DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 12, 2026 has been entered.
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The amendment filed on February 12, 2026 has been entered. The following has occurred: Claims 1, 9, and 16 have been amended; claims 7, 14, and 19 were previously canceled.
Claims 1-6, 8-13, 15-18, and 20 are pending.
Response to Amendment
Claim Interpretation has been maintained in light of the amendment.
35 U.S.C. 112 rejection has been maintained in light of the amendment.
35 U.S.C. 101 rejection has been maintained in light of the amendment.
35 U.S.C. 102 rejection has been maintained in light of the amendment.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “wherein the system is configured to: receive a collectible and deliver the collectible…;” in claim 1; “wherein the system is configured to: deliver the collectible to a grader that performs a grading procedure on the collectible;” and “deliver the collectible to a collectible owner via the collectible delivery device” in claim 16. (Generic placeholder is indicated with bold and recited function is in italic emphasis)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claims 2-8 and 17-20 depend from claims 1 and 16 above and therefore inherit the deficiencies of their parent claim.
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 1-6, 8, 16-18, and 20 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, the examiner asserts that the Specification, as originally filled fails to disclose with enough specificity, the following limitations:
Claim elements “wherein the system is configured to: receive a collectible and deliver the collectible…;” in claim 1; “wherein the system is configured to: deliver the collectible to a grader that performs a grading procedure on the collectible;” and “deliver the collectible to a collectible owner via the collectible delivery device” in claim 16 are limitations that invokes 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph. However, the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function. Specifically, the Specification has not provided any structural equivalents for the means for language or tied the use of any structural equivalents to the claimed functions.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph; or
(b) Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification and linked or associated to the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 1 recites “the system comprising: an image capture device; and a non-fungible token minting device; wherein the system is configured to: receive a collectible and deliver the collectible to a grader” and claim 16 recites “the system comprising: an audio-visual capture device; a non-fungible token minting device; and an encapsulation device; a collectible delivery device; and wherein the system is configured to: deliver the collectible to a grader […]; encapsulate the collectible via the encapsulation device; and deliver the collectible to a collectible owner via the collectible delivery device;” however, the specification fails to provide description for what the system may be and how the steps of delivering and encapsulating the collectible to be performed. That is in para. [0018] of the specification states the collector may submit their collectible to a grading company by mail or in-person drop off and para. [0024] states the collectible may be trading cards, wearable items, which are physical items. The specification does not provide support for a collectible delivery device as part of the system to deliver the physical collectible items. Further in para. [0020] of the specification describes the grading company may then encapsulate the collectible in a plastic shell and some physical tamper-proof feature. However, the specification does not provide any example of encapsulation device nor how the encapsulation process is performed.
Although one skilled in the art would have found the invention to be enabled because one skilled in the art, without undue experimentation, could possibly come up with one way of performing the above-mentioned steps, one skilled in the art would be unable to determine how the applicant has intended for the delivering and encapsulating steps to be done and would, therefore, be unable to determine if the applicant had possession of the invention. To put it another way, one skilled in the art would be unable to make and use the invention in the manner intended by the applicant since the applicant has failed to provide sufficient working examples of how the above steps are performed so as to cover the wide scope laid out by the claimed invention and, therefore, one skilled in the art would be unable to determine whether the applicant had possession of the genus since insufficient species have been provided. One skilled in the art would have found that the claimed invention and corresponding specification is attempting to claim all known and unknown possibilities of performing the above-mentioned steps without providing sufficient examples in the Specification to allow one skilled in the art to determine whether the Applicant had possession of such a wide scope of possibilities.
Finally, as a point of clarification, the first paragraph of 35 U.S.C. § 112 contains a written description requirement that is separate and distinct from the enablement requirement. See AriadPharms., Inc. v. Eli Lilly & Col., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc). To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F. 2d 1555, 1562-63 (Fed. Cir. 1991). Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention.
Therefore, the test for determining whether or not the applicant’s claims meet the § 112(a) written description requirement is possession, not whether one skilled in the art is enabled to perform the invention. Applying the above legal principles to the facts of the case at hand, the Examiner concludes that the applicant’s disclosure fails to sufficiently disclose possession at the time of the invention. Applicants are attempting to claim any and all ways of performing the above-mentioned steps. Thus, Applicant is attempting to claim the entire genus of performing the above-mentioned steps. Yet, the specification does not demonstrate a generic invention that achieves the claimed result because there is no disclosure of sufficient species. As the Federal Circuit has stated in Ariad:
genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the Appellant has made a generic invention that achieves the claimed result and do so by showing that the Appellant has invented species sufficient to support a claim to the functionally- defined genus. Ariad, 598 F.3d at 1349 (emphasis added).
Furthermore, Applicants’ claim to such an open-ended genus of performing the above-mentioned steps is similar to the claims at issue in Ariad that "merely recite a description of the problem to be solved while claiming all solutions to it.” Id. At 1353. Ariad further states that “Patents are not awarded for academic theories [and a] patent is not a hunting license. It is not a reward for the search, but compensation for its conclusion.” Id. Therefore, Ariad requires that when the applicant claims a genus, sufficient materials must be disclosed to demonstrate that the genus has in fact been disclosed which the applicant has not.
To overcome this rejection, Applicant may attempt to demonstrate (by means of argument or evidence) that the original disclosure establishes that he or she was in possession of the amended claim.
Claims 2-6, 8, 17, 18 and 20 depend from claims 1 and 16 above and therefore inherit the 35 U.S.C. 112 deficiencies of their parent claim.
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 1-6, 8, 16-18, and 20 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 pre-AIA the applicant regards as the invention.
Claim limitations “wherein the system is configured to: receive a collectible and deliver the collectible…;” in claim 1; “wherein the system is configured to: deliver the collectible to a grader that performs a grading procedure on the collectible;” and “deliver the collectible to a collectible owner via the collectible delivery device” in claim 16 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification fails to provide description for any structure that performs the above-mentioned limitations. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 1 recites a system for creating a non-fungible token associated with a collectible and grading of the collectible, the system comprising: an image capture device; a server; and a non-fungible token minting device; wherein the system is configured to: receive a collectible and deliver the collectible to a grader that performs a grading procedure on the collectible; (bold emphasis included) which is found to be indefinite. It is unclear whether if the system in claim 1 is a single system with other components of image capture device and non-fungible token minting device or three separate system/devices for performing different functional steps by each of corresponding devices. While the examiner interprets the image capturing device to be a camera under broadest reasonable interpretation, the specification does not provide sufficient example of what the system, image capturing device, and non-fungible token minting device may be. It is unclear how the system is able to receive a collectible and deliver the collectible to a grade since the collectible is a physical item (see claim 4). It is unclear how to conduct a proper search. For the purpose of expediting compact prosecution, the examiner interprets the system to be multiple system claim including individual and separate devices of image capturing device and non-fungible token minting device. The examiner further interprets the image capturing device to be a camera and non-fungible token minting device to be a server.
