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 .
This communication is a Non-Final Office Action in response to Applicant’s request for continued examination, filed on November 10, 2025.
Claims 1, 4-6, and 9-10 have been examined in this application. All other claims are canceled.
No new information disclosure statement (IDS) has been submitted.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.
Response to Arguments
Applicant's arguments, pages 6-12, regarding claim rejections under 35 U.S.C. 101 have been fully considered, but they are not persuasive.
Applicant states that the “Applicant has amended claim 1 to recite” before generating claim 1 on pages 6 and 7. The underlined portions in the arguments, pages 6-7 of claim 1, as argued by the Applicant are not consistent with the amendments as filed because of the underlined portions. Examiner believes Applicant is trying to emphasize the limitations instead of actually highlighting amended language.
Applicant argues that the claims may involve a judicial exception but do not recite a judicial exception. The claims do not capture an abstract idea under certain methods of organizing human activity, but “rather set forth a particular technological process for tokenizing and storing ownership of a digital design on the blockchain network;” Id., 7-8. Applicant further argues that the Examiner has failed to consider the claims as a whole, citing the MPEP, and that even if an abstract idea is recited, the claims recite a practical application. Specifically, Applicant argues that the “claim is not merely reciting the implementation of previously known business practices-hence the absence of any prior art rejection. Rather, the claims recites a particular solution to managing and transferring ownership of designs of tobacco related products using blockchain technology;” Id., 9-10. The Applicant argues that the claims capture the improvement described in the specification because the claims capture a concept that allows outside input to design tobacco articles by the public instead of just companies; therefore, the claims utilize a server, a seller terminal, and a blockchain network to digitize, manage, record ownership of the designs for tobacco-related articles;” Id., 11.
The Examiner respectfully disagrees. Under MPEP §2106, the claims are analyzed to determine whether they recite:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).
If the claims recite a judicial exception, under section (1), and fail to integrate the abstract idea into a practical application, section (2), then the claims are further analyzed to determine whether they:
(3) add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP §2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
The instant claims are found to be directed to an abstract idea of merely storing or registering new ownership information including historical data and provisioning sales history data without significantly more.
The abstract idea is characterized under certain methods of organizing human activity, including commercial interactions including sales activities or behaviors, and business relations. The claims as a whole are directed to the receiving target type of tobacco-related article information, sending the design information of the tobacco-related article, receiving data of the target design of the tobacco-related article, issuing a token including a unique ID for the target design information, in response to a purchase of the token by a user, storing new ownership information and sales history information, and providing sales history information. Therefore, contrary to Applicant’s arguments, the claims do recite an abstract idea and as such is clearly characterized under the above abstract idea category and sub-categories. Receiving design information, providing a design, and issuing a token (NFT) including an identifier for the design before a sale for the token is made and ownership data along with any other data is updated and made available to the new owner clearly captures an abstract idea defined under certain methods of organizing human activity, including commercial interactions such as sales activities and business relations. The business relationship between the creator of the sold work and the buyer of the work is clearly evident based on at least the sale of the work, the transfer of ownership between parties, and updating ownership information and providing access to data for the new owner. The claims explicitly highlight business activities and behaviors. Without a sale, the transfer of the work wouldn’t occur and thus the activity of modifying ownership data and being able to view ownership data and transaction history wouldn’t be possible. The claims, as will be discussed more later, merely utilize additional elements to apply and carry out the abstract idea. The claims also merely link the use of the judicial exception to a particular technological environment or field of use; i.e. blockchain and NFT usage. In accordance, with MPEP 2106, the claims are analyzed as a whole, and under the broadest reasonable interpretation, amounting to nothing more than an abstract idea that is further classified under one of the identified three abstract idea groupings. The claims are abstract; Step-2A, Prong I.
