Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC §101
1. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
2. Claims 1-10 and 16-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the MPEP § 2106, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP 2106.03.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “a method for tokenization of a precious physical asset; determining information regarding the precious physical asset; associating the precious physical asset with one or more tokens; communicating availability of the one or more tokens associated with the precious physical asset through a smart contract; implementing transactions for the one or more tokens utilizing the smart contract; and distributing monies paid during transactions for the one or more tokens associated with the precious physical asset” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Similarly, the claim language “determining information regarding the precious physical asset; associating the precious physical asset with one or more tokens; communicating availability of the one or more tokens associated with the precious physical asset through a smart contract; implementing transactions for the one or more tokens utilizing the smart contract; and distributing monies paid during transactions for the one or more tokens associated with the precious physical asset” can be performed in the human mind. Any process that can be performed in the human mind falls into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that independent claim 1 does not recites an additional element but the independent claim 16 recites a processor, which does not integrate the abstract idea into a practical application because it is a generic hardware, recited functionally to simply carry out the abstract idea. The examiner further contends that the limitations “wherein the information comprises at least a quantity, a quality, and a location of the precious physical asset; wherein the one or more tokens are blockchain tokens generated by the data platform that represent ownership of the precious physical asset; and wherein the one or more tokens are linked to a physical identifier of the precious physical asset” do not constitute additional elements, but they are recited to further narrow the scope of the abstract idea. Thus, it is determined that the claim is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea is the generically recited “processor.” The specification does not point to sufficient evidence that this component is anything other than well-understood, routine, and conventional hardware or system being used in its ordinary manner. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. More specifically, dependent claims 3-8, 10, 18-24 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claim 2, 9 and 17 recite additional elements are nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-10 and 16-24 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by WESTLAND (US PUB: 2021/0042746).
Re claim 1. WESTLAND discloses a method for tokenization of a precious physical asset by a data platform, comprising: determining information regarding the precious physical asset, wherein the information comprises at least a quantity, a quality, and a location of the precious physical asset (i.e. serial numbers, model numbers, etc, see paras 0017); associating the precious physical asset with one or more tokens, wherein the one or more tokens are block tokens generated by the data platform that represent ownership of the precious physical asset, wherein the one or more tokens are linked to a physical identifier of the precious physical asset
(i.e. For instance, for digital assets (e.g., cryptocurrencies, etc.) and/or physical assets (e.g., real world physical products, etc.) identified or represented by digital asset tokens and/or physical asset tokens, respectively, owned by a participant of the ZKP-enabled DLN 100, the token commitment may be obtained by cryptographically hashing, among other thigs, the digital asset tokens and/or physical asset tokens, respectively, and the public key on the ZKP-enabled DLN 100 of the owner of the digital asset. In some instances, a physical asset token that identifies a physical asset may be obtained by hashing some identifying parameters (e.g., serial numbers, model numbers, etc, see paras 0017) of the physical asset; communicating availability of the one or more tokens associated with the precious physical asset through a smart contract (see paras 0030); implementing transactions for the one or more tokens utilizing the smart contract; and distributing monies paid during the transactions for the one or more tokens associated with the precious physical asset (see paras 0017-0020, 0024-0026).
Re claim 2. WESTLAND discloses the method of claim 1, further comprising: receiving the precious physical asset or control of the precious physical asset (see paras 0011).
Re claims 3 and 4. WESTLAND discloses the method of claim 1, wherein the precious physical asset is a real world physical products (see paras 0017). The examiner contends that real world physical products inherently comprise precious metal, gem, crop, hydrocarbon, or water, which are known and can be mined or unmined.
Re claim 5. WESTLAND discloses the method of claim 1, wherein the smart contract enforces transfer of token ownership only upon authentication of the physical identifier of the precious physical asset (see paras 0006, 0030).
Re claim 6. WESTLAND discloses the method of claim 1, wherein the information includes at least a quantity and quality of the precious physical asset (see paras 0017).
Re claim 7. WESTLAND discloses the method of claim 1, wherein the precious physical asset is securely stored at a physical location, and wherein the precious physical asset is associated with the one or more tokens utilizing a smart contract (see paras 0017).
Re claim 8. WESTLAND discloses the method of claim 1, wherein the one or more tokens are associated with the precious physical asset utilizing an identifier on the precious physical asset (see paras 0017).
Re claim 9. WESTLAND discloses the method of claim 1, further comprising: generating the one or more tokens utilizing the information associated with the precious physical asset utilizing a data platform (see paras 0017)
Re claim 10. WESTLAND discloses the method of claim 1, wherein the monies are enabled to represent currency or cryptocurrency (see paras 0017).
