DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/10/2025 has been entered.
Acknowledgements
Claims 1, 21, and 28 have been amended. Claims 2, 8-20, 22, and 29 were previously canceled. Claims 1, 3-7, 21, 23-28, and 30-34 are pending and presented for examination.
Response to Arguments
Applicant's arguments, filed 10/10/2025, have been fully considered but they are not persuasive.
Applicant’s remarks state –
“However, these portions of Zhang do not disclose an NFT minted using the generated combined image, as recited in the exemplary claim 1. For example, the instant Specification describes that a collector can use a collector application to take a picture. Specification ¶ [0109]. The creator can then look at and approve the image by tapping their NFC card. Id. The card will add their signature or custom logo to the image after it has been validated by the application running on the collector device. Id. (emphasis added). The combined image will be used in the NFT that is generated when the application running on the NFT collector device 1016 synchronizes with the server 1008. Id. (emphasis added).
In contrast, the system of Zhang enables anyone with a Twitter account to '"sign' any NF that has been created on the Ethereum blockchain." Id. (emphasis added). A user "A" of the system of Zhang mints an NFT and then sends an autograph request to a Youtuber "Z." Id., p. 6
(emphasis added). The system of Zhang enables signatures to "be added to existing NFTs to give
them more value." Id. As such, the NFTs of Zhang already appear to exist prior to combination
with the signature. See id. (emphasis added). Thus, while describing adding signatures to existing NFTs, Zhang does not appear to describe minting an NFT using a generated combined image of the signature and the image, as recited in the exemplary claim 1. See id., pp. 6, 8 (emphasis added).
Moreover, while page 8 of Zhang appears to disclose an image including the text "Signed:" overlain upon the image, the screenshot does not include a caption describing how the screenshot relates to elements of the system of Zhang. Nor does the screenshot appear to show an NFT that is minted using the generated combined image, as recited in the exemplary claim 1 as amended. See Zhang at 8 (emphasis added).
Thus, Zhang, alone or in combination with the other cited references, does not disclose
receiving a confirmation indicating that a second computer device received an encrypted version of an NFT template for minting an NFT, where the NFT is minted using an image generated at the second computer device combined with a transmitted signature. Independent claims 21 and 28, as amended, recite analogous features to those in amended claim 1. As such, Applicant requests withdrawal of this rejection based on the amended claims 1, 21, and 28.”
In response to the Applicant’s remarks, the current claimed invention does not claim how the NFT is minted, nor does it claim how the minting uses the combined image. The language merely claims that the combined image is somehow involved in minting of the NFT. On pg. 6 of Zhang “How AutographNFT Is Bringing Authenticity to NFTs” (herein as “Zhang”), Zhang discloses an NFT is minted by “A” using a screenshot of a video, i.e. image generated at the second computer device, “A” requests for the image to be signed by sending the request to “Z,” “Z” autographs “A’s” NFT, i.e. the image generated at the second computer device is combined with the transmitted signature to generated a combined image, thereby creating, i.e. minting, the autographed NFT, i.e. the NFT using the combined image. The plain meaning of “minting” means to make, create, or produce, and the instant specification has not suggested otherwise. Therefore, the autographed NFT is “minted” because it did not exist prior to the NFT being autographed. The autographed NFT has more value than the NFT that has not been autographed pg. 6 Adding New Value to Existing NFTs, thereby further suggesting that they are two separate and different items. The autographed NFT is minted using the generated combined image by the mere fact that the autographed NFT itself is the generated combined image of the previous non-autographed NFT, i.e. image, and the autograph, i.e. signature. On pg. 8 of Zhang, the depiction on the left with the green background is an image, and overlaid on the image on the bottom right are two signatures as denoted by “Signed:”. While there is no caption assigned to this figure, one of ordinary skill in the art can reasonably conclude that this is an autographed NFT based on what has already been discussed on pg. 6 of the prior art.
Therefore, under the broadest, most reasonable interpretation, claims 1, 3-7, 21, 23-28 and 30-34 stand rejected under 35 U.S.C. 103 as being unpatentable over Shapiro et al. U.S. 2022/0309491 in view of Holland et al. U.S. 2022/0393873, in view of Zhang “How AutographNFT Is Bringing Authenticity to NFTs,” and further in view of Tang et al. U.S. 2023/0108366.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3-7, 21, 23-28 and 30-34 are rejected under 35 U.S.C. 103 as being unpatentable over Shapiro et al. U.S. 2022/0309491 (herein referred to as “Shapiro”) in view of Holland et al. U.S. 2022/0393873 (herein referred to as “Holland”), in view of Zhang “How AutographNFT Is Bringing Authenticity to NFTs,” and further in view of Tang et al. U.S. 2023/0108366 (herein referred to as “Tang”).