Claim 16 recites a system for creating a non-fungible token associated with a collectible and grading of the collectible, the system comprising: an audio-visual capture device; a server; a non-fungible token minting device; and an encapsulation device; a collectible delivery device; and wherein the system is configured to: deliver the collectible to a grader […]; encapsulate the collectible via the encapsulation device; and deliver the collectible to a collectible owner via the collectible delivery device; (bold emphasis included) which is found to be indefinite. It is unclear whether if the system in claim 16 is a single system with other components of an audio-visual capture device; a non-fungible token minting device; and an encapsulation device; a collectible delivery device; or multiple and separate system/devices for performing different functional steps by each of corresponding devices. While the examiner interprets the audio-visual capture device to be a camera under broadest reasonable interpretation, the specification does not provide sufficient example of what the system, an audio-visual capture device; a non-fungible token minting device; and an encapsulation device; a collectible delivery device may be. It is unclear how to conduct a proper search. For the purpose of expediting compact prosecution, the examiner interprets the system to be multiple system claim including individual and separate devices of an audio-visual capture device; a non-fungible token minting device; and an encapsulation device; a collectible delivery device. The examiner further interprets the image capturing device to be a camera and non-fungible token minting device to be a server.
Claims 2-6, 8, 17, 18 and 20 depend from claims 1 and 16 above and therefore inherit the 35 U.S.C. 112 deficiencies of their parent claim.
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 1-6, 8-13, 15-18, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Is the claim to a process, machine, manufacture or composition of matter? (MPEP 2106.03)
In the present application, claims 1-8 are directed to a system (i.e. a machine), claims 9-15 are directed to a method (i.e. a process), and claims 16-20 are directed to another system (i.e. a machine). Thus, the eligibility analysis proceeds to Step 2A. prong one.
Step 2A. prong one: Does the claim recite an abstract idea, law of nature, or natural phenomenon? (MPEP 2106.04)
The abstract idea recited in claim 1 is:
receive a collectible and deliver the collectible to a grader that performs a grading procedure on the collectible;
record the grader during the grading procedure and produce an image file;
store the image file associated with the non-fungible token; and
mint a non-fungible token, based on the image file and associate the non-fungible token with the collectible, wherein the non-fungible token comprises metadata about the grading procedure and metadata about the collectible comprising characteristics of the collectible.
The abstract idea recited in claim 9 is:
grading, at a grader, the collectible via a grading procedure performed on the collectible;
recording, the grader and collectible during the grading procedure, and producing an image file;
storing, the image file associated with the non-fungible token; and
minting, a non-fungible token, wherein the non-fungible token comprises metadata about the grading procedure and metadata about the collectible comprising characteristics of the collectible, based on the image file and associating, the non-fungible token with the collectible.
The abstract idea recited in claim 16 is:
deliver the collectible to a grader that performs a grading procedure on the collectible;
record the grader and collectible during the grading procedure;
mint a non-fungible token, wherein the non-fungible token comprises metadata related to the grading procedure and metadata about the collectible comprising characteristics of the collectible, and associate the non-fungible token with the collectible;
encapsulate the collectible via the encapsulation device; and deliver the collectible to a collectible owner.
The claimed invention is directed to an abstract idea of appraising or grading a collectible for record.
The limitations above suggest a process of grading a collectible using a grading procedure involved human judgements, observations, and evaluations that can be practically or reasonably performed in the human mind, the claims recite an abstract idea consistent with the “mental processes” grouping of the abstract ideas, set forth in MPEP 2106.04(a)(2)(III). Additionally and alternatively, the same claim limitations above recite a fundamental economic practice long prevalent in our system of commerce in the form of advertising, marketing, or sales activity or behaviors for a grading company to grade or appraise collectible item for evaluation of market value. Under the broadest reasonable interpretation, other than the additional elements, the limitations recite a process of collecting or delivering collectible to a human grader to perform a grading procedure; recording the grading process to be minted for record; and encapsulating the collectible and delivering the collectible for a service. Because the limitations above closely follow the steps standard in commercial interaction for a business practice of providing a grading/appraisal service for collectible items to customers, the claims recite an abstract idea consistent with the “certain methods of organizing human activity” grouping of the abstract ideas, set forth in MPEP 2106.04(a)(2)(II).
Accordingly, the above-mentioned limitations are considered as a single abstract idea, therefore, the claims recite an abstract idea and the analysis proceeds to Step 2A. prong two.
Step 2A. prong two: Does the claim recite additional elements that integrate the judicial exception into a practical application? (MPEP 2106.04)
This judicial exception is not integrated into a practical application because the additional elements merely add instructions to apply the abstract idea to a computer or other machine.
The additional elements considered include:
Claim 1: “the system comprising: an image capture device; and a non-fungible token minting device; wherein the system is configured to:” “via the image capture device,” “a server;” “via the non-fungible token minting device,”
Claim 9: “at an image capture device,” “via the image capture device,” “at a server,” “at a non-fungible token minting device,”
Claim 16: “the system comprising: an audio-visual capture device; a server; a non-fungible token minting device; and an encapsulation device; a collectible delivery device; and wherein the system is configured to:” “via the video recording device,” “via the non-fungible token minting device,” “via the encapsulation device;” and “via the collectible delivery device.”
The additional elements in the steps are recited at a high-level of generality (i.e., as generic computer component or other machinery performing function within its generic manner; see para. [0032], [0037], [0043]-[0048] and Fig. 2 stating general purpose computer system and servers with generic computer components of memory and processor; para. [0033]-[0034] stating general purpose encapsulation device and para. [0023] and [0026] stating general purpose recording camera. The specification does not provide example of a collectible delivery device for the general purpose of receiving and delivering collectible) and amount to no more than mere instructions to apply the judicial exception (i.e. abstract idea) using a generic computer component and other machinery. The functions of limitations [A]-[L], individually or in combination with the additional elements, are steps of adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer or other machinery, or merely uses a computer as a tool to perform an abstract idea as discussed in MPEP 2106.05(f).
