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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/23/2026 has been entered.
Status of Claims
Claims 3-4 and 20 were previously canceled. Claims 12-13, 16, and 21 were previously withdrawn. Claims 1-2, 5-19, and 21 are pending. Claims 1-2, 5-11, 14-15, and 17-19 are presented for examination.
Response to Arguments
Applicant's arguments, filed 04/23/2026, with respect to the 35 U.S.C. 101 rejection of claims 1-2, 5-11, 14-15, and 17-19, have been fully considered, but they are not persuasive.
In response to the Applicant’s remarks under “I. The Office Applies the Wrong Legal Standard,” the “manufacturing the article of footwear corresponding to the second virtual object of the second digital asset, and wherein the article of footwear item has the unique product identifier affixed physically thereon” step was identified as an insignificant extra-solution activity because it amounts to no more than a mere post-solution activity wherein the post-solution activity is outputting an identifier onto a substrate, the substrate being a shoe. The identified abstract idea(s) are not meaningfully limited by the manufacturing, therefore, the manufacturing cannot integrate the abstract idea(s) into a practical application if it only serves as a form of data outputting. This form of data outputting is considered “merely nominal or tangential” since it does not sufficiently limit how the NFTs are manipulated. Furthermore, one of the considerations under step 2A, prong two is determining whether the limitations indicate “an improvement in the functioning of a computer, or an improvement to other technology or technical field” see MPEP 2106.05(a). Therefore, the inquiry as to whether the additional elements, whether individually or as a whole, results in an improvement to how the NFTs are minted, burned, redeemed, etc. is not incorrect since it is one of the practical applications, amongst others, that is considered during the patent eligibility subject matter analysis.
In response to the Applicant’s remarks under “II. Manufacturing Is Structurally Integrated Into the Claimed Process, Not Separable From It,” the claim recites a generic manufacturing step appended to an NFT process. The manufacturing step does not sufficiently limit the use of the identified abstract idea(s) because the purported practical application of manufacturing the article of footwear corresponding to the second virtual object is not influenced by the NFT processes. The manufacturing step is merely placed at the end of the NFT processes and manufactures a physical version of one of the generated virtual objects, it is not dictated by the NFT manipulation processes since there lacks a clear nexus between the manufacturing of the article of footwear corresponding to the second virtual object with the unique product identifier and the manipulation of the NFTs. Furthermore, it is not clear how the NFT manipulation steps dictate what is being manufactured. The manufacturing is merely an end process that outputs one of the generated virtual object in physical form, and there lacks any limitation(s) that suggest the second virtual object was chosen to be manufactured for any particular reason.
In regards to the example 25 – “Rubber Manufacturing,” (Diamond v. Diehr) argument presented, the court evaluated additional elements such as the steps of installing rubber in a press, closing the mold, constantly measuring the temperature in the mold, and automatically opening the press at the proper time, and found them to be meaningful because they sufficiently limited the use of the mathematical equation to the practical application of molding rubber products see MPEP 2106.05(e). The additional elements of manufacturing the rubber process in this particular example provide more specific steps as to how the rubber is manufactured. In contrast, the claimed invention in the present application merely recites manufacturing the article of footwear with an identifier on it, but without any specifics as to how the article of footwear is actually manufactured. Therefore, the present claimed invention is not analogous to the case in example 25.
In regards to the remark that the NFT manipulation steps are integrated into a manufacturing process, as currently claimed, the manufacturing step is merely appended to the end of the NFT manipulation process and does not sufficiently limit the NFT processes. The step of manufacturing the article of footwear corresponding to the second virtual object with the unique product identifier affixed physically thereon is no more than outputting data on a substrate. The claimed invention lack any specifics on how the substrate is manufactured and how manufacturing the substrate itself sufficiently limits the recited abstract idea(s). The remarks argue that the digital processes, i.e. first and second redemption sequences, controls and constrains the physical output, however, that is not apparent in the claim language. There is no language in the first redemption sequence that “controls and constrains” the physical output to be the article of footwear corresponding to the second virtual object of the second digital asset. Furthermore, the second redemption sequence simply outputs said article of footwear, but the language does not suggest that such output is constrained by any previous elements of the claim. There also lacks any nexus between the first and second redemption sequence other than one occurring after the other, therefore, it is unclear how these seemingly unrelated sequences, other than a temporal constraint, can control and constrain the physical output.
