleal's deficiencies. Haruna does not appear to disclose: 1. The specific enterprise loyalty and reward system integration 2. The custodial wallet management system described in the specification 3. The automated evaluation and processing mechanisms recited in the amended claims. Examiner notes that Haruna was applied to the portions establishing an identifier for referencing the smart contract over the blockchain; receiving and using the identifier; providing the identifier for interacting with the instructions of the smart contract on the blockchain and notifying an enterprise through an interface regarding the blockchain based object of value.
Applicant asserts that The Examiner's combination of the references is improper for several reasons:
Different Technical Fields: Kaleal is directed to health and fitness tracking, while the claimed invention is directed to enterprise loyalty and reward systems. There is no motivation to combine these disparate fields. Examiner respectfully disagrees. MPEP 2131.05 The question of whether a reference is analogous art is not relevant to whether that reference anticipates. A reference may be directed to an entirely different problem than the one addressed by the inventor, or may be from an entirely different field of endeavor than that of the claimed invention, yet the reference is still anticipatory if it explicitly or inherently discloses every limitation recited in the claims. Here, the claimed invention relates to object of value (i.e., NFT’s) that is associated with an award being offered by the enterprise to their customers after certain conditions are met. (See e.g., Specification [0002]; [0047] Yet, companies can and should benefit from the innovation associated with NFTs. Few option are available to large corporations to provide this technology to their customers. Kaleal disclose a system to reward users using blockchain technology and NFTs after conditions (e.g., specific type of workout or exercise ) are fulfilled (Kaleal, [0285]).
Lack of Motivation: The Examiner has not provided adequate motivation for why one of ordinary skill in the art would combine Kaleal's health-focused system with the enterprise loyalty system features from the other references. Examiner respectfully disagrees. MPEP 2145(X)(C) A teaching, suggestion, or motivation to combine references that is found in the prior art is an appropriate rationale for determining obviousness. KSR, 550 U.S. at 418, 82 USPQ2d at 1396. However, it is just one of a number of valid rationales for doing so. Here, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kaleal which uses smart contracts to allow the use of NFT to reward customers and include Kaleal’ s teachings that uses the smart contract’s identifier for access to the smart contract in order to provide accessibility to relevant parties.
Hindsight Reconstruction: The combination appears to be based on hindsight knowledge of the claimed invention rather than what would have been obvious to one of ordinary skill in the art. Examiner respectfully disagrees. MPEP 2145(X)(A) [a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. A person having ordinary skill in the art, seeking to improve and provide NFT rewards to enterprises would have found obvious to applicant the combinations of references.
Teaching Away
Additionally, Applicant argues that the references teach away from the claimed invention. Specifically, Applicant argues: “Kaleal is focused on health and fitness applications with direct user interaction with blockchain systems, while the claimed invention specifically addresses the problem of enabling enterprises to use blockchain technology without requiring direct blockchain access or expertise”. Examiner respectfully disagrees. Prior art must be considered in its entirety, including disclosures that teach away from the claims) and MPEP § 2143.01. One of ordinary skill in the art would have been motivated because the system is capable of rewarding users using blockchain technology and NFT’s based on certain conditions, similar to the functionality of the claimed invention
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lee (US 20230401571 A1): A merchant configures a new NFT offering and smart contract governing minting and sales of the new NFT offering through a web portal. The commerce system generates the smart contract and pushes the smart contract to the blockchain app, but the blockchain app does not mint any NFTs until instructed by the commerce system when a sale is completed. During a purchase transaction for an NFT, the storefront and/or commerce system generate a “product” object representing the NFT. The commerce system or storefront website refers to and/or exchanges parameters for the product object to track the transaction state from the buyer's online cart through payment confirmation. When the transaction state indicates payment confirmation, the commerce system instructs the blockchain app to mint the purchased NFT directly to the blockchain wallet address of the buyer. The blockchain app then executes the smart contract, which includes instructions for performing various verifications (e.g., check limit on NFTs) and minting. In this way, each system actor is aware or sensitive to the transaction state of the product object and the state of the blockchain, even though the commerce system executes the off-chain processes for the online payment transaction separately from the blockchain app executing the on-chain processes for querying the blockchain and minting the NFT. (Lee, [0011])
Kleyman (US 20230394480 A1): Each NFT minted for the first business is secured by the intellectual property of that business and is configured so as to be exchanged for an enterprise reward at a given location or to represent a portion of the intellectual property of that business.For example, the NFTs may be used as gift cards, or rewards for customer loyalty. Each NFT minted for their business is secured by the intellectual property of that business and is configured so as to be exchanged for an enterprise reward at a given location or to represent a portion of the intellectual property of that business. Kleyman, [0011]; [0041].
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.
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/K.G.M/Examiner, Art Unit 3698
/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698
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