While examiner contends that “non-fungible token minting device,” “an encapsulation device,” and “collectible delivery device” are part of the abstract idea, they are still nothing more than an attempt to link the additional elements to a field of use. Claim limitations that generally link the use of the judicial exception to a particular technological environment or field of use, even when limiting the use of the idea to one particular environment, do not integrate a judicial exception into a practical application. (See MPEP 2106.05(h)).
Accordingly, these additional claim elements, alone and in combination, do not integrate the abstract idea into a practical application, because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05(a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05(b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05(e) and the Vanda memo). Therefore, per Step 2A, Prong Two, the claims are directed to an abstract idea not integrated into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? (MPEP 2106.05)
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the bold portions of the limitations recited above, were all considered to be an abstract idea in Step2A-Prong Two. The additional elements and analysis of Step2A-Prong two is carried over. For the same reason, these elements are not sufficient to provide an inventive concept. Applicant has merely recited elements that instruct the user to apply the abstract idea to a computer or other machinery. When considered individually and in combination the conclusion, as discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer to perform the above-mentioned limitations of [A]-[L] amount to no more than mere instructions to apply the function of the limitations to the exception, as discussed in MPEP 2106.05(f), in addition to “non-fungible token minting device,” “an encapsulation device,” and “collectible delivery device” simply being attempts to link the additional elements to a field of use (MPEP 2106.05(h). The claims as a whole merely describes how to generally “apply” the concept for appraising or grading a collectible for record. When the independent claims are considered as a whole, as a combination, the claim elements noted above do not amount to any more than they amount to individually. The operations appear to merely apply the abstract concept to a technical environment in a very general sense. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified as an abstract idea. Therefore, it is concluded that the elements of the independent claims are directed to one or more abstract ideas and do not amount to significantly more. (MPEP 2106.05)
Further, Step 2B of the analysis takes into consideration all dependent claims as well, both individually and as a whole, as a combination:
As for dependent claims 2, 3, 9, 10, and 17, these claims further recite additional descriptive information regarding to the image capture device. The further detail of the image capture device and the image file does not change the abstract idea of the independent claims. The use of the additional element image capture device is recited at high-level of generality which the image capture device is used in a generic and intended manner, which amounts no more than mere instructions to apply the exception using a generic computer component. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
As for dependent claims 4, 5, and 12, these claims recite limitations that further define the abstract idea noted in the independent claims. The claims further recite additional descriptive information regarding to the collectible that do not change abstract idea of the independent claims. The further details of the claim limitations do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technology environment. The claims are ineligible.
As for dependent claims 6, 8, 13, 15, 18, and 20, these claims further recite additional descriptive information regarding to the image capture device. The further detail of the image capture device and the image file does not change the abstract idea of the independent claims. The use of the additional element image capture device is recited at high-level of generality which the image capture device is used in a generic and intended manner, which amounts no more than mere instructions to apply the exception using a generic computer component. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
Therefore, claims 1-6, 8-13, 15-18, and 20 are rejected 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 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.
(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 1-6, 8-13, 15-18, and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Mullen et al. (WO 2023044128 A1; hereinafter “Mullen”).
Claim 1, Mullen discloses a system for creating a non-fungible token associated with a collectible and grading of the collectible (Abstract: “system”), the system comprising:
an image capture device (Para. [0074] and Fig. 2 disclosing image capture system. Para. [0097] disclosing image and/or data capture devices 604 and 611. Further, in para. [0010] disclosing images captured from cameras. More examples of camera capturing image of collectibles in para. [0100], [0122], [0127], and [0130]);
a server (para. [0087], disclosing “said database is a public blockchain and said token is a non-fungible token” which database is the representative of a server. In para. [0136] disclosing remote server and databases); and
a non-fungible token minting device (In para. [0027] of the app. specification describes the NFT minter is located on a server. The office interprets the non-fungible token minting device is the NFT minter software stored in a server. Para. [0066] disclosing platform website server for creating (i.e., minting) a digital non-fungible token for each collectible received and storing on blockchain. Also see para. [0136] disclosing remote server and databases);
wherein the system (Abstract and para. [0006] disclosing system) is configured to:
receive a collectible and deliver the collectible to a grader that performs a grading procedure on the collectible (Para. [0008]: “Collectibles may be received in various forms. For example, collectibles may be received in unencapsulated form of a circulated collectible (e.g., raw form), encapsulated form of a circulated collectible (e.g., an authenticated and/or graded collectible)”. Further in para. [0011] disclosing receiving and grading process by grading authorities. para. [0093], “If an item is received that is determined to be autonomously and/or physically graded then the grading process may be performed in step 563.” Para. [0179] disclosing grading company grades raw non-encapsulated item);
record the grader during the grading procedure, via the image capture device, and produce an image file (para. [0012], “Any third party that offers a digital grading may be sent captured images and/or data and may provide their own grade.” Para. [0068] and [0071]: “Step 179 may be included in which an image or set of images may be captured of an encapsulated case with a collectible and informational tag. Persons skilled in the art will appreciate that images may be associated with the entire encapsulated case as well as images associated with a part of the case (e.g., the collectible item and/or tag). Images may be captured alternatively, or in addition to, encapsulated case images in the form of images before encapsulation. For example, the collectible and/or tag may be images individually without any encapsulation case before encapsulation. Additionally, the shipping package may be imaged. Video may be taken of any and all activities (e.g., activities that include a collectible item) from multiple perspectives and the video may be stored for a period of time before auto-deletion (e.g., 90 or more days) if not kept for further availability or may be stored and not deleted. Images and/or video may include visible, infrared, ultraviolet images/video. Objects (e.g., collectible items) may be bathed in various types of light or other environmental influences (e.g., heat, pressure, etc.) and images/video may be captured. Such captured data may be utilized, for example, to authenticate and/or grade a collectible or to increase the amount of information provided on a marketplace or other listing” which disclosing the capturing or recording of the grading of the collectible by image capturing device. See Para. [0074] and Fig. 2 disclosing image capture system. Para. [0097] disclosing image and/or data capture devices 604 and 611. Further, in para. [0010] disclosing images captured from cameras. More examples of camera capturing image of collectibles in para. [0100], [0122], [0127], and [0130]. Para. [0098], “Image (s) and data may be captured and collected in step 715 of a collectible item and/or an protected collectible item. Image (s) and data capture may be performed with a collectible item without an informational tag and/or a collectible item with an informational tag.” disclosing image capturing can be performed before any stage of the process);