In regards to the remark that the manipulative steps involving the non-fungible tokens influence the manufacturing process, the manipulative steps do not influence the manufacturing step because the manufacturing step is merely appended to the end of the NFT manipulation steps such that is it no more than data outputting. Physically affixing a “unique product identifier” on an article of footwear is data outputting on a tangible substrate. There is no language that suggests the “second digital asset directly dictates both the design and the identification of the manufactured physical article of footwear,” or any language that suggests the manufacturing step is influenced by the NFT manipulation steps. Rather, the manufacturing step has been recited generically such that it is no more than a post-solution activity, and not an activity that further limits the recited abstract idea(s). Furthermore, the existence and manipulation of the other non-fungible tokens, digital assets, and virtual objects do not appear to influence how and/or why the article of footwear is manufactured such that the manufacturing of the article of footwear itself sufficiently limits the recited abstract idea(s). To put it differently, if the other steps regarding the first and third non-fungible tokens, digital assets, and virtual objects did not exist, the manufacturing step of the article of footwear would not be impacted.
In response to the Applicant’s remarks under “III. The Claim Effects a Particular Transformation,” MPEP 2106.05(c) states - “An “article” includes a physical object or substance.” A digital asset is not physical, therefore, it is not an “article.” Therefore, the remarks relying on “effects a transformation or reduction of a particular article to a different state or thing” is in error since the initial state of the element being transformed is not a physical object or substance. Furthermore, MPEP 2106.05(c) states under factors relevant to the analysis – “Transformation of a physical or tangible object or substance is more likely to provide significantly more (or integrate a judicial exception into a practical application) than the transformation of an intangible concept such as a contractual obligation or mental judgment.” A ”digital asset” is considered an intangible concept since it is not a physical/tangible object or substance.
In response to the Applicant’s remarks under “Step 2B,” when considering the ordered combination, the claim amounts to no more than data outputting onto a physical object. Such concept cannot be considered inventive since 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.
Applicant's arguments, filed 04/23/2026, with respect to the prior art rejection of claims 1-2, 5-11, 14-15, and 17-19, have been fully considered, but they are not persuasive.
In response to the Applicant’s remarks under “I. Preliminary Response to the Advisor Action,” the Final Rejection 01/27/2026 has provided citations and rationale to each and every claimed element, including what is considered “a first redemption sequence” and “a second redemption sequence,” and has provided rationale for any combination(s) as applicable. Every claimed element has been accounted for by any one of the provided prior art, with an obviousness rationale provided as appropriate. Therefore, any attack on a prior art suggesting that it does not teach an element, which has already been admitted in the action and cured by with an additional prior art, is considered attacking the prior art individually. Please refer to the rejections below for the citations and rationales.
In response to the Applicant’s remarks under “II. The Cited Art Fails to Teach the First Redemption Sequence,” Examiner notes that the first redemption sequence comprises two steps: 1) burning the first non-fungible token and 2) transferring the second non-fungible token and the third non-fungible token to the user wallet. The Final Rejection 01/27/2026 has already stated that Andon et al. U.S. 2020/0273048 does not disclose all of the steps of the sequence on pg. 14. Therefore, prior art Collen U.S. 2022/0294630 was introduced to cure the deficiencies of Andon. The remarks again attack Collen individually for not disclosing the “transferring” step and Andon individually for not disclosing the “burning” step, when it is the combination of Andon in view of Collen that teaches the steps of the first redemption sequence. A “single sequence” is merely a series of steps, and the citations and rationale for each of the steps have been provided. This is similar to a prior art that does not disclose or suggest all of the steps of a process, and therefore, an additional prior art is relied upon to cure such deficiencies. The remarks appear to suggest the combination of the prior art is improper, however, the only evidence of such is a statement that the combination “does not yield a single first redemption sequence that burns one NFT and transfers two other NFTs to a user wallet.” Such statement is merely conclusory in nature without any rationale to support the finding that the combination should be considered improper. Furthermore, the current claim language does not suggest that the two steps (i.e. burning and transferring) affect each other. Merely being in a sequence together does not imply one step necessarily affects the other. Therefore, the remark that “Collen does not teach or suggest that the upgrade process results in the transfer of two distinct NFTs” is not relevant to what is being claimed.
In response to the Applicant’s remarks under “III. The Cited Art Fails to Teach the Second Redemption Sequence,” the claim language itself allows for the manufacturing step to be a part of the second redemption sequence. Since Collen discloses both the burning of the non-fungible token and the manufacturing of the physical product, there is no evidence to suggest that one cannot interpret these two steps to be a part of the “redemption sequence.” Furthermore, the claim does not place any boundaries on what is considered part of the redemption sequence to preclude such interpretation.
