DETAILED ACTION
Status of Claims
Applicant has amended claims 1-9. Claims 16-24 have been added. Claims 10-15 have been canceled. Thus, claims 1-9 and 16-24 remain pending in this application. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments and amendments filed on 08 October 2025 with respect to:
objection to claims 1-9,
rejections of claims 1-9 under U.S.C. § 112(a),
rejections of claims 1-9 under U.S.C. § 112(b),
rejection to claims 1-9 under U.S.C. § 101,
have been fully considered. Amendments to claims have been entered.
Applicant's arguments filed with respect to claims regarding the 35 U.S.C. § 112(a), § 112(b) and § 101 rejections have been fully considered but they are moot in view of new ground(s) of rejection.
If, in the opinion of the Applicant, a telephone conference would expedite the prosecution of the subject application, the Applicant is encouraged to contact the undersigned Examiner at the phone number listed below.
Priority
This application filed 06 March 2023 is a continuation of PCT/US2022/037105, filed on 14 July 2022. PCT/US2022/037105 claims priority from provisional application 63/221,901, filed on 14 July 2021. Accordingly, this application is given priority from 14 July 2021.
Claim Interpretation
Regarding claims 1-9 and 16-24, the clause “in response to a user selecting a respective transaction option using the in-twin marketplace …” in representative claim 1 is an optional limitation and, as such, is not further limiting if a user has not selected a “respective” transaction option.
Regarding claims 1-9 and 16-24, clauses such as “to shift coverage among items” in representative claim 5 are merely statements of intended use which do not affect the method step of “in-twin marketplace provides an in-twin interface operably coupled with the smart contract system”. Similar phrasing will be interpreted accordingly.
A recitation of intended use or purpose of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or fulfilling said purpose, then it meets the claim.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" clauses, or
(D) "whereby" clauses.
This list of examples is not intended to be exhaustive. See also MPEP § 2111.04.
Specification
The following is a quotation of the first paragraph of 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.
The specification is objected to under 35 U.S.C. § 112, first paragraph, as failing to support the subject matter set forth in the claims. The specification, as originally filed does not provide support for the invention as now claimed.
The test to be applied under the written description portion of 35 U.S.C. § 112, first paragraph, is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of later claimed subject matter. Vas-Cat, Inc. v. Mahurkar, 935 F. 2d 1555, 1565, 19 USPQ2d 111, 1118 (Fed. Cir. 1991), reh'rg denied (.Fed. Cir. July 8, 1991) and reh'rg, en banc, denied (Fed. Cir. July 29, 1991).
Claims 1 and 16 include the representative limitation:
generating, by a game engine programmed with an execution framework and predefined tools, a set of game engine generated environments
However, the specification does not provide a written description disclosure to support “a game engine”. Examiner notes that the instant specification does cite “game engine generated environments”, throughout.
Claims 6 and 21 include the representative limitation:
the respective smart contract being embedded within the digital twin.
However, the specification does not provide a written description disclosure to support “embedding a smart contract in a digital twin”.
Claim Objections
Claim 1 is objected to because in the limitation:
game engine programmed with an execution framework, a software development environment, and a set of game engine services with predefined tools;
the “set of game engine services” is not recited in the remainder of the claims. Accordingly, the “set of game engine services” will be given limited patentable weight.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 6, 16 and 21 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 16 and the representative limitation:
generating, by a game engine programmed with an execution framework and predefined tools, a set of game engine generated environments
Examiner finds no evidence of “a game engine”. To overcome this rejection, Applicant should identify where in the specification a game engine is disclosed, or otherwise, cancel such matter from the claims.
Examiner notes that the instant specification does cite “game engine generated environments”, throughout.
Regarding claims 6 and 21 and the representative limitation:
the respective smart contract being embedded within the digital twin.
Examiner finds no evidence of “embedding a smart contract in a digital twin”. To overcome this rejection, Applicant should identify where in the specification embedding a smart contract in a digital twin is disclosed, or otherwise, cancel such matter from the claims.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-9 and 16-24 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claims 1 and 16, in the representative limitation:
in response to a user selecting a respective transaction option using the in-twin marketplace, automatically initiate, by the digital twin system, execution of a respective smart contract associated with the respective transaction option on the distributed ledger.
the term "respective" as in “respective transaction option” is a relative term which renders the claim indefinite. The term “respective” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
For the purposes of examination, the term “respective” will be interpreted to be not further limiting. Correction is required.
Claims 1 and 16 are rejected under 35 U.S.C. 112(b) as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are something similar to :
receiving, by the digital twin system, a transaction option.
Correction is required.
Moreover, the Examiner finds that because particular claims are rejected as being indefinite under 35 U.S.C. § 112(b), it is impossible to properly construe claim scope at this time (See Honeywell International Inc. v. ITC, 68 USPQ2d 1023, 1030 (Fed. Cir. 2003) “Because the claims are indefinite, the claims, by definition, cannot be construed.”). However, in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing art rejections even though the claims are indefinite, the claims are construed and the art is applied as much as practically possible.
