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 .
In view of the Appeal Brief filed on 8/20/2025 and 9/21/2025, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
Status of Claims
Claims 3-6, 8, and 11-18 has been cancelled by Applicant; therefore, Claims 1, 2, 7, 9, and 10 are currently pending in application 17/985,545.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 2, 7, 9, and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Independent Claim 1 recites, “calculating, by at least one computer, a block for a blockchain, wherein the block corresponds to at least one real property item” and “issuing a token of ownership for the at least one real property item upon determining that the threshold level of ownership acknowledgement has been met.” The Examiner believes that the Applicant is attempting to claim the concept of tokenization of a real (estate) property; however, the Examiner does not understand how the specifically claimed elements would work together, as the terminology and technology claimed are not consistent with commonly used and understood methodology.
For instance, calculating a block for a blockchain is a complex cryptographic process (often involving solving a computational puzzle in proof-of-work systems), and while a calculated block could permanently and securely link a real-world property to the blockchain. This is achieved through tokenization and smart contracts, neither of which are claimed nor explained in the specification in such a way as to enable use of the claimed invention.
Furthermore, when a real asset/ property is typically tokenized, real estate tokens are not issued once a single threshold level of ownership is determined. The total number of tokens to be issued is predetermined based on the property's total valuation, and individual investors receive their proportional tokens upon completion of their purchase, which is typically subject to a minimum investment amount set by the platform, not a collective ownership acknowledgement threshold.
The Applicants’ specification also fails to sufficiently describe the how a threshold level of ownership acknowledgement could be measured and/or calculated. The only portion of Applicants’ specification that describes the ownership acknowledge concept are the following paragraphs (Para 0012 and Para 0021- Para 0022):
“[0012] The inventive subject matter provides apparatus, systems and methods in which influencers utilize their fame to create demand for items of off-world real estate, and utilize distributed ledger technology to acknowledge ownership of such off-world real estate.
[0021] In general demand, marketplace, and publicly acknowledged recordation of ownership of off-world real estate items, can be established by an influencer engaging in an event at which tokens representing a limited number of the off-world real estate items are marketed, and utilization of a distributed ledger is used to manage ownership of the tokens.
[0022] In some embodiments the tokens are offered directly at the event, and in other embodiments, some of all of the marketed tokens are offered at another site.”
Claims 2, 7, 9, and 10 are also rejected as being dependent from claim 1, under the same rationale and reasoning as identified above.
Claim Rejections - 35 USC § 112 (b)
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.
Claims 2 and 7 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 2 recites that the real property item disclosed in independent 1 is an “unreachable real property item”. The specification fails to define what an “unreachable real property item” is, though the specification does give the example of celestial real estate as a real property item (Para 0019).
However, the Examiner is unclear how a token of ownership of unreachable or celestial real estate items can be determined and recorded. The owning of any off-world (celestial) real estate Article II of the Treaty on Principles Governing Activities of states in the Exploration and Use of Out Space, including the Moon and Other Celestial bodies (1966, See attached UN Treaty as NPL in PTO-892), which states: “Outer space, including the Moon and other celestial bodies is not subject to national appropriation by claim of sovereignty, by means of occupation or by any other means.” Furthermore, a Star/ unreachable property is not within Earth's jurisdiction and cannot be physically controlled or occupied, which are fundamental elements of property ownership. So, the Examiner is confused how ownership of unreachable/ off-world real estate could be legally determined in order to tokenize the asset* and have a valid contract of sale**.
Examiner note:
*Complying with Federal and State Laws in Offering Tokenized Real Estate Interests - Because each of these land tokens, rental tokens, and operation tokens would be considered securities in the U.S., these token offerings must be done in compliance with federal and state securities laws. These include the Securities Act of 1933 and Securities and Exchange Commission (SEC) regulations, as well as state securities laws and regulations, which are commonly referred to as Blue Sky Laws.
**Illegal subject matter in contracts - The subject matter is the goods or services that one party provides and the other party pays for. If the subject matter is illegal, the contract will not be valid. All terms of your contract must not contravene any federal or state law. If the formation or performance of the contract will require a party to break the law, the contract is invalid.