In response to the Applicant’s remarks under “IV. The Combination Fails to Teach Manufacturing “Corresponding to the Second Virtual Object of the Second Digital Asset,”” the principle token NFT contract corresponds to a pair of physical sneakers [0267], [0282], i.e. article of footwear. The physical assets, e.g. physical sneakers or article of footwear, are represented as digital assets, and the digital sneaker (i.e. the virtual object [0143]) is represented by a non-fungible blockchain token [0275]. Therefore, Colleen discloses “manufacturing the article of footwear (i.e. physical sneakers in [0136], [0138]) corresponding to the second virtual object (i.e. digital representation of the digital asset in [0146]) of the second digital asset (i.e. a cryptographic token corresponding to the digital asset [0143]).” Furthermore, the remarks again appear to be attacking the references individually (e.g. “Andon does not teach manufacturing…,” “Collen’s “principal token NFT contract” referenced in [0267] is not a separately generated second digital asset…”). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Please see below for the citations and rationales.
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 1-2, 5-11, 14-15, and 17-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1-2, 5-11, 14-15, and 17-19 fall into at least one of the four categories of statutory subject matter. The eligibility analysis proceeds to Step 2A.1.
Step 2A.1:
The limitations of independent claim 1 have been denoted with letters by the Examiner for easy reference. The judicial exceptions recited in claim 1 are identified in bold below:
A method of using a non-fungible token, the method comprising:
generating, by a processor, a first digital asset including a first virtual object;
minting, by the processor, a first non-fungible token securing ownership of the first digital asset to a blockchain;
providing, by the processor, the first digital asset on a digital platform;
compiling, by the processor, a list of user wallets that meet a set of predetermined conditions;
transferring, by the processor, the first non-fungible token to a user wallet;
generating, by the processor, a second digital asset including a second virtual object that is a digital representation of an article of footwear and that is associated with a unique product identifier;
minting, by the processor, a second non-fungible token securing ownership of the second digital asset to the blockchain;
generating, by the processor, a third digital asset including a third virtual object;
minting, by the processor, a third non-fungible token securing ownership of the third digital asset to the blockchain;
initiating, by the processor, a first redemption sequence, wherein the first redemption sequence comprises:
burning the first non-fungible token; and
transferring the second non-fungible token and the third non-fungible token to the user wallet; and
initiating, by the processor, a second redemption sequence subsequently to the first redemption sequence, wherein the second redemption sequence comprises burning the third non-fungible token and
manufacturing the article of footwear corresponding to the second virtual object of the second digital asset, and wherein the article of footwear item has the unique product identifier affixed physically thereon.
Under the broadest reasonable interpretation, limitations A-D, G-L, and N recite steps that are reasonably categorized under certain methods of organizing human activity. Specifically, the claimed limitations can be grouped as commercial or legal interactions in the form of advertising, marketing or sales activities or behaviors. Generating a representation of an article of footwear to provide it on a digital marketplace and redeeming the representation for the article of footwear amount to sales activities or behaviors. Burning or destroying the tokens controls exclusivity/scarcity of the product(s), thereby amounting to a form of advertising and/or marketing. Limitation E recites a step that is reasonably categorized under a mental process – concepts performed in the human mind or by a human using a pen and paper, including observation, evaluation, judgment, opinion. Compiling a list based on a set of conditions can reasonably be performed in the human mind or by a human using a pen and paper. Therefore, the claimed invention recites abstract ideas that fall under multiple groupings.
Claim 1 recites at least one abstract idea. The eligibility analysis proceeds to Step 2A.2.
Step 2A.2:
The judicial exception is not integrated into a practical application. In particular, claim 1 recites the additional element(s) not in bold above.
The additional elements “non-fungible,” “digital,” and “virtual” are all recited at a high-level of generality such that they amount to no more than generally linking the use of the abstract idea(s) to a particular technological environment or field of use.
Performing the steps by a “processor” and providing the asset on a “digital platform” are no more than mere steps to implement the abstract idea(s) using a computer. Processor and digital platform are both recited at a high-level of generality. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, claim 1 amounts to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.