store the image file associated with the non-fungible token (para. [0006], “a ledger may be a private database ledger or and/or private blockchain ledger is provided where a unique identifier (e.g., a token such as a non-fungible token) is provided for each item. The unique identifier may be utilized to retrieve information associated with the item such as the previous and current owners of the item, the transaction types and prices (if applicable) for the item, as well as any other information (e.g., name of item, year of manufacture, product, product set or grouping, detailed description, images, etc.). Accordingly, when a collectible item is first received, a unique identifier (e.g., NET) may be created or assigned to the received item and the name of the submitting owner may be associated with this unique identifier. For example, the information may be stored or an information retrievable link may be stored in the NET or in a data structure associated with the unique identifier.” para. [0010], “images may be taken together in a process (e.g., simultaneously) and then stored in association with one another. The informational tag for the encapsulation case may have an unique identifier and the images may be retrieved at a different time and the identifier read (e.g., via OCR and/or barcode determination) and utilized to store the image (s), or associate the images, with information associated with that unique identifier (e.g., blockchain data for that collectible item's identifier)” Para. [0071] states images may be captured and video may be taken to be associated with the collectible item and/or tag. Para. [0087] “One or more public and/or private blockchains (e.g., or other ledger such as a database that represents unique items with unique identifiers) may be provided in ledger (s) 502. … may also include receiving items, recording and verifying data associated with the stored items, creating and managing data storage structures such as NFTs for each item, image capturing, storage, shipping, and any other actions and services.” Para. [0100], “Video and/or data from a livestream may be stored and saved with the collectible so future users can view the video… Persons skilled in the art will appreciate that high-definition images of the collectible in one or more spectrums may be captured and stored.” Mullen directly discloses the storing of image and videos associated with the collectible item with a unique identifier that is represented by NFT); and
mint a non-fungible token, via the non-fungible token minting device, based on the image file and associate the non-fungible token with the collectible (See Fig 1. steps 173-174 disclosing receiving raw collectibles; then in step 175, discloses creating (i.e. minting) NFT for each collectible with submission user as first owner. In para. [0006]: “a ledger may be a private database ledger or and/or private blockchain ledger is provided where a unique identifier (e.g., a token such as a non-fungible token) is provided for each item. The unique identifier may be utilized to retrieve information associated with the item such as the previous and current owners of the item, the transaction types and prices (if applicable) for the item, as well as any other information (e.g., name of item, year of manufacture, product, product set or grouping, detailed description, images, etc.). Accordingly, when a collectible item is first received, a unique identifier (e.g., NET) may be created or assigned to the received item and the name of the submitting owner may be associated with this unique identifier. For example, the information may be stored or an information retrievable link may be stored in the NET or in a data structure associated with the unique identifier. All information or a part of the information may be publicly accessible. Accordingly, for example, ownership information may be publicly available such that, for example, prospect acquirers can see the ownership chain of an item from the time it was received by, for example, the vaulting marketplace. After an item is shipped, ownership update services may be continued. For example, suppose the owner that shipped the item out of the vaulting marketplace sells the item to a new owner on an unknown marketplace may, for example, a request for an ownership update may be provided by either owner and the owner that shipped the item may confirm the ownership change and the ownership chain may be updated. Suppose after a certain number of ownerships occur (e.g., 5 or more) the item is provided to the vaulting marketplace for storage. In this situation, the pre-existing NFT or unique identifier may be updated based on the vaulting marketplace transactions without the need to verify an ownership change from, for example, an unknown marketplace. A secure chip provided in a collectible or attached to a collectible (e.g., via an encapsulation case) may be utilized to retrieve, for example, the stored identifier (e.g., the token or NET and associated information).” In para. [0066] disclosing the NET on blockchain is utilized as NFT. The Office asserts based on the description provided in the applicant’s specification para. [0027] describes the NFT minter is interpreted to be the non-fungible token minting device located on a server of blockchain ledger, which the functional step of minting a NFT based on image file is the same as creating a NFT based on associated image information stored on unique identifier NET), wherein the non-fungible token comprises metadata about the grading procedure and metadata about the collectible comprising characteristics of the collectible (para. [0011] disclosing automated grading algorithm and the autonomous grading algorithm may have a version number and this version number may be associated with a grade. The storing of the “algorithm version number” is storing metadata about the procedure used. The storing individual grades for “surface, corners, edges, dimensions, centering, coloring (e.g., fading), etc.” are sub-grades that are part of the procedural output comprising characteristics of the collectible. The “stored with information associated with the collectible” discloses non-fungible token. Further description is provided in para. [0113] for grade for each corner demonstrates sub-grades for procedural details stored in database associated with the specific collectible’s NFT. Para. [0163], grading process (e.g., grading algorithm). Para. [0186] and [0221] and Fig. 36 “grading report” and “sub-grade information” are detailed metadata about the grading procedure).
Claim 2, Mullen discloses the system of claim 1. Mullen further discloses,
wherein the image capture device is a video recording device (para. [0100] disclosing camera used for video streaming/recording).
Claim 3, Mullen discloses the system of claim 2. Mullen further discloses,
wherein the image file comprises a video stream (para. [0071], [0099], [0100] disclosing the use of camera for video stream throughout all activities (e.g., receiving, break case, grading, encapsulation process)).
Claim 4, Mullen discloses the system of claim 1. Mullen further discloses,
wherein the collectible is a physical item (para. [0013] disclosing physical collectible items)
Claim 5, Mullen discloses the system of claim 1. Mullen further discloses,
wherein the collectible is a digital item (para. [0115] disclosing “skilled in the art will appreciate that a collectible may be a digital-only collectible”).
Claim 6, Mullen discloses the system of claim 1. Mullen further discloses,
wherein the system is further configured to: store, at a decentralized ledger, the image file associated with the non-fungible token (para. [0006], [0066], disclosing storing non-fungible token on public blockchain which is decentralized ledger. In para. [0006] disclosing the NFT is created with associated image data).
Claim 8, Mullen discloses the system of claim 1. Mullen further discloses,
wherein the non-fungible token is stored on a decentralized ledger as part of the minting process (In applicant’s specification para. [0019] describes the minting process is adding metadata to NFT. Mullen may not have expressly use the language “minting” however, the step of minting process is performed in Mullen in Fig 1. step 175, discloses creating (i.e. minting) NFT for each collectible with submission user as first owner; Para. [0006] and [0066] disclosing the creating of NFT with associated image data and storing the NFT on a public blockchain ledger).