Regarding the Applicant’s arguments that the claims include additional elements that amount to a practical application, a solution to a technical problem, rendering any abstract idea a practical application are not persuasive. Under Step-2A, prong II Examiner finds no additional elements in the claims as a whole that would amount to a practical application. For instance, the claims recite the following additional elements: a server, a seller terminal, a blockchain network, memory configured to store a program, and a processor configured to execute the program. Under the broadest reasonable interpretation, the claims capture a scope directed solely to a server and what the server does. The other entities including the seller terminal and a high-level recitation of “a blockchain,” are not part of claimed server; they are distinct and separate entities from the server. The seller terminal and the blockchain are not positively recited as performing any functions; thus, they are not part of the claimed scope. As can be seen from above, the Examiner nonetheless included the seller terminal and the blockchain as additional elements even though technically they do not have to be under Step-2B, prong II and when applying BRI. Contrary to Applicant’s arguments, a technical solution rooted in computer technology or provides a technical solution to a technical field / device is not captured by the claims. Providing an entity to allow exchange of designs through NFTs and a blockchain at a high level is not sufficient to amount to a practical application. Buying/selling of designs using the claimed server issuing an NFT on a blockchain network for the design and updating ownership information is not sufficient to amount to a practical application. The additional elements are recited at a high level of generality, performing generic computer functions such as receiving data, sending data, generating data, and updating data/causing an output. The use of NFTs with the design of the tobacco-related product and the uploading of the NFT to a blockchain amount to mere generation of data and sending a request by the server to register the NFT by a blockchain network. The server is not the blockchain network itself. Also, the wallet, which is assumed to be linked to the server, is nothing more than a account that can be used by users to buy and sell the works / tobacco-related articles. At best, the additional elements are utilized to simply automate the abstract idea instead of providing a technical solution to either the server or the technical field of blockchain and NFTs. The additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The additional elements are also arguably linking the use of the judicial exception to a particular technological environment or field of use without actually amounting to a practical application that solves a technical problem rooted in computer technology/technical field; MPEP 2106.05(h). Finally, the claims and all additional elements are determined to amount to insignificant extra-solution activity to the judicial exception; MPEP 2106.05(g). The entire limitations of receiving target type information, transmitting the basic design information, receiving the target design information, issuing a non-fungible token including data, and based on a transaction, storing and providing ownership data and other data amount to extra-solution activity. The Claims do not capture enough technical elements that would deem the claims patent eligible or amounting to a practical application. The cited portions of the Specification fail to include enough technical elements and at best “sets forth an improvement but in a conclusory manner… the examiner should not determine the claim improves technology;” MPEP 2106.04(d)(III).
Having claims rejected under prior art or not is not part of the analysis of determining whether claims are patent eligible under 101. MPEP 2106.04(I) states “The Supreme Court' s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions. For example, the mathematical formula in Flook, the laws of nature in Mayo, and the isolated DNA in Myriad were all novel or newly discovered, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were “‘basic tools of scientific and technological work' that lie beyond the domain of patent protection.” Myriad, 569 U.S. 576, 589, 106 USPQ2d at 1976, 1978 (noting that Myriad discovered the BRCA1 and BRCA1 genes and quoting Mayo, 566 U.S. 71, 101 USPQ2d at 1965); Flook, 437 U.S. at 591-92, 198 USPQ2d at 198 (“the novelty of the mathematical algorithm is not a determining factor at all”); Mayo, 566 U.S. 73-74, 78, 101 USPQ2d 1966, 1968 (noting that the claims embody the researcher's discoveries of laws of nature). The Supreme Court' s cited rationale for considering even “just discovered” judicial exceptions as exceptions stems from the concern that “without this exception, there would be considerable danger that the grant of patents would ‘tie up' the use of such tools and thereby ‘inhibit future innovation premised upon them.' ” Myriad, 569 U.S. at 589, 106 USPQ2d at 1978-79 (quoting Mayo, 566 U.S. at 86, 101 USPQ2d at 1971). See also Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 (“Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.”). The Federal Circuit has also applied this principle, for example, when holding a concept of using advertising as an exchange or currency to be an abstract idea, despite the patentee' s arguments that the concept was “new”. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a new abstract idea is still an abstract idea”) (emphasis in original).”