Claim 7 recites, “determining, by the at least one computer, a price for the real property based on the size of the block.” However, the Examiner is unclear how the price of a real property could be determined by the technical size of the block used to record it in a blockchain. The size of a blockchain “block” is a technical parameter related to data capacity and network efficiency, not the property's intrinsic or market value. In the case of tokenized real estate, the total market value of the property is divided into a set number of digital tokens. Each token represents a proportional ownership share, and its individual price is a reflection of its fraction of the total property value, not the data size of its blockchain entry. The block itself serves as an immutable, transparent record of the transaction data, providing security and verification, but its technical specifications do not correlate with the financial value of the asset it represents.
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, 7, 9, and 10 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter, specifically an abstract idea.
Claims 1, 2, 7, 9, and 10 are directed to a judicial exception (i.e., abstract idea), without providing a practical application, and without providing significantly more.
Under the 35 U.S.C. §101 subject matter eligibility two-part analysis, Step 1 addresses 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. If the claim does fall within one of the statutory categories, it must then be determined in Step 2A [prong 1] whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). See MPEP §2106.04. If the claim is directed toward a judicial exception, it must then be determined in Step 2A [prong 2] whether the judicial exception is integrated into a practical application. See MPEP §2106.04(d). Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in Step 2B whether the claim recites "significantly more" than the abstract idea. See MPEP §2106.05.
Examiner note: The Office’s 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) is currently found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), specifically incorporated in MPEP §2106.03 through MPEP §2106.07(c).
Regarding Step 1,
Claims 1, 2, 7, 9, and 10 are directed toward a process (method). Thus, all claims fall within one of the four statutory categories as required by Step 1.
Regarding Step 2A [prong 1],
Claims 1, 2, 7, 9, and 10 are directed toward the judicial exception of an abstract idea. Independent claim 1 is directed specifically to the abstract idea of recording a purchase agreement (legal/ accounting).
Regarding independent claim 1, the underlined limitations emphasized below correspond to the abstract ideas of the claimed invention:
A method of using distributed ledger to establish and manage ownership of real property, comprising:
calculating, by at least one computer, a block (ledger entry) for a blockchain, wherein the block (entry) corresponds to at least one real property item;
while the at least one computer is calculating the block (entry), determining, by the at least one computer, whether a threshold level of ownership acknowledgment for the at least one real property item has been reached (legally executed purchase agreement);
issuing a “token” of ownership (deed) for the at least one real property item upon determining that the threshold level of ownership acknowledgement has been met (legally executed purchase agreement); and
wherein, upon determining that a threshold level of ownership acknowledgement has been reached (final purchase agreement met): closing, by the at least one computer, the block; and adding, by the least one computer, the block (entry added to manual ledger) to the blockchain.
As the underlined claim limitations above demonstrate, independent claim 1 is directed to the abstract idea of Certain methods of organizing human activity (commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
Dependent claims 2, 7, 9, and 10 provide further details to the abstract idea of claim 1 regarding the received data, therefore, these claims include certain methods of organizing human activities for similar reasons provided above for claim 1.
After considering all claim elements, both individually and in combination and in ordered combination, it has been determined that the claims do not amount to significantly more than the abstract idea itself.
Regarding Step 2A [prong 2],
Claims 1, 2, 7, 9, and 10 fail to integrate the recited judicial exception into any practical application. The claims recite additional limitations which are hardware or software elements or particular technological environment, such as a “distributed ledger”, a “computer”, a “block” for a “blockchain”, and a “token” of ownership. However, these limitations are not enough to qualify as “practical application” being recited in the claims along with the abstract idea since these limitations are merely invoked as a tool to perform instruction of an abstract idea in a particular technological environment and/or are generally linking the use of the abstract idea to a particular technological environment or field of use, and merely applying and abstract idea in a particular technological environment and merely limiting use of an abstract idea to a particular field or a technological environment do not provide practical application for an abstract idea (MPEP 2106.05 (f) & (h)). The claims do not amount to "practical application" for the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
The relevant question under Step 2A [prong 2] is not whether the claimed invention itself is a practical application, instead, the question is whether the claimed invention includes additional elements beyond the judicial exception that integrate the judicial exception into a practical application by imposing a meaningful limit on the judicial exception. This is not the case with Applicant’s claimed invention. Automating the recited claimed features as a combination of computer instructions implemented by computer hardware and/or software elements as recited above does not qualify an otherwise unpatentable abstract idea as patent eligible. Examples where the Courts have found selecting a particular data source or type of data to be manipulated to be insignificant extra-solution activity include selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016); Applicant’s limitations as recited above do nothing more than supplement the abstract idea using additional hardware/software computer components as a tool to perform the abstract idea and generally link the use of the abstract idea to a technological environment, which is not sufficient to integrate the judicial exception into a practical application since they do not impose any meaningful limits. Dependent claims 2, 7, 9, and 10 merely incorporate the additional elements recited above, along with further embellishments of the abstract idea of independent claims respectively, but these features only serve to further limit the abstract idea of independent claims. Therefore, the additional elements recited in the claimed invention individually, and in combination fail to integrate the recited judicial exception into any practical application.