Merely reciting a “blockchain” is general usage of a data structure. When the “blockchain” is considered individually and as an ordered combination with the abstract idea(s), claim 1 amounts to no more than mere steps to implement the abstract idea(s) on a data structure.
Limitations F, M, and O are considered insignificant extra-solution activities because they do not meaningfully limit how the non-fungible tokens are used, minted, redeemed, and/or any of the methods recited. In particular, limitation O does not improve the technology and/or technical field in which the NFTs are minted and used because “manufacturing of the article of footwear” and the “article of footwear has the unique product identifier affixed physically thereon” do not improve and/or sufficiently limit how the NFTs are minted, burned, redeemed, and/or any of the methods of using the NFTs. In other words, there lacks a clear nexus between how the manufacturing of the article of footwear with the unique product identifier affixed physically thereon meaningfully limits how the NFTs are used and/or manipulated.
Accordingly, these additional elements do not integrate the abstract idea(s) into a practical application because they do not impose any meaningful limits on practicing the abstract idea(s).
Claim 1 does not recite additional elements that integrate the judicial exception into a practical application. The eligibility analysis proceeds to Step 2B.
Step 2B:
The additional elements, both individually and as an ordered combination, do not amount to significantly more than the judicial exception because the outcome of the considerations at Step 2B will be the same when considerations from Step 2A.2 are re-evaluated. Furthermore, limitations F and M are analogous to transmitting data over a network. “Receiving or transmitting data over a network” has been determined by the courts to be well-understood, routine, and conventional functions when they are claimed in a merely generic manner MPEP 2106.05(d)(II), buySAFE. Limitation O is also considered a well-understood, routine, and conventional function as evidenced by prior art Collen U.S. 2022/0294630 in [0026]. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception in a generic computer environment. Mere instructions to apply an exception in a generic computing environment and/or using a generic computer component cannot provide an inventive concept.
Claim 1 is not patent eligible.
Dependent Claims
Dependent claims 2 and 5-6 provide further context to the redemption sequences. They elaborate on the abstract idea(s) identified above without reciting any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claim from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent claims 7-11 and 18-19 provide context on metadata elements, virtual objects, and digital assets. They elaborate on the abstract idea(s) identified above without reciting any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claim from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent claims 14-15 are related to updating information. They elaborate on the abstract idea(s) identified above without reciting any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claim from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent claim 17 is related to displaying a picture. It is considered an additional element. However, the additional element is recited at a high-level of generality such that it amounts to no more than generally linking the use of the abstract idea(s) to a particular technological environment or field of use. When the limitation is considered individually and as a whole in combination with the independent claim from which it depends, the claim does not recite additional elements that amount to significantly more than the judicial exception.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea(s) into a patent eligible application such that the abstract idea(s) amounts to significantly more than the abstract idea(s) 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, claims 1-2, 5-11, 14-15, and 17-19 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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.
Claims 1-2, 5-11, 14-15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Andon et al. U.S. 2020/0273048 (herein referred to as “Andon”) in view of Chumbley U.S. 2018/0108008, and further in view of Collen U.S. 2022/0294630.
Re Claim 1, Andon discloses a method of using a non-fungible token, the method comprising:
generating, by a processor, a first digital asset including a first virtual object ([0045] – “A digital asset or attribute modifier may be created,” [0046] – ““digital assets” may refer to any computer-generated virtual object,” [0083] – method begins with processor-executable instructions);
minting, by the processor, a first non-fungible token securing ownership of the first digital asset to a blockchain [0046] – ““digital assets” may refer to any computer-generated virtual object, including digital footwear, apparel, headgear, avatars, pets, etc., that have a unique, non-fungible tokenized code (“token”) registered on and validated by a blockchain platform”;
providing, by the processor, the first digital asset on a digital platform [0079] – “The digital marketplace 64 may represent a plurality of virtual objects 80”;
transferring, by the processor, the first non-fungible token to a user wallet […] ([0050], [0077] – blockchain locker, i.e. wallet, may be used to store the private key belonging to the NFT, thereby transferring ownership of the token to the user);
generating, by the processor, a second digital asset including a second virtual object that is a digital representation of an article of footwear and that is associated with a unique product identifier ([0045] – “A digital asset or attribute modifier may be created…For instance, a digital shoe,” [0046] – ““digital assets” may refer to any computer-generated virtual object,” [0148] – “provisioning a plurality of [non-fungable] non-fungible tokens…and each corresponding to a unique digital asset,” thereby suggesting a plurality of digital assets, i.e. second digital asset, [0049] – “assigned a Unique Product Identifier (UPID)…the UPID is used to unlock a cryptographic digital asset”);
