DETAILED ACTION
Acknowledgements
This Office Action is in reply to Applicant’s response filed November 4, 2024.
Claims 1-20 are currently pending.
Claims 1-8 have been examined.
Claims 9-20 have been withdrawn, as noted below.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of claims 1–8 in the reply filed on November 4, 2024 is acknowledged. Claims 9–20 are currently withdrawn.
Claim Objections
Claim 2 is objected to because “use by the user to at least one of capture” should be “use by the user to capture”.
Claim 3 is objected to because it is dependent on claim 2.
Claim 7 is objected to because “system of claim 6” should be “The system of claim 6”.
Claim Rejections - 35 USC § 112
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 2 and 3 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 regards as the invention.
Regarding claims 2 and 3
Claim 2 recites:
The system of claim 1, wherein the system provides an application for local installation and use by the user to at least one of capture the personal logo, the personal logo comprising at least one of an image of the user and a logo representing the user.
There is no antecedent basis for “the personal logo”. Claim 1 refers to “personal logo material”. It is unclear if these two terms refer to the same thing. Claim 3 is indefinite by virtue of being dependent on claim 2.
Claim Rejections - 35 U.S.C. § 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 1-8 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Each of claims 1-8 falls within one of the four statutory categories. Each of claims 1-8 falls within the category of machine.
Step 2A – Prong 1
Exemplary claim 1 is directed to an abstract idea of a commercial interaction. The abstract idea is set forth or described by the following italicized limitations:
A system for monetizing value of non-fungible tokens, comprising:
a computer and application executing thereon that:
captures personal logo material of a user,
embeds the logo material into a non-fungible token (NFT) of the user,
posts the NFT on a blockchain,
invites advertisers to associate corporate logos with the NFT,
receives funds from a first advertiser for advertising services using the NFT with a corporate logo of the first advertiser associated therewith, and
captures a portion of the funds for remittance to the user.
The italicized limitations above represent a fundamental economic practice in the form of a commercial interaction. It is a system for advertisement by associating a logo with an NFT and receiving payment.
Step 2A – Prong 2
Claim 1 does not include additional elements (when considered individually, as an ordered combination, and/or within the claim as a whole) that are sufficient to integrate the abstract idea into a practical application. The additional elements are represented by the following bolded limitations:
A system for monetizing value of non-fungible tokens, comprising:
a computer and application executing thereon that:
captures personal logo material of a user,
embeds the logo material into a non-fungible token (NFT) of the user,
posts the NFT on a blockchain,
invites advertisers to associate corporate logos with the NFT,
receives funds from a first advertiser for advertising services using the NFT with a corporate logo of the first advertiser associated therewith, and
captures a portion of the funds for remittance to the user.
The additional element a computer and application executing thereon that constitutes mere instructions to perform the abstract idea using a computer.
The additional elements non-fungible tokens, posts the NFT on a blockchain, and using the NFT, are recited at a high level of generality and do no more than link the method being performed to a blockchain environment.
In view of the above, the additional elements individually do not provide a practical application of the abstract idea. Furthermore, the combination of additional elements does no more than link the abstract idea to a blockchain environment and provide instructions to implement the idea on a computer, and therefore the combination of additional elements does not provide a practical application of the abstract idea.
Step 2B
Claim 1 does not include additional elements, when considered individually and as an ordered combination, that are sufficient to amount to significantly more than the abstract idea. The reasons for reaching this conclusion are substantially the same as the reasons given above in § Step 2A – Prong 2. For brevity only, those reasons are not repeated in this section.
Dependent Claims 2-8
Dependent claims 2-8 fail to cure this deficiency of independent claim 1 (set forth above) and are rejected accordingly. Particularly, claims 2-8 recite limitations that represent (in addition to the limitations already noted above) either the abstract idea or an additional element that is merely extra-solution activity, mere use of instructions and/or generic computer component(s) as a tool to implement the abstract idea, and/or merely limits the abstract idea to a particular technological environment.
Claim 2 recites:
The system of claim 1, wherein the system provides an application for local installation and use by the user to at least one of capture the personal logo, the personal logo comprising at least one of an image of the user and a logo representing the user.
which merely refines the abstract idea.
Claim 3 recites:
The system of claim 2, wherein the system embeds the captured personal logo into the NFT.
which merely refines the abstract idea.
Claim 4 recites:
The system of claim 1, wherein the association of corporate logos with the NFT by advertisers comprises insertion of the corporate logos by the advertisers into the NFT.