Regarding Step 2B,
Claims 1, 2, 7, 9, and 10 fail to amount to “significantly more” than an abstract idea. The claims recite additional limitations which are hardware or software elements or particular technological environment, such as a “distributed ledger”, a “computer”, a “block” for a “blockchain”, and a “token” of ownership. However, these limitations are not enough to qualify as “significantly more” being recited in the claims along with the abstract idea since these limitations are merely invoked as a tool to perform instruction of Abstract idea in a particular technological environment and/or are generally linking the use of the abstract idea to a particular technological environment or field of use, and merely applying and abstract idea in a particular technological environment and merely limiting use of an abstract idea to a particular field or a technological environment do not provide significantly more to an abstract idea (MPEP 2106.05(f) & (h)). The claims do not amount to "significantly more" than the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) add a specific limitation other than what is well-understood, routine and conventional in the field; (6) add unconventional steps that confine the claim to a particular useful application; nor (7) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
Dependent claims 2, 7, 9, and 10 merely recite further additional embellishments of the abstract idea of independent claim 1, but these features only serve to further limit the abstract idea of independent claim 1; however, none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limits. The addition of another abstract concept to the limitations of the claims does not render the claim other than abstract. Under the Interim Guidance on Patent Subject Matter Eligibility (PEG 2019), it specifically states that narrowing an abstract idea of claims do not resolve the claims of being "significantly more" than the abstract idea. Thus, the additional elements in the dependent claims only serve to further limit the abstract idea utilizing the computer components as a tool and/or generally link the use of the abstract idea to a particular technological environment.
Therefore, since there are no limitations in the claims 1, 2, 7, 9, and 10 that transform the exception into a patent eligible application such that the claims amount to significantly more than the exception itself, and looking at the limitations as a combination and as an ordered combination adds nothing that is not already present when looking at the elements taken individually, claims 1, 2, 7, 9, and 10 are rejected under 35 USC § 101 as being directed to non-statutory subject matter under 35 U.S.C. § 101.
Claim Rejections - 35 USC § 102
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 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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hutten et al. (Applicants’ Admissions to Prior Art).
Applicants’ background section of the specification, Para 0007-0008, discloses the following as prior art:
“Background
[0007] In a complex society, some form of publicly acknowledged recordation is needed to establish which entities own which properties. For example, ownership of real property is often recorded in a publicly accessible records of a county recorder's office, and ownership of money currency is often recorded on a ledger at a government recognized banking institution. More recently, distributed ledger technology has been used to establish and maintain ownership, with the distributed nature of the technology establishing the requisite public recognition.
[0008] Interestingly, although distributed ledger technology has been applied to virtual goods (e.g., crypto currencies and NFTs) and virtual spaces (in various video games), and even physically accessible real estate (via smart contracts), it has not been applied to off-world real estate. The reasons for this are not clear, but possibly involve the lack of demand causes by lack of functionality in the real world or a video game, and the perceived unlimited supply of off- world real estate.”
Therefore, Applicant discloses that the claimed invention of distributed ledger technology to establish and maintain ownership of physically accessible real estate (via smart contracts - A self-executing digital agreement stored on the blockchain that defines the terms/ threshold requirements of a property transaction) was in public use or otherwise available to the public before the effective filing date of the claimed invention (See MPEP, 2129 Admission a Prior Art).