Claim 9, Mullen discloses a method for creating a non-fungible token associated with a collectible and grading of the collectible (para. [0011] grading process), the method comprising:
grading, at a grader, the collectible via a grading procedure performed on the collectible; (Para. [0008]: “Collectibles may be received in various forms. For example, collectibles may be received in unencapsulated form of a circulated collectible (e.g., raw form), encapsulated form of a circulated collectible (e.g., an authenticated and/or graded collectible)”. Further in para. [0011] disclosing receiving and grading process by grading authorities. para. [0093], “If an item is received that is determined to be autonomously and/or physically graded then the grading process may be performed in step 563.” Para. [0179] disclosing grading company grades raw non-encapsulated item)
recording, at an image capture device, the grader and collectible during the grading procedure, via the image capture device, and producing, at the image capture device, an image file (para. [0012], “Any third party that offers a digital grading may be sent captured images and/or data and may provide their own grade.” Para. [0071]: “Step 179 may be included in which an image or set of images may be captured of an encapsulated case with a collectible and informational tag. Persons skilled in the art will appreciate that images may be associated with the entire encapsulated case as well as images associated with a part of the case (e.g., the collectible item and/or tag). Images may be captured alternatively, or in addition to, encapsulated case images in the form of images before encapsulation. For example, the collectible and/or tag may be images individually without any encapsulation case before encapsulation. Additionally, the shipping package may be imaged. Video may be taken of any and all activities (e.g., activities that include a collectible item) from multiple perspectives and the video may be stored for a period of time before auto-deletion (e.g., 90 or more days) if not kept for further availability or may be stored and not deleted. Images and/or video may include visible, infrared, ultraviolet images/video. Objects (e.g., collectible items) may be bathed in various types of light or other environmental influences (e.g., heat, pressure, etc.) and images/video may be captured. Such captured data may be utilized, for example, to authenticate and/or grade a collectible or to increase the amount of information provided on a marketplace or other listing” which disclosing the capturing or recording of the grading of the collectible by image capturing device. See Para. [0074] and Fig. 2 disclosing image capture system. Para. [0097] disclosing image and/or data capture devices 604 and 611. Further, in para. [0010] disclosing images captured from cameras. More examples of camera capturing image of collectibles in para. [0100], [0122], [0127], and [0130]. Para. [0098], “Image (s) and data may be captured and collected in step 715 of a collectible item and/or an protected collectible item. Image (s) and data capture may be performed with a collectible item without an informational tag and/or a collectible item with an informational tag.” disclosing image capturing can be performed before any stage of the process);
storing, at a server (para. [0087], disclosing “said database is a public blockchain and said token is a non-fungible token” which database is the representative of a server. In para. [0136] disclosing remote server and databases), the image file associated with the non-fungible token (para. [0006], “a ledger may be a private database ledger or and/or private blockchain ledger is provided where a unique identifier (e.g., a token such as a non-fungible token) is provided for each item. The unique identifier may be utilized to retrieve information associated with the item such as the previous and current owners of the item, the transaction types and prices (if applicable) for the item, as well as any other information (e.g., name of item, year of manufacture, product, product set or grouping, detailed description, images, etc.). Accordingly, when a collectible item is first received, a unique identifier (e.g., NET) may be created or assigned to the received item and the name of the submitting owner may be associated with this unique identifier. For example, the information may be stored or an information retrievable link may be stored in the NET or in a data structure associated with the unique identifier.” para. [0010], “images may be taken together in a process (e.g., simultaneously) and then stored in association with one another. The informational tag for the encapsulation case may have an unique identifier and the images may be retrieved at a different time and the identifier read (e.g., via OCR and/or barcode determination) and utilized to store the image (s), or associate the images, with information associated with that unique identifier (e.g., blockchain data for that collectible item's identifier)” Para. [0071] states images may be captured and video may be taken to be associated with the collectible item and/or tag. Para. [0087] “One or more public and/or private blockchains (e.g., or other ledger such as a database that represents unique items with unique identifiers) may be provided in ledger (s) 502. … may also include receiving items, recording and verifying data associated with the stored items, creating and managing data storage structures such as NFTs for each item, image capturing, storage, shipping, and any other actions and services.” Para. [0100], “Video and/or data from a livestream may be stored and saved with the collectible so future users can view the video… Persons skilled in the art will appreciate that high-definition images of the collectible in one or more spectrums may be captured and stored.” Mullen directly discloses the storing of image and videos associated with the collectible item with a unique identifier that is represented by NFT); and
minting, at a non-fungible token minting device, a non-fungible token, wherein the non-fungible token comprises metadata about the grading procedure and metadata about the collectible comprising characteristics of the collectible (para. [0011] disclosing automated grading algorithm and the autonomous grading algorithm may have a version number and this version number may be associated with a grade. The storing of the “algorithm version number” is storing metadata about the procedure used. The storing individual grades for “surface, corners, edges, dimensions, centering, coloring (e.g., fading), etc.” are sub-grades that are part of the procedural output comprising characteristics of the collectible. The “stored with information associated with the collectible” discloses non-fungible token. Further description is provided in para. [0113] for grade for each corner demonstrates sub-grades for procedural details stored in database associated with the specific collectible’s NFT. Para. [0163], grading process (e.g., grading algorithm). Para. [0186] and [0221] and Fig. 36 “grading report” and “sub-grade information” are detailed metadata about the grading procedure), based on the image file and associating, at the non-fungible token minting device, the non-fungible token with the collectible (See Fig 1. steps 173-174 disclosing receiving raw collectibles; then in step 175, discloses creating (i.e. minting) NFT for each collectible with submission user as first owner. In para. [0006]: “a ledger may be a private database ledger or and/or private blockchain ledger is provided where a unique identifier (e.g., a token such as a non-fungible token) is provided for each item. The unique identifier may be utilized to retrieve information associated with the item such as the previous and current owners of the item, the transaction types and prices (if applicable) for the item, as well as any other information (e.g., name of item, year of manufacture, product, product set or grouping, detailed description, images, etc.). Accordingly, when a collectible item is first received, a unique identifier (e.g., NET) may be created or assigned to the received item and the name of the submitting owner may be associated with this unique identifier. For example, the information may be stored or an information retrievable link may be stored in the NET or in a data structure associated with the unique identifier. All information or a part of the information may be publicly accessible. Accordingly, for example, ownership information may be publicly available such that, for example, prospect acquirers can see the ownership chain of an item from the time it was received by, for example, the vaulting marketplace. After an item is shipped, ownership update services may be continued. For example, suppose the owner that shipped the item out of the vaulting marketplace sells the item to a new owner on an unknown marketplace may, for example, a request for an ownership update may be provided by either owner and the owner that shipped the item may confirm the ownership change and the ownership chain may be updated. Suppose after a certain number of ownerships occur (e.g., 5 or more) the item is provided to the vaulting marketplace for storage. In this situation, the pre-existing NFT or unique identifier may be updated based on the vaulting marketplace transactions without the need to verify an ownership change from, for example, an unknown marketplace. A secure chip provided in a collectible or attached to a collectible (e.g., via an encapsulation case) may be utilized to retrieve, for example, the stored identifier (e.g., the token or NET and associated information).” In para. [0066] disclosing the NET on blockchain is utilized as NFT. The Office asserts based on the description provided in the applicant’s specification para. [0027] describes the NFT minter is interpreted to be the non-fungible token minting device located on a server of blockchain ledger, which the functional step of minting a NFT based on image file is the same as creating a NFT based on associated image information stored on unique identifier NET).