Which has no patentable weight because it does not describe any functions of the claimed system.
Claim 5 recites:
The system of claim 1, wherein the advertisers advertise products in banner advertisements in Internet web pages displaying material from the NFT featuring the user and further advertising the association of the advertiser with the user.
Which has no patentable weight because it does not describe any functions of the claimed system.
Claim 6 recites:
The system of claim 1, wherein advertisers additionally embed radio frequency identification (RFID) tags and barcode information into the NFT.
Which has no patentable weight because it does not describe any functions of the claimed system.
Claim 7 recites:
system of claim 6, wherein the system deploys an application programming interface (API) that interacts with the RFID tags and barcode information to read and store information about products of an advertiser advertised with the NFT, the information about the products comprising at least one of names, descriptions, and prices of the products.
which merely includes an API that interacts with data in the NFT and is a refinement of the abstract idea.
Claim 8 recites:
The system of claim 1, wherein advertisers adjust at least one of size, position, and orientation of their corporate logos to fit within the NFT.
Which has no patentable weight because it does not describe any functions of the claimed system.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 4-6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Andon et al. (US 20220300966 A1).
Regarding claim 1
Andon teaches:
A system for monetizing value of non-fungible tokens, comprising:
a computer and application executing thereon that: (Andon Fig. 1 64 (Ad Server/Marketplace))
captures personal logo material of a user, (Andon Fig. 1, 16 (jersey) and 52 (fire overlay)
[0019] “For the purpose of this example, the jersey 16 may be regarded as a ‘primary digital asset.’ [personal logo material]”)
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embeds the logo material into a non-fungible token (NFT) of the user, (Andon Fig. 1 32 (Ad Token)
[0023] “in the context of a basketball video game, ‘upgrades’ that may be applied to an NFT-backed jersey may include, for example: advertising logos/indicia that may be layered [embeds] onto the jersey (advertising assets 32)”
[0024] “With continued reference to the basketball jersey example shown in FIG. 1, in this embodiment, the advertising asset 32 may comprise a logo 50 that is affixed on the outer visual surface of the jersey 16 (i.e., within the game 12).”)
posts the NFT on a blockchain, (Andon [0003] “The records comprising the NFT are often stored in/on an immutable digital ledger, such as a blockchain-style ledger, which can be broken up across many different nodes or ledger-maintaining participants.”)
invites advertisers to associate corporate logos with the NFT, (Andon Fig. 1, 50 (logo) reads on corporate logo
[0023] “in the context of a basketball video game, ‘upgrades’ that may be applied to an NFT-backed jersey may include, for example: advertising logos/indicia that may be layered [associate] onto the jersey [NFT]”)
Andon teaches a system which allows advertisers to associates logos with an NFT (an NFT-backed jersey in the given example). Andon does not explicitly teach inviting advertisers to use the system for such purpose, but inviting advertisers to do so is implied since it is the purpose of the system.
receives funds from a first advertiser for advertising services using the NFT with a corporate logo of the first advertiser associated therewith, and (Andon [0036] “in addition to simply supplying the logo, the company may also indicate how much it is willing to pay”)
captures a portion of the funds for remittance to the user. (Andon [0036] “Once published to the marketplace, users may enter the marketplace and agree to certain ‘sponsorships’ whereby the user would agree to wear a logo on the primary asset for a predetermined amount of time or impressions. Once a logo is selected, the minted token may pass to the user, and the user may begin receiving value [portion of the funds] for displaying the logo 50. Further, in some embodiments, the creator of the primary asset may receive a commission for having provided the vehicle to support the logo. Likewise, the game host may receive a commission for having provided the environment for the logo to be seen.”)
Regarding claim 4
The system of claim 1, wherein the association of corporate logos with the NFT by advertisers comprises insertion of the corporate logos by the advertisers into the NFT.
The above limitation describes actions taken by an advertiser. It does not describe any functions performed by the claimed computer and application, and therefore imposes no limitation on the structure of the claimed system. The above language is given no patentable weight.
Regarding claim 5
The system of claim 1, wherein the advertisers advertise products in banner advertisements in Internet web pages displaying material from the NFT featuring the user and further advertising the association of the advertiser with the user.
The above limitation describes actions taken by an advertiser. It does not describe any functions performed by the claimed computer and application, and therefore imposes no limitation on the structure of the claimed system. The above language is given no patentable weight.