minting, by the processor, a second non-fungible token securing ownership of the second digital asset to the blockchain [0046] – ““digital assets” may refer to any computer-generated virtual object, including digital footwear, apparel, headgear, avatars, pets, etc., that have a unique, non-fungible tokenized code (“token”) registered on and validated by a blockchain platform,” [0148] – “provisioning a plurality of [non-fungable] non-fungible tokens…and each corresponding to a unique digital asset”;
generating, by the processor, a third digital asset including a third virtual object ([0045] – “A digital asset or attribute modifier may be created,” [0046] – ““digital assets” may refer to any computer-generated virtual object,” [0148] – “provisioning a plurality of [non-fungable] non-fungible tokens…and each corresponding to a unique digital asset,” thereby suggesting a plurality of digital assets, i.e. third digital asset);
minting, by the processor, a third non-fungible token securing ownership of the third digital asset to the blockchain [0046] – ““digital assets” may refer to any computer-generated virtual object, including digital footwear, apparel, headgear, avatars, pets, etc., that have a unique, non-fungible tokenized code (“token”) registered on and validated by a blockchain platform,” [0148] – “provisioning a plurality of [non-fungable] non-fungible tokens…and each corresponding to a unique digital asset”;
initiating, by the processor, a first redemption sequence ([0140] – a post-launch event), wherein the first redemption sequence comprises:
transferring the second non-fungible token and the third non-fungible token to the user wallet ([0141] – transmitting a digital asset and a unique key to access the cryptographic token to a user’s personal digital wallet, [0140] – users may purchase multiple digital assets), and
wherein the article of footwear has the unique product identifier affixed physically thereon ([0107] – “a physical product 200 that includes an identifier (UPID),” [0051] – “UPID associated with the shoe (on the box, on a hang tag, under a label, on an insole, etc.) (i.e. affixed physically thereon),” UPID is unique product identifier).
However, Andon does not expressly disclose
compiling, by the processor, a list of user wallets that meet a set of predetermined conditions;
a user wallet of the list of user wallets.
Chumbley discloses systems and methods for securely and efficiently updating account information across resource providers. Specifically, Chumbley discloses
compiling, by the processor, a list of user wallets that meet a set of predetermined conditions (Under the broadest, most reasonable interpretation, a list of user wallets can reasonably contain one user wallet. [0069] – to conduct a transaction, the digital wallet database is queried for account data linked to the resource provider specific token, the account data can include a wallet ID, i.e. user wallet. The account data, or wallet ID, is placed in the authorization request and sent back for transaction validation. The queried account data containing the wallet ID constitutes a list of user wallets because it contains at least one wallet. The predetermined condition is that the account data must be linked to the resource provider specific token that was received by the digital wallet server computer);
a user wallet of the list of user wallets ([0069] - The queried account data containing the wallet ID constitutes a list of user wallets because it contains at least one wallet).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Andon’s method for provisioning cryptographic digital assets with the teachings of compiling a list of user wallets in Chumbley. One would be motivated to make the combination to improve the security and validity of transactions Chumbley, [0107].
Andon in view of Chumbley do not explicitly teach
wherein the first redemption sequence comprises burning the first non-fungible token,
initiating, by the processor, a second redemption sequence subsequently to the first redemption sequence, wherein the second redemption sequence comprises burning the third non-fungible token and manufacturing the article of footwear corresponding to the second virtual object of the second digital asset.
Collen discloses a physical asset corresponding to a digital asset. Specifically, Collen discloses
wherein the first redemption sequence comprises burning the first non-fungible token ([0186] – “the user 1102 makes a selection of the NFT the user wants to upgrade (i.e. initiating the first redemption sequence)…the API 1106 drops the newly minted upgraded NFT in the digital wallet of user 1102…the company 1108 burns the now old NFT that was upgraded,”)
initiating, by the processor, a second redemption sequence subsequently to the first redemption sequence ([0202] – “An NFT must be upgraded before it can be redeemed,” i.e. subsequently to the first redemption sequence, redeeming is analogous to the second redemption sequence), wherein the second redemption sequence comprises burning the third non-fungible token ([0267] – “This token could be owned by the principal token NFT contract and redeemed (i.e. burned) to have the physical pair shipped to the user,” i.e. “this token” is analogous to the third non-fungible token, principal token NFT corresponds to the second digital asset) and manufacturing the article of footwear ([0138] - “Manufacturing 710 will manufacture the physical product” when redeeming the NFT, physical product can be physical sneakers in [0136], [0138]) corresponding to the second virtual object of the second digital asset ([0146] – “digital representation of the digital asset,” [0143] – “a cryptographic token on a distributed ledger corresponding to the digital asset”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Andon in view of Chumbley’s method for provisioning cryptographic digital assets with the teachings of burning NFTs and manufacturing the article of footwear in Collen. One would be motivated to make this combination to provide a user with a seamless experience of “wearing” their sneakers in real life as well as in the digital environment Collen, [0011].