Claim 10, Mullen discloses the method of claim 9. Mullen further discloses,
wherein the image capture device is a video recording device (para. [0100] disclosing camera used for video streaming/recording).
Claim 11, Mullen discloses the method of claim 10. Mullen further discloses,
wherein the image file comprises a video file (para. [0071], [0099], [0100] disclosing the use of camera for video).
Claim 12, Mullen discloses the method of claim 9. Mullen further discloses,
wherein the collectible is a digital item (para. [0115] disclosing “skilled in the art will appreciate that a collectible may be a digital-only collectible”).
Claim 13, Mullen discloses the method of claim 9. Mullen further discloses,
storing, at a decentralized ledger, the image file associated with the non-fungible token (para. [0006], [0066], disclosing storing non-fungible token on public blockchain which is decentralized ledger. In para. [0006] disclosing the NFT is created with associated image data).
Claim 15, Mullen discloses the method of claim 9. Mullen further discloses,
storing, at a decentralized ledger, the non-fungible token as part of the minting process (In applicant’s specification para. [0019] describes the minting process is adding metadata to NFT. Mullen may not have expressly use the language “minting” however, the step of minting process is performed in Mullen in Fig 1. step 175, discloses creating (i.e. minting) NFT for each collectible with submission user as first owner; Para. [0006] and [0066] disclosing the creating of NFT with associated image data and storing the NFT on a public blockchain ledger).
Claim 16, Mullen discloses a system for creating a non-fungible token associated with a collectible and grading of the collectible (Abstract: “system”), the system comprising:
an audio-visual capture device (Para. [0074] and Fig. 2 disclosing image capture system. Para. [0097] disclosing image and/or data capture devices 604 and 611. Further, in para. [0010] disclosing images captured from cameras. More examples of camera capturing image of collectibles in para. [0100], [0122], [0127], and [0130]);
a server (para. [0087], disclosing “said database is a public blockchain and said token is a non-fungible token” which database is the representative of a server. In para. [0136] disclosing remote server and databases);
a non-fungible token minting device (In para. [0027] of the app. specification describes the NFT minter is located on a server. The office interprets the non-fungible token minting device is the NFT minter software stored in a server. Para. [0066] disclosing platform website server for creating (i.e., minting) a digital non-fungible token for each collectible received and storing on blockchain. Also see para. [0136] disclosing remote server and databases); and
an encapsulation device (para. [0101], encapsulator);
a collectible delivery device (para. [0128] disclosing autonomous retrieval and storage vehicle); and
wherein the system (Abstract and para. [0006] disclosing system) is configured to:
deliver the collectible to a grader that performs a grading procedure on the collectible (Para. [0008]: “Collectibles may be received in various forms. For example, collectibles may be received in unencapsulated form of a circulated collectible (e.g., raw form), encapsulated form of a circulated collectible (e.g., an authenticated and/or graded collectible)”. Further in para. [0011] disclosing receiving and grading process by grading authorities. para. [0093], “If an item is received that is determined to be autonomously and/or physically graded then the grading process may be performed in step 563.” Para. [0179] disclosing grading company grades raw non-encapsulated item);
record the grader and collectible during the grading procedure, via the video recording device, and produce a video file (para. [0012], “Any third party that offers a digital grading may be sent captured images and/or data and may provide their own grade.” Para. [0071]: “Step 179 may be included in which an image or set of images may be captured of an encapsulated case with a collectible and informational tag. Persons skilled in the art will appreciate that images may be associated with the entire encapsulated case as well as images associated with a part of the case (e.g., the collectible item and/or tag). Images may be captured alternatively, or in addition to, encapsulated case images in the form of images before encapsulation. For example, the collectible and/or tag may be images individually without any encapsulation case before encapsulation. Additionally, the shipping package may be imaged. Video may be taken of any and all activities (e.g., activities that include a collectible item) from multiple perspectives and the video may be stored for a period of time before auto-deletion (e.g., 90 or more days) if not kept for further availability or may be stored and not deleted. Images and/or video may include visible, infrared, ultraviolet images/video. Objects (e.g., collectible items) may be bathed in various types of light or other environmental influences (e.g., heat, pressure, etc.) and images/video may be captured. Such captured data may be utilized, for example, to authenticate and/or grade a collectible or to increase the amount of information provided on a marketplace or other listing” which disclosing the capturing or recording of the grading of the collectible by image capturing device. See Para. [0074] and Fig. 2 disclosing image capture system. Para. [0097] disclosing image and/or data capture devices 604 and 611. Further, in para. [0010] disclosing images captured from cameras. More examples of camera capturing image of collectibles in para. [0100], [0122], [0127], and [0130]. Para. [0098], “Image (s) and data may be captured and collected in step 715 of a collectible item and/or an protected collectible item. Image (s) and data capture may be performed with a collectible item without an informational tag and/or a collectible item with an informational tag.” disclosing image capturing can be performed before any stage of the process);
store the image file associated with the non-fungible token (para. [0006], “a ledger may be a private database ledger or and/or private blockchain ledger is provided where a unique identifier (e.g., a token such as a non-fungible token) is provided for each item. The unique identifier may be utilized to retrieve information associated with the item such as the previous and current owners of the item, the transaction types and prices (if applicable) for the item, as well as any other information (e.g., name of item, year of manufacture, product, product set or grouping, detailed description, images, etc.). Accordingly, when a collectible item is first received, a unique identifier (e.g., NET) may be created or assigned to the received item and the name of the submitting owner may be associated with this unique identifier. For example, the information may be stored or an information retrievable link may be stored in the NET or in a data structure associated with the unique identifier.” para. [0010], “images may be taken together in a process (e.g., simultaneously) and then stored in association with one another. The informational tag for the encapsulation case may have an unique identifier and the images may be retrieved at a different time and the identifier read (e.g., via OCR and/or barcode determination) and utilized to store the image (s), or associate the images, with information associated with that unique identifier (e.g., blockchain data for that collectible item's identifier)” Para. [0071] states images may be captured and video may be taken to be associated with the collectible item and/or tag. Para. [0087] “One or more public and/or private blockchains (e.g., or other ledger such as a database that represents unique items with unique identifiers) may be provided in ledger (s) 502. … may also include receiving items, recording and verifying data associated with the stored items, creating and managing data storage structures such as NFTs for each item, image capturing, storage, shipping, and any other actions and services.” Para. [0100], “Video and/or data from a livestream may be stored and saved with the collectible so future users can view the video… Persons skilled in the art will appreciate that high-definition images of the collectible in one or more spectrums may be captured and stored.” Mullen directly discloses the storing of image and videos associated with the collectible item with a unique identifier that is represented by NFT);