Emphasis added.
Finally, regarding Step-2B, Applicant argues that the claims amount to significantly more than the abstract idea. The Examiner respectfully disagrees with Applicant’s arguments. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above. The dependent claims further describe the abstract idea.
The claims are not patent eligible.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1, 4-6, and 9-10 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Per claims 1 and 6, the claims are directed to a server and what a server does. However, the claims recite “issuing, on a blockchain network, a… (NFT)…” The server, indicated as Server 110 in the Specification, does not include the blockchain. The Specification was reviewed thoroughly and no support is found for a server issuing a NFT on a blockchain or a blockchain network. Paragraph 0003 is the only Paragraph in the entire Specification that actually discloses the terms “blockchain network” and the paragraph elaborates on the NFTs being “based on a blockchain network” and storing NFTs on a blockchain. Paragraph 0003, all the figures, and all of the entire Specification fails to disclose how the server can issue on a blockchain network an NFT when the blockchain network is not part of the server nor is the blockchain itself on the server. The interpretation, based on one of ordinary skill in the art, is that the server can send to a blockchain network a request to register information obtain information from the blockchain network. The claims do not recite that the server sends information to a blockchain or receives information from a blockchain, the claims state that the server itself performs the claim limitation. The claims are rejected because of lack of support for the limitation at issue and for failing to disclose how the server can perform said issuing limitation.
The dependent claims are rejected under the same rational and for mere dependency on the rejected claims.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4-6, and 9-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Per claims 1 and 6, the claims recite a last limitation, which recites: providing, to the seller terminal, the sales history information contained in a wallet of the user of the seller terminal. The claim is recited from the perspective of the server. As such, the server is interpreted as providing the seller terminal the sales history information contained in a wallet. However, the remainder of the limitation is the cause of the rejection as it is not clear whether the wallet is of the user stored on the server or the wallet is a wallet of the user that is on the seller terminal. Because the seller terminal and the server are distinct and separate entities, they cannot possibly be interpreted as a single entity; see Specification and at least Figure 1. As a result, it is not clear whether the server provides the information from a wallet of a user that it has access to or whether it provides said information to the second terminal, wherein the information is “a wallet of the user of the seller terminal.” If the wallet is at the seller terminal, then what is the point of providing the information that the seller terminal already has. Per Specification, the server is said to generate a wallet for the user, Paragraph 0042, at best this is interpreted to mean that the wallet is generated and stored at the server. On the other hand, the claim is not clear and could be interpreted in way that makes the wallet be present at the seller terminal. As a result, it’s not clear which interpretation is meant by the claim limitation, resulting in the claim and all dependent claims being indefinite. Applicant may amend the claim to clearly convey how the information is conveyed to the seller terminal from the server and in relation to the wallet, wherein the wallet is not at the seller terminal. If the wallet is at the seller terminal and not in the control or possession of the server, then the server cannot provide said information based on the wallet because the server wouldn’t be in control of the wallet. All dependent claims are rejected for mere dependency on the rejected claims.
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, 4-6, and 9-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1, 4-6, and 9-10 fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter).
Claims 1, 4-6, and 9-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of merely storing or registering new ownership information including historical data and provisioning sales history data without significantly more.
The abstract idea is categorized under certain methods of organizing human activity. The abstract idea is further characterized under commercial interactions including sales activities and business relations. The claims amount to merely updating ownership information of a product as a result of a sale of the product to a new owner, providing information regarding sales and ownership histories. The product is a product that is issuing as an NFT on a blockchain. The product having design elements. Such registration of ownership of products in response a transaction amounts to the above identified abstract idea and groupings.