Re Claim 2, Andon in view of Chumbley and Collen teach the method of claim 1, and Andon in view of Chumbley and Collen further teach wherein the first redemption sequence is initiated upon occurrence of a first redemption event and the second redemption sequence is initiated upon occurrence of a second redemption event, and wherein the first redemption event and the second redemption event each include at least one of a transaction or a predetermined window of time (Collen, Fig. 11, 1118 - select NFT is analogous to a first redemption event, Fig. 12, 1218 - redeem NFT is analogous to a second redemption event. Under the broadest, most reasonable interpretation, a “transaction” is an act, process, or instance of transacting, which means to carry to completion or carry on the operation or management of merriam-webster.com/dictionary. Therefore, the acts of selecting an NFT and redeeming an NFT are considered transactions.)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Andon in view of Chumbley’s method for provisioning cryptographic digital assets with the teachings of the first and second redemption sequences initiated upon occurrence of a first redemption event and second redemption event, respectively, and each including a transaction in Collen. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
Re Claim 5, Andon in view of Chumbley and Collen teach the method of claim 1, and Andon in view of Chumbley and Collen further teach wherein the second redemption sequence is initiated upon expiration of a predetermined window of time that, upon occurrence, is configured to initiate only burning the third digital asset (Collen, [0263] – “users may be rewarded for “aging” the sneakers by holding them for a certain period of time,” [0288] – “redeem the tokens/and or digital assets…for physical sneakers.” Redeeming corresponds to the second redemption sequence, and includes burning the token once redeemed [0267]. The period of time for aging is analogous to a predetermined window of time, such times include the following vintages: 1 year, 2 years 3 years…etc. in [0261], therefore, there is a set expiration for the window of time.)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Andon in view of Chumbley’s method for provisioning cryptographic digital assets with the teachings of initiating a second redemption sequence upon expiration of a predetermined window of time, which includes only burning a digital asset in Collen. One would be motivated to make the combination to make the assets/sneakers more valuable Collen, [0261].
Re Claim 6, Andon in view of Chumbley and Collen teach the method of claim 1, Andon in view of Chumbley and Collen further teach wherein the second redemption sequence is initiated upon occurrence of a transaction that, upon occurrence before a claim date, is configured to initiate burning the third digital asset and manufacturing the article of footwear corresponding to the second virtual object of the second digital asset (Collen, [0138] - “Manufacturing 710 will manufacture the physical product” when redeeming the NFT, i.e. transaction, [0267] – “This token could be owned by the principal token NFT contract and redeemed (i.e. burned) to have the physical pair shipped to the user.” The claim limitations have failed to provide parameters that further limit a claim date, therefore, any date can be a claim date.)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Andon in view of Chumbley’s method for provisioning cryptographic digital assets with the teachings of burning digital asset(s) and manufacturing the article of footwear in Collen. One would be motivated to make this combination to provide a user with a seamless experience of “wearing” their sneakers in real life as well as in the digital environment Collen, [0011].
Re Claim 7, Andon in view of Chumbley and Collen teach the method of claim 1, Andon in view of Chumbley and Collen further teach wherein a first metadata element of the first digital asset is a uniform resource locator Collen, [0323] and a second metadata element of the second digital asset is a product identifier Collen, [0189], [0307].
The content of the first and second metadata element is nonfunctional descriptive language. The content of information – uniform resource locator and product identifier, do not meaningfully limit how the first and second digital assets are generated. Therefore, claim 7 cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Andon in view of Chumbley’s method for provisioning cryptographic digital assets with the teachings of metadata elements in Collen. One would be motivated to make the combination because the metadata can help distinguish between identical or nearly identical physical sneakers by identifying unique properties of their corresponding digital assets Collen, [0215-216].