mint a non-fungible token, via the non-fungible token minting device, based on the video file, wherein the non-fungible token comprises metadata about the grading procedure and metadata about the collectible comprising characteristics of the collectible (para. [0011] disclosing automated grading algorithm and the autonomous grading algorithm may have a version number and this version number may be associated with a grade. The storing of the “algorithm version number” is storing metadata about the procedure used. The storing individual grades for “surface, corners, edges, dimensions, centering, coloring (e.g., fading), etc.” are sub-grades that are part of the procedural output comprising characteristics of the collectible. The “stored with information associated with the collectible” discloses non-fungible token. Further description is provided in para. [0113] for grade for each corner demonstrates sub-grades for procedural details stored in database associated with the specific collectible’s NFT. Para. [0163], grading process (e.g., grading algorithm). Para. [0186] and [0221] and Fig. 36 “grading report” and “sub-grade information” are detailed metadata about the grading procedure), and associate the non-fungible token with the collectible (See Fig 1. steps 173-174 disclosing receiving raw collectibles; then in step 175, discloses creating (i.e. minting) NFT for each collectible with submission user as first owner. In para. [0006]: “a ledger may be a private database ledger or and/or private blockchain ledger is provided where a unique identifier (e.g., a token such as a non-fungible token) is provided for each item. The unique identifier may be utilized to retrieve information associated with the item such as the previous and current owners of the item, the transaction types and prices (if applicable) for the item, as well as any other information (e.g., name of item, year of manufacture, product, product set or grouping, detailed description, images, etc.). Accordingly, when a collectible item is first received, a unique identifier (e.g., NET) may be created or assigned to the received item and the name of the submitting owner may be associated with this unique identifier. For example, the information may be stored or an information retrievable link may be stored in the NET or in a data structure associated with the unique identifier. All information or a part of the information may be publicly accessible. Accordingly, for example, ownership information may be publicly available such that, for example, prospect acquirers can see the ownership chain of an item from the time it was received by, for example, the vaulting marketplace. After an item is shipped, ownership update services may be continued. For example, suppose the owner that shipped the item out of the vaulting marketplace sells the item to a new owner on an unknown marketplace may, for example, a request for an ownership update may be provided by either owner and the owner that shipped the item may confirm the ownership change and the ownership chain may be updated. Suppose after a certain number of ownerships occur (e.g., 5 or more) the item is provided to the vaulting marketplace for storage. In this situation, the pre-existing NFT or unique identifier may be updated based on the vaulting marketplace transactions without the need to verify an ownership change from, for example, an unknown marketplace. A secure chip provided in a collectible or attached to a collectible (e.g., via an encapsulation case) may be utilized to retrieve, for example, the stored identifier (e.g., the token or NET and associated information).” In para. [0066] disclosing the NET on blockchain is utilized as NFT. The Office asserts based on the description provided in the applicant’s specification para. [0027] describes the NFT minter is interpreted to be the non-fungible token minting device located on a server of blockchain ledger, which the functional step of minting a NFT based on image file is the same as creating a NFT based on associated image information stored on unique identifier NET);
encapsulate the collectible via the encapsulation device (para. [0099], [0101], and Fig. 5 step 562 and Fig. 1 step 178 disclosing encapsulating the collectible using encapsulation equipment or encapsulator); and
deliver the collectible to a collectible owner via the collectible delivery device (para. [0066] disclosing shipping the NFT collectible item to new owner through requested shipment. In para. [0063] recites “an autonomous process may receive one or more orders to ship one or more collectible items and a route may be autonomously determined to retrieve the items associated with the order or orders for shipment”).
Claim 17, Mullen discloses the system of claim 16. Mullen further discloses,
wherein the image file comprises a video stream (para. [0071], [0099], [0100] disclosing the use of camera for video stream throughout all activities (e.g., receiving, break case, grading, encapsulation process))
Claim 18, Mullen discloses the system of claim 16. Mullen further discloses,
wherein the system is further configured to: store, at a decentralized ledger, the image file associated with the non-fungible token (para. [0006], [0066], disclosing storing non-fungible token on public blockchain which is decentralized ledger. In para. [0006] disclosing the NFT is created with associated image data).
Claim 20, Mullen discloses the system of claim 16. Mullen further discloses,
wherein the non-fungible token is stored on a decentralized ledger as part of the minting process (In applicant’s specification para. [0019] describes the minting process is adding metadata to NFT. Mullen may not have expressly use the language “minting” however, the step of minting process is performed in Mullen in Fig 1. step 175, discloses creating (i.e. minting) NFT for each collectible with submission user as first owner; Para. [0006] and [0066] disclosing the creating of NFT with associated image data and storing the NFT on a public blockchain ledger).
Response to Remarks
Claim Interpretation and 35 U.S.C. 112 Rejections:
The Applicant’s remarks are fully considered, however are found to be unpersuasive.
The Applicant touts the Office ignored critical limitations such as the language in the claims directed to servers and NFT when applying 35 USC 112.
The Examiner respectfully disagrees. The Office Action considered all of the elements of the claims, as a whole, when presenting the 112 rejections. The Applicant’s remark did not provide persuasive argument nor clarification to the concerns presented in the 112 rejections above. That is, the applicant fails to clarify what is the system comprising image capture device, server, and non-fungible token minting device that is configured to deliver the collectible to a grader. The specification fails to provide description or example of the system/device. Therefore, the 112 rejections have been maintained.