Claims 2-9 and 17-24 are rejected by way of dependency on a rejected independent claim.
The art rejections below are in view of the 112(b) rejections stated above.
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.
Regarding claims 1-9, the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is software. Based on the broadest reasonable interpretation, each of the components:
a game engine
a smart contract system
a digital twin system
is software.
Claims 1-9 and 16-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In the instant case, claims 16-24 are directed to a “method” which is one of the four statutory categories of invention.
Claims are directed to the abstract idea of executing a transaction which is fundamental business practice grouped under methods of organizing human activity.
in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 5, p.p. 50-57 (Jan. 7, 2019))). Claims recite:
providing a digital twin, wherein the digital twin includes a representation of a transactable asset;
configuring one or more “contracts” that are associated with one or more transaction options for the transactable asset;
presenting a “marketplace” within the set of “environments” that provides the one or more transaction options for the transactable asset; and
in response to a user selecting a respective transaction option, automatically initiating execution of a respective “contract” that is associated with the respective transaction option.
Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as:
generating, by a game engine programmed with an execution framework and predefined tools, a set of game engine generated environments;
a digital twin system;
a digital twin that integrates with the set of game engine generated environments;
a smart contract system with one or more smart contracts that are executed on a distributed ledger network;
in-twin marketplace
represent the use of a computer as a tool to perform an abstract idea and do no more than generally link the abstract idea to a particular field of use. The specific components are described in very broad terms - i.e.
a game engine, execution frame work and game generated environments,
integrating with the set of game engine generated environments, and
executing smart contracts on a distributed ledger network
such that no technological improvement to the abstract idea is recited. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) the acts of “collecting information, analyzing the information and providing the results of the analysis”.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone.
The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities. These functionalities are well-understood, routine and conventional activities previously known to the industry. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Thus, viewed as a whole, the combination of elements recited in the claims merely describe the concept of executing a transaction using computer technology (e.g. the processor).
Hence, claims are not patent eligible.
Dependent claims 16-24 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to a judicial exception (Step 2A- Prong One). Nor are the claims directed to a practical application to a judicial exception (Step 2A- Prong Two).
For example, claims 16-21, 23 and 24 are silent as to “additional elements” which integrate the abstract idea into a practical application of a judicial exception, or that are sufficient to amount to significantly more than the judicial exception. They merely further describe the abstract idea of executing a transaction.
In claims 22, the feature of an application program interface (API) adds technology to the abstract idea of the independent claim. However, an API is a generic technological component, and its use is in its normal, expected, and routine manner. The component is recited at a high level of generality which does not improve another technology or technical field nor the functioning of the computer itself.
Accordingly, none of the dependent claims add a technological solution to the method of organizing human activity in the independent claim.
Note: The analysis above applies to all statutory categories of invention. As such, the presentment of claims 1-9 otherwise styled as a system would be subject to the same analysis.
Conclusion
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
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 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 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, 2, 7, 9, 16, 17, 22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Sliwka et al (US Pub. No. 20210082044 A1) in view of DeLuca et al (20220197522 A1).
Regarding claims 1 and 16, Sliwka teaches systems and methods for facilitating decentralized loan processes with a smart contract architecture [0006]. In embodiments, the decentralized loan process is executed in a series of stages, including an authentication stage where a collateral item is authenticated, an appraisal stage where the collateral item is appraised, and a safekeeping stage where the item is physically secured in a safekeeping facility. He teaches:
game engine programmed with an execution framework, a software development environment, and a set of game engine services with predefined tools – [0074] “the tokenization platform 100 manages one or more cryptographic ledgers (or “distributed ledgers”) and provides flexible functionality of virtual representations of items such as goods, services, and/or experiences with the fulfillment and satisfaction of said items. …, the provider of the platform 100 may sell, lease, give away, or otherwise transact items offered by the provider”;
a smart contract system programmed with the execution framework – [0053], [0056] and [0062]; and
a digital twin system – [0066] “a tokenization platform that enables the creation of virtual representations of items”,wherein the system is configured to perform steps comprising:
create, by the game engine using the predefined tools, a set of game engine-generated environments – [0066], [0074] and [0078];
provide, by the digital twin system, a digital twin that integrates with the set of game-engine generated environments, wherein the digital twin includes a representation of a transactable asset – [0007] “generating, by the one or more processing devices, a virtual representation of the collateral item”, [0066] “tokenization platform that enables the creation of virtual representations of items (also referred to as “VIRLs”), such as goods, services, and/or experiences”;
configure, by a smart contract system, one or more smart contracts that are executed on a distributed ledger network and that are associated with one or more transaction options for the transactable asset – [0056] and [0059];
present, by the digital twin system, an in-twin marketplace within the set of game engine-generated environments that provide the one or more transaction options for the transactable asset – [0091] “a marketplace system 102 that allows virtual representations of items to be defined, generated, viewed, and/or redeemed”; and
in response to a user selecting a respective transaction option using the in-twin marketplace, automatically initiate, by the digital twin system, execution of a respective smart contract associated with the respective transaction option on the distributed ledger – [0075] “facilitate or verify transactions involving the item (e.g., smart contracts)”, [0080], [0097] and [0146].
