DETAILED CORRESPONDENCE
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 .
Acknowledgement
This communication is in response to the amendment filed on July 16, 2025. Claims 1-6 and 8-14 are currently pending and have been fully examined. Claim 7 has been cancelled by Applicant.
Response to Arguments
With respect to the claim objections, the amendments overcome the objections, and the objections are withdrawn.
With respect to the 112 rejections, the amendments overcome the rejections, and the rejections are withdrawn. However, new issues arise.
With respect to the 103 rejections, the examiner notes that the independent claim 1 is amended by introducing a database and incorporating the limitations of the currently cancelled claim 7. Applicant argues, on page 6 of the remarks, that the prior art of Ferenczi (the art applied to claim 7) does not teach “wherein access to the website is limited to users holding a predetermined minimum number of slices of a selected fractionalized NFT.” The examiner respectfully disagrees and notes that Ferenczi at least in ([0009], [0031]) teaches access-restricted website where the access to the website is allowed based on conditions such as user identity and properties of the non-fungible token. Similarly, the claim amendment (limitation of cancelled claim 7) recites limited access to the website based on a condition as “holding a predetermined minimum number of slices of a selected fractionalized NFT.” Since, this condition by itself does not further limit the scope of the claim because it does not affect any other claimed functions, Ferenczi sufficiently teaches allowing conditional access to a website.
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.
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 and 8-14 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 1, the amended claim recites: “a database associated with a platform in electronic communication over a network with the at least one processor.” It is not clear whether the platform is a component of the claimed system or only the database is a component of the system. In addition, it is not clear what entity “is in electronic communication over a network with the at least one processor.” Is it the database or the platform that “is in electronic communication ...” Therefore, the scope of the claim is unclear and one of ordinary skill in the art would not be reasonably appraised of the scope of the claim.
Dependent claims 2-6 and 8-14 are also rejected for being directed to the limitations of the rejected claim 1.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-6 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US Patent Publication No. 2023/0138023,) in view of Ferenczi (US Patent Publication No. 2023/0034169.)
With respect to claim 1, Yang et al. teach:
a system for generating and managing cryptographic assets, ([0021])
at least one non-transitory computer-readable medium that comprises instructions executable by at least one processor ([0057]-[0058])
identifying a first asset; (a game event is identified as a digital media(i.e. digital asset) : [0024])
minting a non-fungible token (NFT) in a fractionalized format with a plurality of slices, wherein the NFT is associated with and represents the first asset, (a fractional NFT for the digital media is generated: [0024]-[0026])
wherein the minting process comprises setting of at least following attributes for the NFT: identity and/or description of the first asset, a total number of slices, a total NFT value, an initial price per slice, a number of slices available for sale, and a number of slices designated for holding; (unique identifiers: [0027]-[0028], number of shares: [0022], [0034]-[0035], share values: [0027], [0031]-[0033])
a database associated with a platform in electronic communication over a network with the at least one processor; (NFTs stored locally or on the cloud: [0009], [0012], [0024], service platform providing games to users: [0045]-[0046])
Yang et al. do not explicitly teach:
a controlled-access website, wherein access to the website is limited to users holding a predetermined minimum number of slices of a selected fractionalized NFT.
However, Ferenczi teaches:
a controlled-access website, wherein access to the website is limited to…a selected fractionalized NFT. (using properties of the non-fungible token to verify user identity and permit access: [0009], [0031])
Although Ferenczi does not explicitly teach limited website access based on user holding a predetermined minimum number of slices of a selected fractionalized NFT, however, Ferenczi teaches restricting access to a website by a user based on properties of NFTs associated with the user and a number of the NFT slices held by a user is a property of the NFTs associated with the user.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the NFT based access-restricted website as taught by Ferenczi into the Fractionalized NFT system of Yang et al., in order to provide access to a website based on NFT properties. (Ferenczi: Abstract)
With respect to claim 2, Yang et al. and Ferenczi teach the limitations of claim 1.
Moreover, Yang et al. teach:
wherein the NFT attributes are stored in said database. (NFTs stored locally or on the cloud: [0009], [0012], [0024], Claim 1)
With respect to claim 3, Yang et al. and Ferenczi teach the limitations of claim 2.
Moreover, Yang et al. teach:
wherein the database stores a plurality of fractionalized NFTs, (NFTs stored locally or on the cloud: [0009], [0012], [0024], Claim 1)
and the platform comprises a user interface… (user interface: [0027], NFT shares provide access to digital media via a screen (i.e., user interface): [0036]-[0037])
Although Yang et al. and Ferenczi do not teach “a user interface which provides search function,” the examiner notes that the claim recitation indicates non-functional descriptive material because it merely describes the user interface without the “search function” actually being used throughout the claims.
The examiner further takes official notice, because a user interface that provides search function, is old and well-known, and providing old and well-known features does not gain patentable weight.
With respect to claim 4, Yang et al. and Ferenczi teach the limitations of claim 3.