Re Claim 8, Andon in view of Chumbley and Collen teach the method of claim 1, and Andon in view of Chumbley and Collen further teach wherein the first virtual object is a digital artwork, and wherein the first digital asset comprises a plurality of digital assets having the digital artwork Collen, [0217].
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Andon in view of Chumbley’s method for provisioning cryptographic digital assets with the teachings of a virtual object being a digital artwork, and a digital asset comprising a plurality of digital assets having the digital artwork in Collen. One would be motivated to make the combination to allow for sneakers (both physical and digital) to have its own unique design Collen, [0212, 0215].
Re Claim 9, Andon in view of Chumbley and Collen teach the method of claim 1, and Andon in view of Chumbley and Collen further teach wherein the second digital asset comprises a plurality of digital assets having the digital representation of the article of footwear (Andon, [0046] – virtual object, including digital footwear).
Re Claim 10, Andon in view of Chumbley and Collen teach the method of claim 1, and Andon in view of Chumbley and Collen further teach wherein the second digital asset comprises a plurality of digital assets each having a digital representation of an article of footwear that is different from one another (Andon, [0105] – CryptoKick attribute packs to enable customizing article of footwear, e.g. different from one another).
Re Claim 11, Andon in view of Chumbley and Collen teach the method of claim 1, and Andon in view of Chumbley and Collen further teach wherein a first metadata element, a second metadata element, and a third metadata element each include a URL to a site hosted remotely, off of the blockchain (Collen, [0309, 0321, 0337] – plurality of digital files stored on a remote server, [0149] – “metadata identifying a location of the one or more digital files”).
The content of the metadata elements is nonfunctional descriptive language. The content of information – a URL to a site hosted remotely do not meaningfully limit how the first, second, and third digital assets are generated. Therefore, claim 11 cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Andon in view of Chumbley’s method for provisioning cryptographic digital assets with the teachings of including in the metadata identifying a location of the digital files in Collen. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
Re Claim 14, Andon in view of Chumbley and Collen teach the method of claim 1, and Andon in view of Chumbley and Collen further teach wherein a first metadata element of the first digital asset is updated automatically by the digital platform to burn the first non-fungible token (Collen, [0179] – “system can then update the NFT as redeemed,” i.e. burned [0267]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Andon in view of Chumbley’s method for provisioning cryptographic digital assets with the teachings of updating the NFT as redeemed to burn the NFT in Collen. One would be motivated to make the combination because combining the prior art elements using known methods would yield predictable results since each element merely performs the same function as it does separately.
Re Claim 15, Andon in view of Chumbley and Collen teach the method of claim 1, and Andon in view of Chumbley and Collen further teach wherein the second virtual object of the second digital asset is updated only after approval is provided by a user (Andon, [0104] - user can edit and/or mutate discrete attributes of a digital asset, thereby “approving” the update.)
Examiner notes that contingent limitations only require those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met see MPEP 2111.04. In this claimed invention, condition A is “only after approval is provided by a user.” The claimed invention may be practiced without condition A occurring, therefore the recited steps are not required by the broadest, most reasonable interpretation of the claim. However, for purposes of compact prosecution, prior art citation is provided above.
Re Claim 17, Andon in view of Chumbley and Collen teach the method of claim 1, and Andon in view of Chumbley and Collen further teach further comprising displaying the second virtual object as a profile picture associated with a user account on the digital platform Andon, [0090] – “the new profile page lists the CryptoKick the user acquired.”
Re Claim 18, Andon in view of Chumbley and Collen teach the method of claim 1, and Andon in view of Chumbley and Collen further teach wherein the first digital asset and the third digital asset are configured to be non-transferrable by a user Collen, [0283] – “the sub assets would not be transferrable separately from the main 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 combine Andon in view of Chumbley’s method for provisioning cryptographic digital assets with the teachings of configuring certain digital assets to be non-transferrable in Collen. One would be motivated to make the combination because combining the prior art elements using known methods would yield predictable results since each element merely performs the same function as it does separately.
Re Claim 19, Andon in view of Chumbley and Collen teach the method of claim 1, and Andon in view of Chumbley and Collen further teach wherein the second digital asset is configured to be transferrable by a user (Andon, [0054] – “After acquiring a CryptoKick, the owner may buy, sell, intermingle, collect, or trade CryptoKicks,” therefore, the asset is transferrable).
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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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/CHRISTINE DANG/Examiner, Art Unit 3698
Prosecution Insights