Re Claim 1, Shapiro discloses a computer-implemented method for cryptographic asset generation, the computer-implemented method comprising:
generating, by a first computer device, a non-fungible token (NFT) template comprising a digital collectible and metadata identifying a first user of the first computer device [0061] – “creation data corresponding to the creation of the creative work is generated (e.g., generated by software tools used to create the creative work) and associated with the NFT,” [0042] – “creation data may include…a user ID”;
sending, by the first computer device, the NFT template to a server for validating the NFT template based on the metadata [0062] – “a third party may review the creation data to confirm that the creation data appears authentic,” thereby suggesting that the creation data is “sent” or “transmitted” to a third party for review;
receiving, by the first computing device, an encrypted version of the NFT template from the server, the NFT template encrypted using a shared secret key to prevent duplicates of the NFT template from being generated [0077], [0107] – the file(s), e.g. creation data, embodying the creative work linked to the NFT is digitally encrypted using a key held by a third party, [0072] – “If the creator has never accessed the decrypted file, then a vouched, chain of custody NFT can be created that ensures buyers that not even the creator can access the file embodying the creative work, thereby enforcing whatever scarcity is promised in a contract associated with the NFT transfer”;
sending, by the first computer device, the encrypted version of the NFT template received from the server to a second computer device of a second user for minting an NFT by the second user by […] [0154] – “the association between the NFT and the creative work and/or corresponding implementation file is…managed by a software agent (on the blockchain or off the blockchain),” “software agent is separate from the smart contract that minted the NFT and may be implemented on the blockchain or off the blockchain,” thereby suggesting that a second device is minting the NFT and receives the creation data; [0152] – “minting the NFT via the smart contract includes associating the NFT with a creative work and/or an implementation file,” [0107] – “one or more files associated with the NFT are digitally encrypted using a key held by a third party, e.g. implementation file(s), creation data, etc.”;
receiving, by the first computer device, a notification from the server comprising: […] (2) a count of a number of minted NFTs associated with the first user [0157] – “publicly-viewable information may include…(iii) an indication of the current render count corresponding to how many times the creative work associated with the NFT has been previously rendered.” If the user only has one minted NFT, then an authorized render count of one would be equivalent to the number of minted NFTs associated with said user.
However, Shapiro does not expressly disclose
writing, by the first computer device, the encrypted version of the NFT template received from the server to a short-range wireless communication device, and
causing the short-range wireless communication device to transmit the encrypted version of the NFT template to the second computer device using short-range wireless communication.
Holland discloses systems and methods for management of non-fungible tokens and corresponding digital assets. Specifically, Holland discloses
writing, by the first computer device, the encrypted version of the NFT template received from the server to a short-range wireless communication device [0111] – “The media device 205 (i.e. first computer device) may include a communication interface 255…The communication interface 255 may include a short-range wireless transceiver 260 (i.e. short-range wireless communication device),” a transceiver can receive and/or transmit communications, therefore, sending to a transceiver for it to transmit the communications is analogous to writing to the transceiver, and
causing the short-range wireless communication device to transmit the encrypted version of the NFT template to the second computer device using short-range wireless communication [0111] – “The short-range wireless transceiver 260 may receive and/or transmit communications 272 with a short-range wireless transceiver 275 of a local device 270 (i.e. second computer device) over one or more short-range communication signals following a short-range communication protocol.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Shapiro’s system for creating and rendering NFTs on a blockchain with the teachings of short-range wireless communication in Holland. The combination teaches sending the encrypted creation data via a short-range wireless communication device. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself – that is, sending by writing the encrypted creation data to a short range wireless communication device and causing the device to transmit the encrypted creation data to another device using short range wireless communication. In the claim language, the short range wireless communication device acts as an intermediary communication interface. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
However, Shapiro in view of Holland do not explicitly teach
receiving, at the first computer device from the second computer device, a request for a signature for an image generated at the second computer device;
in response to receiving the request for the signature, causing the short-range wireless communication device to transmit the signature to the second computer device;
wherein the image generated at the second computer device is combined with the transmitted signature to generate a combined image, and
wherein the NFT is minted using the generated combined image comprising the image generated at the second computer device and the transmitted signature.