2129 Admissions as Prior Art [R-07.2022]
I. ADMISSIONS BY APPLICANT CONSTITUTE PRIOR ART
A statement by an applicant in the specification or made during prosecution identifying the work of another as "prior art" is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988). Where the admitted prior art anticipates the claim but does not qualify as prior art under any of the paragraphs of 35 U.S.C. 102, the claim may be rejected as being anticipated by the admitted prior art without citing to 35 U.S.C. 102.
However, even if labeled as "prior art," the work of the same inventive entity may not be considered prior art against the claims unless it falls under one of the statutory categories. Id.; see also Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984) ("[W]here the inventor continues to improve upon his own work product, his foundational work product should not, without a statutory basis, be treated as prior art solely because he admits knowledge of his own work. It is common sense that an inventor, regardless of an admission, has knowledge of his own work.").
Consequently, the examiner must determine whether the subject matter identified as "prior art" is the inventor’s own work, or the work of another. In the absence of another credible explanation, examiners should treat such subject matter as the work of another.
II. DISCUSSION OF PRIOR ART IN SPECIFICATION
Where the specification identifies work done by another as "prior art," the subject matter so identified is treated as admitted prior art. In re Nomiya, 509 F.2d 566, 571, 184 USPQ 607, 611 (CCPA 1975) (holding applicant’s labeling of two figures in the application drawings as "prior art" to be an admission that what was pictured was prior art relative to the claimed improvement).
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 7, and 9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Johnson et al. (US 20200402168 A1)
As per independent Claim 1, Johnson discloses a method of using distributed ledger to establish and manage ownership of real property, comprising:
calculating, by at least one computer (See at least Para 0024, “Computing device 110 may be a server or host computing device or system for the risk exchange”), a block for a blockchain (See at least Fig.2B, and Para 0038, “… logical model of an exemplary blockchain.”; See also Para 0039-0045), wherein the block corresponds to at least one real property item (See at least Para 0013, “In some embodiments, various risk events may be defined that have a transaction value for a segment to proceed with the risk event. For example, a risk event may require a certain number of tokens for a segment to be assigned or operate with the risk event, conduct the risk event, and/or the like. A risk event may be or may include a business decision for the segment (for instance, a real estate group (segment) of an investment firm (entity) purchasing a commercial property (risk event)). The segment may record the risk event decision in the immutable ledger in exchange for the tokens to proceed with the business decision. In another example, alternatively, if a segment alleviates an associated risk event, the segment may receive tokens in the amount of the transaction value associated with the risk event. In various embodiments, risk decisions or transactions occurring via the risk exchange may be tracked and logged, for example, via an immutable ledger or other data storage structure. In some embodiments, at least a portion of the risk exchange may be implemented using blockchain or a similar immutable data platform.”);
while the at least one computer is calculating the block, determining, by at least one computer, whether a threshold level of ownership acknowledgment for the at least one real property item has been reached (See at least Para 0029, “Various implementations of a distributed ledger may include characteristics including, without limitation, a ledger, consensus, cryptography, provenance, and immutability. The ledger may include a shared, permissioned ledger which may operate as an append-only system of record in which new records may only be appended to the ledger and existing records cannot be deleted or modified. All participants within a network may have their own identical copy of the ledger and any changes to the ledger are reflected in all copies. Consensus is required to add information to the ledger. For example, in order for a new record or block to be created or a transaction to be written to an existing block, the record must be validated by a consensus algorithm. In general, a consensus protocol agreed to by participating members ensures that the ledger is updated only with network-verified transactions and, as a result, that all participants (or a threshold number of participants) agree on the network's validity. Non-limiting examples of consensus algorithms may include proof-of-work, Byzantine fault-tolerant replication, proof-of-stake, proof-of-trust, multi-signature, and/or the like. In some embodiments, transaction information 134 may be implemented as a proof-of-trust blockchain platform.”);
issuing a token of ownership for the at least one real property item upon determining that the threshold level of ownership acknowledgement has been met (See at least Para 0053, “In various embodiments, entity tokens 430 may be distributed based on various distribution factors. In a blockchain implementation, a smart contract may be used to implement or enforce token distribution. For example, entity tokens 430 may be distributed to segments 420a-n based on entity policies (for instance, favoring a first type of risk (real estate investments) over a second type of risk (emerging market investments), product generation pipelines (for example, different risk postures for different points in the pipeline), checkpoints (for instance, on a fiscal calendar quarterly basis, achievement of milestones, stock value thresholds, and/or other metrics), and/or the like. In some embodiments, risk exchange 450 may perform an initial distribution for each segment 420a-n and for any new segments 420a-n joining risk exchange 450. In various embodiments, risk exchange 450 may implement periodic rebalancing, for example, on a time basis (for instance, daily, quarterly, and/or the like) or based on certain triggering events (for instance, changes in risk posture, threshold value of tokens, threshold number of available entity tokens, market conditions (for example, stock price)), and/or the like).”; and
wherein, upon determining that a threshold level of ownership acknowledgment has been reached: closing, by the at least one computer, the block; and adding, by the at least one computer, the block to the blockchain (See at least Para 0058, “In some embodiments, the total acceptable risk and the spending/receiving of tokens may be managed by smart contracts of a blockchain implementation of distributed ledger 442.”).