Re claim 16. Claim 16 recites similar limitations to claim 1 above and thus rejected using the same art and rationale as in claim 1.
Re claim 17. WESTLAND discloses the data platform of claim 16, wherein the set of instructions are further executed to: receive the precious physical asset at a repository for management by an owner of the one or more tokens (see paras 0011).
Re claim 18. Claim 18 recites similar limitations to claim 5 above and thus rejected using the same art and rationale as in claim 5.
Re claim 19. WESTLAND discloses the data platform of claim 16, wherein the one or more tokens represent blockchain tokens (see paras 0006), and wherein the indicator is an encrypted hash (see paras 0007, 0017).
Re claim 20. WESTLAND discloses the data platform of claim 16, wherein the precious physical asset is owned by a plurality of owners who own the one or more tokens (see paras 0017, 0025).
Re claim 21. WESTLAND discloses the data platform of claim 16, wherein the physical identifier of the precious physical asset is associated with the information (see paras 0017)
Re claim 22. WESTLAND discloses the data platform of claim 21, wherein the physical identifier is one or more of an inaudible tone, a QR code, and a legal claim, a serial number (see paras 0017).
Re claim 23. WESTLAND discloses the data platform of claim 16, wherein a smart contract controls transactions for the precious physical asset utilizing the one or more tokens (see paras 0007, 0013-0015).
Re claim 24. WESTLAND discloses the method of claim 1, wherein the identifier is one or more of an inaudible tone, a QR code, a legal claim and a serial number (see paras 0017).
Response to Arguments
Applicant's arguments filed on 09/29/25 have been fully considered but they are not persuasive.
In response to applicant’s argument that the claims are not directed to an abstract idea but to a practical application of blockchain technology that integrates physical assets into a secure digital ecosystem, the examiner disagrees. The examiner contends that the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “a method for tokenization of a precious physical asset; determining information regarding the precious physical asset; associating the precious physical asset with one or more tokens; communicating availability of the one or more tokens associated with the precious physical asset through a smart contract; implementing transactions for the one or more tokens utilizing the smart contract; and distributing monies paid during transactions for the one or more tokens associated with the precious physical asset” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Similarly, the claim language “determining information regarding the precious physical asset; associating the precious physical asset with one or more tokens; communicating availability of the one or more tokens associated with the precious physical asset through a smart contract; implementing transactions for the one or more tokens utilizing the smart contract; and distributing monies paid during transactions for the one or more tokens associated with the precious physical asset” can be performed in the human mind. Any process that can be performed in the human mind falls into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
The examiner further contends that independent claim 1 does not recites an additional element but the independent claim 16 recites a processor, which does not integrate the abstract idea into a practical application because it is a generic hardware, recited functionally to simply carry out the abstract idea. The examiner further contends that the limitations “wherein the information comprises at least a quantity, a quality, and a location of the precious physical asset; wherein the one or more tokens are blockchain tokens generated by the data platform that represent ownership of the precious physical asset; and wherein the one or more tokens are linked to a physical identifier of the precious physical asset” do not constitute additional elements, but they are recited to further narrow the scope of the abstract idea. Thus, it is determined that the claim is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
In response to applicant’s argument that the prior art of record fails to disclose “determining information regarding the precious physical asset, wherein the information comprises at least a quantity, a quality, and a location of the precious physical asset.” Westland discloses identifying parameters such as serial numbers and model numbers (see paras 0017). The examiner contends that the quality of a product can inherently be inferred from the serial or model number.
Further, in response to applicant’s argument that the prior art of record fails to disclose “wherein the one or more tokens are linked to a physical identifier of the precious physical asset.” Westland explicitly makes this disclosure (i.e. For instance, for digital assets (e.g., cryptocurrencies, etc.) and/or physical assets (e.g., real world physical products, etc.) identified or represented by digital asset tokens and/or physical asset tokens, respectively, owned by a participant of the ZKP-enabled DLN 100, the token commitment may be obtained by cryptographically hashing, among other thigs, the digital asset tokens and/or physical asset tokens, respectively, and the public key on the ZKP-enabled DLN 100 of the owner of the digital asset. In some instances, a physical asset token that identifies a physical asset may be obtained by hashing some identifying parameters (e.g., serial numbers, model numbers, etc, see paras 0017).
Lastly, in response to applicant’s argument that the prior art of record fails to disclose “communicating availability of the one or more tokens associated with the precious physical asset through a smart contract.” Westland makes this disclosure (i.e. In some embodiments, as discussed below, a token commitment is understood or accepted as a valid representation of an asset on the ZKP-enabled DLN 100 when a smart contract on the ZKP-enabled DLN 100 allows the addition of the token commitment onto a token commitments data structure, see paras 0030).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695