Zhang discloses AutographNFT. Specifically, Zhang discloses
receiving, at the first computer device from the second computer device, a request for a signature for an image generated at the second computer device pg. 6, 3rd paragraph – “Using a screenshot from one of Z’s videos, A mints an NFT (i.e. an image generated at the second computer device). Then, through the AutographNFT interface, she (i.e. second computer device) sends an autograph request to Z (i.e. first computer device),” pg. 4, 4th paragraph – “AutographNFT allows non-fungible tokens to be digitally autographed with a web2 ID,” pg. 5, 3rd paragraph – “Signers can easily check and execute sign requests within Alchemy NFT on their mobile devices or computers,” thereby suggesting the receiving and transmitting the request for a signature are performed by computers and/or devices;
in response to receiving the request for the signature, causing the short-range wireless communication device to transmit the signature to the second computer device pg. 6, 3rd paragraph – “Z accepts the offer and autographs A’s NFT…A walks away with a unique collectible – the autographed NFT – in her collection.”
wherein the image generated at the second computer device is combined with the transmitted signature to generate a combined image pg. 6, Adding a Layer of Authenticity to NFTs – the NFT from A, i.e. image, is autographed, i.e. combined with the transmitted signature, to create the unique collectible, or the autographed NFT, i.e. combined image and
wherein the NFT is minted using the generated combined image comprising the image generated at the second computer device and the transmitted signature pg. 8 – the autographed NFT is analogous to the NFT minted using the generated combined image by the mere fact that the autographed NFT itself is the generated combined image. The mere depiction of the image overlaid with the signatures (as denoted by “Signed:”) suggests that the autographed NFT is minted, i.e. created.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Shapiro in view of Holland’s system for creating and rendering NFTs on a blockchain using a short-range wireless communication device with the teachings of autographing NFTs in Zhang. The combination teaches providing an NFT that includes the autograph of the creator. One would be motivated to make this combination to facilitate authentic connection and value, eliminate plagiarism, and improve or augment the aspects of the assets themselves Zhang, pg. 4, 3-5th paragraphs.
However, Shapiro in view of Holland and Zhang do not explicitly teach
receiving, by the first computer device, a confirmation from the second computer device indicating that the second computer device received the encrypted version of the NFT template for minting the NFT;
receiving, by the first computer device, a notification from the server comprising: (1) an indication that the NFT was minted, using the generated combined image, on a blockchain.
Tang discloses systems for encryption using blockchain distributed ledgers. Specifically, Tang discloses
receiving, by the first computer device, a confirmation from the second computer device indicating that the second computer device received the encrypted version of the NFT template for minting the NFT Fig. 3 310A, [0054] – user may upload documents to be included on the NFT, once all the necessary parameters are selected and desired documents are uploaded, user may select “Mint NFT,” the ability to select “Mint NFT” serves as a confirmation that the necessary information was uploaded/received;
receiving, by the first computer device, a notification from the server comprising: (1) an indication that the NFT was minted, using the generated combined image, on a blockchain [0061] – “the minted NFT along with its new token ID is provided to the user device 502 and may be displayed, via a user interface of the user device 502, to the user,” thereby serving as a notification that the NFT was minted on a blockchain.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Shapiro in view of Holland and Zhang’s system for creating and rendering NFTs on a blockchain with the teachings of a user device receiving confirmation/notification related to the minted NFT in Tang. The combination would teach a creator receiving confirmation/notification that a NFT associated with their creative work has been minted. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
Re Claim 3, Shapiro in view of Holland, Zhang, and Tang teach the computer-implemented method of claim 1, and Shapiro in view of Holland, Zhang, and Tang further teach wherein the short-range wireless communication comprises at least one of: near field communication (NFC), Zigbee, Bluetooth, Wi-Fi, radio frequency identification (RFID), Z-wave, infrared (IR) wireless, 3.84 MHz wireless, EMV chips, or minimum-shift keying (MSK) Holland, [0111] – Bluetooth, NFC, etc.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Shapiro’s system for creating and rendering NFTs on a blockchain with the teachings of different short-range wireless communication standards in Holland. These short-range wireless communication standards are well-known in the art. Therefore, it would have been obvious to try because choosing from a finite number of identified, predictable solutions would yield a reasonable expectation of success.
Re Claim 4, Shapiro in view of Holland, Zhang, and Tang teach the computer-implemented method of claim 1, and Shapiro in view of Holland, Zhang, and Tang further teach wherein minting of the NFT by the second user causes the second computer device to obtain a digital proof of a physical contact between the first computer device and the second computer device.