As per Claim 7, Johnson discloses determining, by the at least one computer, a price for the real property based on the size of the block (See at least Para 0047, “Entity risk 310 may be a total entity risk value configured to represent the total amount of risk for the entity. For example, entity risk 310 may represent the risk appetite or risk position of entity 305, which may be the total level of risk entity 305 is prepared to accept. In some embodiments, entity risk 310 may be a numerical value, currency value, and/or the like. In other embodiments, entity risk may be a level, such as high, low, and/or the like. The amount of entity risk 310 may be arbitrary because it may be used to define the universe of risk for entity 305 within an associated risk exchange without reference to external values and/or because it depends on the quantification of the underlying risk decisions (for example, required tokens). In various embodiments, the amount of entity risk 310 may be defined automatically, for example, by risk exchange logic 120, for example, based on entity information, historical information, industry information, market conditions, regulatory requirements, risk parameters, and/or the like. …”, Examiner considers number of required tokens to be equivalent to size of block, which directly relates to total entity risk value).
As per Claim 9, Johnson discloses wherein the threshold level of ownership acknowledgment comprises a threshold amount of votes in favor of ownership (See at least Para 0053, Threshold amount of digital tokens sold – made available entity tokens. Examiner considers the Purchase of a token to be a vote in favor of ownership) from a community associated with the blockchain (See at least Para 0053, “In various embodiments, risk exchange 450 may implement periodic rebalancing, for example, … based on certain triggering events (for instance, changes in risk posture, threshold value of tokens, threshold number of available entity tokens, market conditions (for example, stock price)), and/or the like.”, Examiner considers threshold number of available entity tokens to be equivalent to a threshold amount of votes in favor of ownership, as an entity token would equate to a buyer purchase/ “yes” vote in favor of ownership).
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.
Claim 2 is rejected under 35 U.S.C. 103(a) as being unpatentable over Johnson in view of Song (US 2023/0169479 A1).
As per Claim 2, while Johnson does disclose that a “risk event” could be the different types of risk, to include a purchase (See at least Para 0013, “In some embodiments, various risk events may be defined that have a transaction value for a segment to proceed with the risk event.”; Para 0056, “In various embodiments, risk exchange 450 may categorize different types of risks (or “risk events”) 462a-n. In general, any type of function or activity by a segment may be determined to be a risk event 462a-n, such as a purchase, product launch, strategy, use of a particular product or platform, cyber security decisions, investments, human resources, and/or the like.”), Johnson fails to expressly discloses wherein the at least one real property item comprises at least one unreachable real property item.
However, the analogous art of Song discloses a system for a blockchain-based share substantial trade for an owner unspecified common asset and a method therefor, the system and the method allowing trade parties to perform a trade, on the basis of blockchain, for the share of a common asset for which no owner can be specified or ownership does not exist, by using tokens, and to exchange for cash the tokens used in the trade, so as to substantially trade the share of the common asset (See abstract); wherein the at least one real property item comprises at least one unreachable real property item (See at least Para 0021-0027, Common Asset, Celestial body).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have included wherein the at least one real property item comprises at least one unreachable real property item, as disclosed by Song in the system disclosed by Johnson for the advantage of providing a method of using distributed ledger technology to establish and manage ownership of property, with the ability to increase the efficiency and effectiveness of the method by incorporating the acquisition of a variety of possible property types (See KSR [127 S Ct. at 1739] “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).