Claim 1, in pertinent part, recites:
A method of managing design information of a tobacco-related target article… the method comprising:
receiving target type information of the tobacco-related target article… the target type information including a type or model of the tobacco-related target article;
transmitting… basic design information based on the target type information, the basic design information including device specifications, dimensions of a display, and contents to be displayed on the display corresponding to the target type information;
receiving target design information of the tobacco-related target… the target design information including a rendered image file of a design of the tobacco-related target article;
issuing… a non-fungible token (NFT) that assigns a unique identification value to the target design information, the NFT including ownership information indicating a seller user…as an initial owner of the target design information;
in response to a purchase of the NFT by an administrator of the server from the user of the seller terminal, storing ownership change information and sales history information of the NFT… the ownership change information indicating the administrator of the server as an owner of the target design information, and sales history information indicating the purchase by the administrator from the server from the user of the seller terminal; and
providing, to the seller terminal, the sales history information contained in a wallet of the user of the seller terminal.
The judicial exception is not integrated into a practical application. The claims recite the following additional elements: a server, a seller terminal, a blockchain network, memory configured to store a program, and a processor configured to execute the program. The additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as receiving data, sending data, issuing/generating data, storing data, outputting a response or providing access to data as a outcome. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. The dependent claims further describe the abstract idea. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above.
The claims are not patent eligible.
References
The following references are provided to help advance prosecution. The claims fail to clearly capture the scope of what the Applicant deems as their invention; resulting in an ambiguous effort to try and reject the claims under prior art. However, the concept of generating NFTs, settling transactions for the NFTs, and updating ownership of the NFTs is well settled in the art; it is not novel. The use of NFTs on products is also not novel as this is an obvious application to one of ordinary skill in the art.
For example, U.S. Patent Application Publication 2021/0311931 to Prajapati et al. teaches the “term “transferable data object” refers to electronically managed data objects made available for transfer between user profiles. Transferable data objects may reflect data objects that correspond with physical object(s) that may be transferred along with a data object. For example, a transferable data object may be a digital representation of a physical object made available for transfer between user profiles, and/or an electronically managed embodiment of a virtual object, that are transferable between users associated with particular user profile(s) via a transfer processing system. Non-limiting examples of a transferable data object include a real-world product, collectible, item, commodity, furniture, and/or other property, and/or virtual item, virtual collectible, virtual data, virtual commodity, in-game item, a non-fungible token (NFT), and/or other virtual property.
Likewise, U.S. Patent Application Publication 2023/0274244 to Quigley et al. teaches systems and methods that generate data representing an analytic result relating to at least one of a state, a workflow, or an event in a digital token system, including a digital token system that cryptographically links a set of digital tokens to instances of a set of real-world entities. The systems and methods produce a trading analytic by processing a set of collected data, structuring and filtering the collected data to obtain a multi-dimensional structured data set, and querying the multi-dimensional structured data set. Systems and methods further leverage a set of data collection services configured to collect data from one or more interfaces, a set of workflows configured to produce event data, and a data store configured to store collected attribute data. According to some embodiments of the present disclosure, a method for enforcing digital rights management (DRM) associated with non-fungible tokens (NFTs) is disclosed. The method includes receiving a request to generate an NFT, the request including a digital asset and owner information relating to an initial owner of the NFT, generating an asset encryption key, and encrypting the digital asset based on the asset encryption key to obtain an encrypted digital asset. The method further includes encrypting the asset encryption key using a public key of the initial owner of the NFT to obtain an encrypted asset encryption key, minting the NFT based on the encrypted asset encryption key and the encrypted digital asset, wherein the NFT comprises a set of digital attributes that include the encrypted asset encryption key, and updating a digital ledger with the NFT and updating ownership data of the NFT to indicate an account address of an account of the initial owner on the distributed ledger.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on for PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EL MEHDI OUSSIR whose telephone number is (571)270-0191. The examiner can normally be reached M-F 9AM - 5PM.
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Sincerely,
/EL MEHDI OUSSIR/Primary Examiner, Art Unit 3699