The instant specification discloses “The NFT generated serves as digital proof of, e.g. a face-to-face physical contact between the creator and collector” in at least paragraph [0086]. Therefore, under the broadest, most reasonable interpretation in light of the specification, the minted NFT, as taught in Shapiro in at least paragraph [0072], reasonably reads upon the recited claim language because the minted, or generated, NFT is in it of itself the digital proof of the physical contact.
Re Claim 5, Shapiro in view of Holland, Zhang, and Tang teach the computer-implemented method of claim 1, and Shapiro in view of Holland, Zhang, and Tang further teach further comprising:
prior to sending the encrypted version of the NFT template to the second computer device, personalizing, by the first computer device, the encrypted version of the NFT template received from the server using at least one of: a second image, a logo, a digital mark/signature, second metadata, a geolocation of the first computer device, a geolocation of the second computer device, a digital ticket, a video, a ticker, or a message Tang, [0060] – “watermarked version of encrypted documents.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Shapiro’s system for creating and rendering NFTs on a blockchain with the teachings of watermarked encrypted documents in Tang. The combination teaches personalizing the encrypted version of the NFT template using at least a digital mark. One would be motivated to make this combination to provide a layer of privacy, such that not everyone with the ability to find the NFT would be able to access the documents Tang, [0060].
Re Claim 6, Shapiro in view of Holland, Zhang, and Tang teach the computer-implemented method of claim 5, and Shapiro in view of Holland, Zhang, and Tang further teach wherein the second computer device is caused to mint the NFT responsive to the geolocation of the second computer device being within coordinates defining a geofence established by the first computer device.
Holland discloses systems and methods for management of non-fungible tokens and corresponding digital assets. Specifically, Holland discloses in [0113] that the network device may verify that the pose of the media device is within a predetermined geofence of the geographic area.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Shapiro’s system for creating and rendering NFTs on a blockchain with the teachings of verifying location of device(s) within a predetermined geofence in Holland. The combination teaches minting the NFT in response to the geolocation of the device(s). One would be motivated to make this combination because generation of the token based on verification of the geographic area of the media device can provide additional security and verification as to the authenticity that a representation of an object, environment, or individual in the media data is authentic Holland, [0089].
Re Claim 7, Shapiro in view of Holland, Zhang, and Tang teach the computer-implemented method of claim 1, and Shapiro in view of Holland, Zhang, and Tang further teach wherein the notification from the server indicates at least one of: decryption by the server of the encrypted version of the NFT template from the second computer device using the shared secret key, or generation of the NFT by the server from the encrypted version of the NFT template Tang, [0061] – “the minted NFT along with its new token ID is provided to the user device 502 and may be displayed, via a user interface of the user device 502, to the user,” thereby serving as a notification that the NFT was minted on a blockchain.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Shapiro’s system for creating and rendering NFTs on a blockchain with the teachings of a user device receiving confirmation/notification related to the minted NFT in Tang. The combination teaches a creator receiving confirmation/notification that a NFT associated with their creative work has been minted. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
Re Claims 21, 23-27 are the system claims of method claims 1 and 3-7, respectively. They recite similar distinguishing features as the method claims. Furthermore, Shapiro discloses one or more processors and non-transitory computer-readable storage memory configured to hold program instructions for execution by the one or more processors [0144]. Therefore, they are rejected for the same reasons above.
Re Claims 28 and 30-33 are the non-transitory computer-readable storage medium claims of method claims 1 and 3-6, respectively. They recite similar distinguishing features as the method claims. Furthermore, Shapiro discloses one or more processors and non-transitory computer-readable storage memory configured to hold program instructions for execution by the one or more processors [0144]. Therefore, they are rejected for the same reasons above.
Re Claim 34, Shapiro in view of Holland, Zhang, and Tang teach the non-transitory computer-readable storage medium of claim 28, and Shapiro in view of Holland, Zhang, and Tang further teach wherein the computer system comprises the short-range wireless communication device.
Holland discloses systems and methods for management of non-fungible tokens and corresponding digital assets. Specifically, Holland discloses in [0111] – “The media device 205 (i.e. first computer device) may include a communication interface 255…The communication interface 255 may include a short-range wireless transceiver 260 (i.e. short-range wireless communication device).”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Shapiro’s system for creating and rendering NFTs on a blockchain with the teachings of short-range wireless communication device in Holland. The combination teaches a computing system that comprises a short-range wireless communication device. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself – that is, a computing system that comprises a short range wireless communication device. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE DANG whose telephone number is (571)270-5880. The examiner can normally be reached M-F 9-5pm MT.
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, Patrick McAtee can be reached at (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTINE DANG/Examiner, Art Unit 3698