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 Final Office Action in response to Applicant’s amendment filed on April 8, 2026.
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.
Response to Arguments
Applicant's arguments, pages 6-10, regarding claim rejections under 35 U.S.C. 101 have been fully considered, but they are not persuasive.
Applicant argues that claim 1 is directed to patent eligible subject-matter. Applicant emphasizes the second limitation “transmitting… wherein the basic design information is provided in a form that allows the seller terminal to access a manufacturing tool linked with the server” and argues that the server’s performs centralized technical processing to generate and manage product design data not just merely record transaction information. Applicant argues that the server operates in a technical manner for handling products design data and digital design assets.
Applicant also argues that the blockchain-based NFT does not merely capture a field-of-use. Instead, the blockchain is used to manage data to prevent tampering and enable traceability of the design assets. Further, Applicant argues that the claimed scope improves / provides a technical solution for generating and managing product design data. Id., 6-9.
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, the Examiner finds no additional elements in the claims as a whole that would amount to a practical application. Applicant’s argument directed to the second limitation are not persuasive. The amendment focuses on the seller terminal “to access a manufacturing tool linked with the server.” The seller terminal is not part of the claimed scope, which is directed to the server and what the server does. As a result, the limitation added has no weight when considering the claims under the broadest reasonable interpretation. At best the added limitation merely provides the design information to the terminal in a form, wherein the form could be any form to the seller terminal. How the seller terminal access the tool is irrelevant as it is not positively recited and the seller terminal is not part of the claimed scope that is clearly directed to the server.
The following are deemed additional elements in the claims: a server, a seller terminal, a blockchain based non-fungible token (NFT), 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 based NFT are not part of claimed server; they are distinct and separate entities from the server. The seller terminal and the generation of the NFT on the blockchain are not captured by the claims. As can be seen from above, the Examiner nonetheless included the seller terminal and the blockchain based non-fungible token (NFT) as additional elements even though technically they do not have to be under Step-2B, prong II and when applying BRI. The combination of additional elements fail to amount to a practical application. They are recited at a high level of generality amounting to mere instructions carried out by a generic device. The additional element require a generic computer to carry out the claimed scope/additional elements.
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 is not sufficient to amount to a practical application. Buying/selling of designs using the claimed server 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. 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).
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 § 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. Issuing a NFT for the design of a product and selling and recording the sales histories of the design/NFT clearly capture the above abstract idea, abstract grouping, and abstract idea sub-grouping identified above.
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, wherein the basic design information is provided in a form that allows the seller terminal to access a manufacturing tool linked with the server;
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… 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.
The judicial exception is not integrated into a practical application. The claims recite the following additional elements: a server, a seller terminal, a blockchain-based non-fungible token (NFT), 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. Furthermore, then claimed scope including the additional elements fail to integrate the abstract idea into a practical application because they simply add insignificant extra-solution activity to the judicial exception and generally link the use of the exception to a particular technological environment / field of use.
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.
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 EL MEHDI OUSSIR whose telephone number is (571)270-0191. The examiner can normally be reached M-F 9AM - 5PM.
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, NEHA PATEL can be reached on 571-270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Sincerely,
/EL MEHDI OUSSIR/Primary Examiner, Art Unit 3699
Prosecution Insights