Regarding claim 6
The system of claim 1, wherein advertisers additionally embed radio frequency identification (RFID) tags and barcode information into the NFT.
The above limitation describes actions taken by an advertiser. It does not describe any functions performed by the claimed computer and application, and therefore imposes no limitation on the structure of the claimed system. The above language is given no patentable weight.
Regarding claim 8
The system of claim 1, wherein advertisers adjust at least one of size, position, and orientation of their corporate logos to fit within the NFT.
The above limitation describes actions taken by an advertiser. It does not describe any functions performed by the claimed computer and application, and therefore imposes no limitation on the structure of the claimed system. The above language is given no patentable weight.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Andon et al. (US 20220300966 A1) in view of Constable et al. (US 20240146533 A1).
Regarding claim 2
Andon teaches:
The system of claim 1, wherein [the system provides] an application for [local installation and] use by the user to at least one of capture the personal logo, (Andon Fig. 1, “Asset Creator” reads on user and “Token/Graphics” reads on personal logo
[0043] “Aspects of this disclosure may be implemented, in some embodiments, through a computer-executable program of instructions, such as program modules, generally referred to as software applications or application programs”)
Figure 1 of Andon teaches the graphics (personal logo) coming from an Asset Creator (user), which implies the Asset Creator has captured the graphics. Andon further teaches such aspect can be implemented as an application.
Andon does not teach or suggest such application being provided by the Ad Server/Marketplace (system) for local installation. However, Constable teaches:
the system provides [an application for] local installation and […] (Constable [0098] “A user device 107 can connect to an application store service 170 (e.g., using a web site or an installed application provided by the application store 108), to access various application discovery tools. For example, a user can use the application store service 170 to browse and/or search for protocol-enabled applications. As another example, the application store service 170 can provide application ratings and/or recommendations. Once a user selects an application, the application can be downloaded (e.g., to a user device 107) from the application repository 168. The application store 108 can be provided by or otherwise affiliated with the protocol provider.”)
Constable teaches a service which provides applications to users to download. Installing said application is at least implied since it is downloaded. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Constable’s application store service with the Ad Server/Marketplace of Andon in order to provide users with the application.
the personal logo comprising at least one of an image of the user and a logo representing the user.
This portion of the limitation is non-functional descriptive material because it claims the content of data with no functional relationship to the claimed system.
Regarding claim 3
Andon teaches:
The system of claim 2, wherein the system embeds the captured personal logo into the NFT.
See claim 1.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Andon et al. (US 20220300966 A1) in view of Singh (US 20230418785 A1).
Regarding claim 7
Andon does not teach, however Singh teaches:
system of claim 6, wherein the system deploys an application programming interface (API) that interacts with the RFID tags and barcode information (Singh [0030] “the cloud platform 104 includes records 118 residing in one or more database entities 116, and exposes [deploys] one or more APIs 11I as a payload for clients 102 to perform CRUD (Create, [Read], Update, Delete) operations on the database entities”)
Singh teaches exposing an API to allow clients to create and read data from/to a database. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine this with the system of Andon to allow users to submit/read data.
to read and store information about products of an advertiser advertised with the NFT,
This portion of the limitation is an intended use not given patentable weight.
the information about the products comprising at least one of names, descriptions, and prices of the products.
This portion of the limitation is non-functional descriptive material because it claims the content of data with no functional relationship to the claimed system.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed in the enclosed PTO-892.
Eivy et al. (US 20230107705 A1) teaches:
[0030] “Subsequently, endorser 120/320 interacts with smart minting contract 360 generated by digital asset management software code 118, executed by hardware processor 114 of system 110/310, which mints endorsed editions of an existing NFT with an added endorsement, such as a digital signature, or a digital representation of a trademark, logo, or brand for example, using the private key of endorser 120/320. Endorsed digital asset 122 in the form of an endorsed NET (hereinafter also “endorsed NFT 122”) is then produced (i.e., minted in the case of an NFT) and posted for sale by system 110/310 using smart sales contract 360 generated by digital asset management software code 118, executed by hardware processor 114. This enables NFT collector 308 to view and select endorsed NFT 122 for purchase.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT MICHAEL DIROMA whose telephone number is (571)272-6430. The examiner can normally be reached Monday - Friday 12:30 pm - 8:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick McAtee can be reached on (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT MICHAEL DIROMA/
Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698