Examiner interprets sell, lease, give away, or otherwise transact items [0074] as indicative of Applicant’s pre-defined tools.
Sliwka teaches virtual representations of items [0066]. Sliwka does not explicitly disclose:
a digital twin system, wherein a digital twin that integrates with the set of game-engine generated environments, wherein the digital twin includes a representation of a transactable asset.
However, DeLuca teaches a method, computer program product and/or computer system that performs the operations of receiving a plurality of Internet of Things (IoT) entries, with the plurality of IoT entries including information indicative of identities of digital twin template for a set of physical assets [0004]. She teaches a digital twin system which monitors activities that are being performed by the physical asset [0057].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Sliwka’s disclosure to include digital twin system which monitors activities that are being performed by the physical asset as taught by DeLuca because it allows a digital twin to continuously learn and update itself from multiple sources to represent its near real-time status, working condition or position - DeLuca [0003].
Regarding claims 2 and 17, Sliwka teaches the “digital twin” as representing data associated with the smart contract - [0010].
Regarding claims 7 and 22, Sliwka teaches an application program interface (API) configured to interface between the digital twin and data related to the transactable asset – [0076] and [0090].
Regarding claim 9 and 24, Sliwka teaches digital twin includes transactional infrastructure configured to interact with the in-twin marketplace – [0053], [0056] and [0074].
Claims 3-5, 8, 18-20 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Sliwka in view of DeLuca, in further view of Shirashi et al (Japanese Patent Application No. 2020013557 A - machine translation).
Regarding claims 3, neither Sliwka nor DeLuca explicitly discloses the digital twin system, the smart contract system, and the in-twin marketplace as cooperating to provide an in-twin insurance contract.
However, Shirashi teaches using digital twins for determining information about vehicles and insurance metrics [0007]-[0008], and for use in insurance contracts [0009].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Sliwka’s disclosure to include insurance contracts as taught by Shirashi in order to provide real-time status of the vehicle or the real-time information about how a vehicle is being driven by its driver– Shirashi [0003], and to reduce risk posed by dangerous behavior and thus reduce insurance rates for vehicle owners – Shirashi [0004].
Examiner notes that the phrase “to provide an in-twin insurance contract” is given limited patentable weight in as much as it is a statement of interned use.
Regarding claims 4 and 19, Sliwka teaches the digital twin includes an in-twin interface operably coupled with the smart contract system to shift insurance coverage terms – [0076] and [0090].
Examiner notes that the phrase “to shift insurance coverage terms” is given limited patentable weight in as much as it is a statement of interned use.
Regarding claims 5 and 20, Sliwka teaches the in-twin marketplace as providing an in-twin interface operably coupled with the smart contract system to shift coverage among items – [0074], [0076] and [0090].
Examiner notes that the phrase “to shift insurance coverage terms” is given limited patentable weight in as much as it is a statement of interned use.
Regarding claims 8 and 23, neither Sliwka nor DeLuca explicitly discloses the data related to the transactable asset includes at least one of a data asset, advertising, service, leasing, insurance, emissions, pollution credits, or renewable energy credits.
However, Shirashi teaches using digital twins for insurance evaluation purposes [0024] and [0026].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Sliwka’s disclosure to include insurance evaluation as taught by Shirashi in order to provide real-time status of the vehicle or the real-time information about how a vehicle is being driven by its driver– Shirashi [0003], and to reduce risk posed by dangerous behavior and thus reduce insurance rates for vehicle owners – Shirashi [0004].
Regarding claim 18, neither Sliwka nor DeLuca explicitly discloses the transactable asset as comprising an in-twin insurance contract.
However, Shirashi teaches using digital twins for insurance evaluation purposes [0024] and [0026] as taught in the rejection of claim 8. Accordingly, these claims are rejected for the same reasons.
Additional Comments
Regarding claims 6 and 21, in view of pending rejections, the Examiner is unable to locate prior art references that anticipate the claimed invention or renders it obvious.
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
Ansari et al: “Insurability of Cyber Physical Production Systems: How Does Digital Twin Improve Predictability of Failure Risk?”, IFAC-PapersOnLine, Volume 53, Issue 3, 2020, Pages 295-300
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD J BAIRD whose telephone number is (571)270-3330. The examiner can normally be reached 7 am to 3:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon can be reached at 571-270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692