Claim 10 is rejected under 35 U.S.C. 103(a) as being unpatentable over Johnson in view of Conley et al. (US 2021/0073212 A1).
As per Claim 10, Johnson fails to expressly disclose destroying, by the at least one computer, the token of ownership upon the destruction of the at least one real property item.
However, the analogous art of Conley discloses destroying, by the at least one computer, the token of ownership upon the destruction of the at least one real property item (See at least Para 0655, “Token authorities also allowed to destroy tokens. For example if a car is scraped, the title should cease to exist.”).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have included destroying, by the at least one computer, the token of ownership upon the destruction of the at least one real property item, as disclosed by Conley in the system disclosed by Johnson for the advantage of providing a method of using distributed ledger technology to establish and manage ownership of property, with the ability to increase the effectiveness of the method by incorporating a variety of mechanisms to handle and incorporate real-world changes to the at least one real property item (See KSR [127 S Ct. at 1739] “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).
Response to Arguments
Applicant's arguments filed on 5/20/2025, with respect to the rejection of Claims 1, 2, 7, 9, and 10, have been considered but are moot, based on the new grounds of rejection. The rejection will remain as NON-FINAL, based on the rejection above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found in the PTO-892 Notice of References Cited. The Examiner suggests the applicant review these documents before submitting any amendments.
Nichani (US 2022/0222657 A1) – Nichani discloses a method/ system for managing life cycle of a tokenized real asset (real estate) in a blockchain-based ecosystem (See at least Abstract, “Upon the end-of-term of the real asset, the asset tokens are terminated, and exit is enabled from the Blockchain-based ecosystem 100.”, Destruction of the asset would be considered an end-of-term event); and Para 0028, “[0028] Various embodiments of the invention disclose a method and system for managing life cycle of a tokenized real asset in a Blockchain-based ecosystem. The Blockchain-based ecosystem enables staking of one or more utility tokens by one or more stakeholders. The one or more stakeholders then deposit the one or more utility tokens into smart contracts on the Blockchain-based ecosystem. These staked utility tokens provide the stakeholder access to one or more functions or services on the Blockchain-based ecosystem. The Blockchain-based ecosystem further enables asset owners to submit one or more project proposals such as, for instance, a proposal for tokenizing a real asset. Upon receiving submission of the one or more project proposals, the Blockchain-based ecosystem initiates a voting process by one or more stakeholders to achieve a network consensus for project onboarding. Subject to network consensus, a token issuance platform then generates one or more asset tokens for the real asset which is then handed over to do a custodian in the Blockchain-based ecosystem. In an ensuing step, the one or more asset tokens are put up for sale on the token issuance platform. The proceeds from the sale are disbursed to the asset owner, and asset token contracts are deployed automatically on the Blockchain-based ecosystem through smart contracts with standard pre-set variables and subjected to a code audit. The one or more asset tokens are then distributed to one or more purchasers/investors (asset token holders) of the real asset in relation to the sale. The Blockchain-based ecosystem further enables trading and maintenance of the one or more asset tokens which includes, but is not limited to, maintaining money flow corresponding to the real asset by an operator managing the real asset, allowing the asset token holders to sell the asset tokens via an asset token exchange, and settling of rewards to the asset token holders via a settlement engine. Thereafter, the one or more asset tokens are terminated, and the asset token holders can exit the Blockchain-based ecosystem upon the end-of-term of the real asset. This can be initiated by either a buyback of the real asset from the initial property owner, full sale of the real asset and partial exit for investors”; [0132] “At step 1604, project proposal submission module 110 enables one or more asset owners to submit one or more project proposals on Blockchain-based ecosystem 100. In an embodiment, a project proposal submitted by an asset owner is for the tokenization of a real asset such as, but not limited to, real estate.”).
Amin et al. (US 20210243011 A1) - Amin discloses a network platform, system and method for high volume transactions requiring verifiable transaction tracking (See at least Fig.23, Price / number of tokens relationship)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN P OUELLETTE whose telephone number is (571)272-6807. The examiner can normally be reached on M-F 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynda C Jasmin, can be reached at telephone number (571) 272-6782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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December 4, 2025
/JONATHAN P OUELLETTE/Primary Examiner, Art Unit 3629
/LYNDA JASMIN/Supervisory Patent Examiner, Art Unit 3629