35 U.S.C. 101 Rejections:
The Applicant’s remarks are fully considered, however are found to be unpersuasive.
Per 101 remarks on page 7, the Examiner respectfully disagrees. It appears that applicant’s analysis has conflated the abstract idea under Step 2A prong 1 with the additional elements under steps 2A prong 2 and 2B. As addressed in the 101 rejection above, under step 2A prong 1, without the additional elements of computer components, the claim invention is directed to the abstract idea of appraising or grading a collectible for record. Under steps 2A prong 2 and 2B, the additional elements of computer system comprising: image capturing device, server, non-fungible token mining device, encapsulation device, and collectible delivery device, in view of the specification (para. [0032], [0037], [0043]-[0048] and Fig. 2 stating general purpose computer system and servers with generic computer components of memory and processor; para. [0033]-[0034] stating general purpose encapsulation device and para. [0023] and [0026] stating general purpose recording camera. The specification does not provide example of a collectible delivery device for the general purpose of receiving and delivering collectible), the additional elements in the steps are recited at a high-level of generality, (i.e., as generic computer component or other machinery performing function within its generic manner;) which amount to no more than mere instructions to apply the judicial exception (i.e. abstract idea). This is discussed in MPEP 2106.05(f).
That is, as reflected in Enfish, there is a fundamental difference between computer functionality improvements (improvement of the technology or technical field), on the one hand, and uses of existing computers as tools to perform a particular task, on the other. The applicant does not concern in an improvement to computer capabilities or any machinery but instead merely utilizes the existing computer system or machinery for a desirable result (e.g., receive collectible, record grading procedure, mint non-fungible token, store information), which a computer system is used as a mere tool in its ordinary capacity, see MPEP 2106.05(f). To further clarify, in the specification of the application in paragraph [0002]-[0005], the applicant reflected a business need/reason of the abstract idea for grading and recording of the collectible for a service. The computer system, itself is merely used “applied” for the expected result of convenience and safekeeping. The claims do not reflect an improvement to the technology of the computer functionalities other than by using the additional elements of the computer system, desired result can be produced without a doubt and concern to technological details for how it is done. That is, the computer system itself or specific technology is not improved in anyway other than being applied as a tool/instrument for the judicial exception (abstract idea).
Thus, the 101 rejection is maintained.
35 U.S.C. 102 Rejections:
The Applicant’s remarks are fully considered, however are found to be unpersuasive.
The Applicant asserts “Mullen is silent with respect to the use of metadata and especially metadata related to the grading process and the collectible itself.” The Applicant further asserts, “Independent claims 1, 9, and 16 have been amended to include limitations directed to the inclusion of metadata in NFT that comprises characteristics of the collectible associated with the NFT. The characteristics of the collectible associated with the NFT included as metadata in the NFT is not anticipated by Mullen, because Mullen contemplates the use of an automatic authentication or grading process that determines physical characteristics of a collectible as part of that process. Determining physical characteristics of a collectible is not the same thing, nor does it suggest, as the inclusion of characteristics of a collectible in metadata associated with the NFT. In fact, as discussed in the Final Office Action at page 37, procedural details about the grading process are stored in a separate database that is associated with a specific collectible associated with an NFT. Storing procedural details in a database separate from an NFT is not the same thing, and does not anticipate, as storing metadata comprising characteristics of a collectible in an NFT itself.”
The Examiner respectuflly disagrees. Mullen in at least para. [0011] disclosing automated grading algorithm and the autonomous grading algorithm may have a version number and this version number may be associated with a grade. The storing of the “algorithm version number” is storing metadata about the procedure used. The storing individual grades for “surface, corners, edges, dimensions, centering, coloring (e.g., fading), etc.” are sub-grades that are part of the procedural output comprising characteristics of the collectible. The “stored with information associated with the collectible” discloses non-fungible token. Further description is provided in para. [0113] for grade for each corner demonstrates sub-grades for procedural details stored in database associated with the specific collectible’s NFT. Para. [0163], grading process (e.g., grading algorithm). Para. [0186] and [0221] and Fig. 36 “grading report” and “sub-grade information” are detailed metadata about the grading procedure and the characteristics of the collectible. To grade a collectible, it is part of the process to evaluate and record the characteristics such as surface, corners, edges, dimensions, centering, coloring (e.g., fading), etc. While the Applicant asserts “Determining physical characteristics of a collectible is not the same thing, nor does it suggest, as the inclusion of characteristics of a collectible in metadata associated with the NFT. In fact, as discussed in the Final Office Action at page 37, procedural details about the grading process are stored in a separate database that is associated with a specific collectible associated with an NFT. Storing procedural details in a database separate from an NFT is not the same thing, and does not anticipate, as storing metadata comprising characteristics of a collectible in an NFT itself.” The Applicant does not actually provide a valid reasoning for the differences. The claims are rejected based on the broadest reasonable interpretation as recited, “wherein the non-fungible token comprises metadata about the grading procedure and metadata about the collectible comprising characteristics of the collectible.” If the Applicant believes the specification provides additional features that is not relied upon, then the Examiner suggests the claims to be further narrowed to reflect the intended invention.
Relevant Prior Art Not Relied Upon
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. The additional cited art, including but not limited to the excerpts below, further establishes the state of the art at the time of Applicant’s invention and shows the following was known:
Goldston et al. (US 20220366022 A1) is directed to a system and method for initiating a royalty percentage calculation with a minting process of a non-fungible token (NFT) associated with media content comprising, for example, identifying, via a digital vault, media content stored and accessible through the digital vault in a request from an NFT creator to utilize the media content in the NFT; initiate the minting process with the media content that converts digital data associated with the media content into digital assets recorded on a blockchain; storing the digital data in a distributed ledger or decentralized database that cannot be edited, modified, or deleted; upon completion of the minting process, initiating one or more processes associated with the media content or the NFT in accordance with royalty percentages of the media content; and transmitting an alert to the NFT creator and rights holder associated with the one or more payment transactions to the accounts.
DiLallo, M. “How to Make an NFT” published on Apr. 5, 2022; The Motley Fool; < https://web.archive.org/web/20220429200156/https://www.fool.com/investing/stock-market/market-sectors/financials/non-fungible-tokens/how-to-make-an-nft/> ; describes the step to step guild to mint NFT.
Conclusion
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/WENREN CHEN/Examiner, Art Unit 3626