Moreover, Yang et al. teach:
wherein said one or more users are able to buy and/or sell slices of one or more of said plurality of fractionalized NFTs. (shares can be traded: [0023], [0026]-[0027])
The examiner notes that the claim recitation “…one or more users are able to buy and/or sell…” indicate non-functional descriptive material that merely describe what a user is able to do and therefore does not further limit the scope of the claim.
With respect to claim 5, Yang et al. and Ferenczi teach the limitations of claim 4.
Moreover, Yang et al. teach:
wherein a user can submit a contingent purchase order to buy one or more slices from a particular fractionalized NFT. ([0025])
The examiner notes that the claim recitation describes a function performed by a user and therefore does not further limit the scope of the claim.
With respect to claim 6, Yang et al. and Ferenczi teach the limitations of claim 5.
Yang et al. do not explicitly teach:
wherein the contingent purchase order is triggered by a particular slice price for said particular fractionalized NFT. (share values are determined based on trading prices: [0031]-[0032])
The examiner notes that the claim recitation describes a function “is triggered” that is not positively recited and therefore does not further limit the scope of the claim. In addition, since the “contingent purchase order” is submitted by a user, the “is triggered” function also refers to the user being triggered to submit a purchase order and therefore the claim recitation describes function performed (or is supposed to be performed) by a user and therefore does not further limit the scope of the claim.
With respect to claim 12, Yang et al. and Ferenczi teach the limitations of claim 1.
Moreover, Yang et al. teach:
wherein the fractionalized NFTs comprise elements of a game. ([0021]-[0024])
The examiner notes that the claim recitation indicates non-functional descriptive material and therefore does not further limit the scope of the claim.
With respect to claim 13, Yang et al. and Ferenczi teach the limitations of claim 12.
Moreover, Yang et al. teach:
online game with a plurality of players, ([0022], [0029], [0046], Claim 2)
Yang et al. and Ferenczi do not explicitly teach:
a fantasy celebrity game … wherein each player from said plurality of players select a team roster of a predetermined size from a list of celebrities and social media influencers.
However, the claim recitation describes actions of a user and therefore does not further limit the scope of the claim.
In addition, the claim recitation describes features of a game which is not a component of the claimed system and therefore, does not further limit the scope of the claim.
With respect to claim 14, Yang et al. and Ferenczi teach the limitations of claim 12.
Yang et al. and Ferenczi do not explicitly teach:
wherein said plurality of players compete through matchups of one or more individuals from their respective team rosters, where the winner or winners of each matchup are determined by one or more of the following real-life parameters for the individuals in said matchups: social media following, box office performance, album sales, post engagement rate, and media appearances.
However, the claim recitation “said plurality of players compete through matchups…” indicates actions by a user and therefore does not further limit the scope of the claim.
In addition, the claim recitation “…where the winner or winners of each matchup are determined by one or more of the following real-life parameters…” describes features of a game which is not a component of the claimed system and therefore, does not further limit the scope of the claim.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. and Ferenczi, as applied to claim 3 above, in view of Kozlowski, III (US Patent No. 11,562,451.)
With respect to claim 8, Yang et al. and Ferenczi teach the limitations of claim 3.
Yang et al. and Ferenczi do not explicitly teach:
wherein the platform user interface comprises an author dashboard for authors who mint fractionalized NFTs.
However, Kozlowski, III teaches:
wherein the platform user interface comprises an author dashboard for authors who mint fractionalized NFTs. (NFT creator Interface: Col. 8 ll. 22-42)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the web interface for crating NFTs, as taught by Kozlowski, III into the Fractionalized NFT system of Yang et al. and Ferenczi, in order to enable creators to tokenize their assets. (Kozlowski, III: Abstract, Col. 2 l. 66-Col. 3 l. 10)
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. and Ferenczi, as applied to claim 3 above, in view of Meyer et al. (US Patent Publication No. 2021/0110386.)
With respect to claim 9, Yang et al. and Ferenczi teach the limitations of claim 3.
Yang et al. and Ferenczi do not explicitly teach:
wherein the fractionalized NFT attributes further comprise identification of rewards available to users holding one or more slices of the fractionalized NFT.
However, Meyer et al. teach:
the Universal Asset Token parameters (i.e., fractionalized NFT attributes) comprise identification of rewards available to owners of the UATs or sub-tokens (i.e., one or more slices of the fractionalized NFT.) ([0045], [0147])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate providing rewards to asset owners, as taught by Meyers et al., into the fractionalized NFT system of Yang et al. and Ferenczi, in order to enable trading of the assets. (Meyer et al.: Abstract, [0018])
With respect to claim 10, Yang et al. and Ferenczi and Meyer et al. teach the limitations of claim 10.
Yang et al. and Ferenczi and Meyer et al. do not explicitly teach:
wherein said rewards comprise at least one of the following: discounts codes, tickets to digital or in-person events, or access to digital and/or physical clubs.
However, the claim recitation merely indicates non-functional descriptive material and therefore does not further limit the scope of the claim.
With respect to claim 11, Yang et al. and Ferenczi teach the limitations of claim 1.
Yang et al. and Ferenczi do not explicitly teach:
wherein the fractionalized NFT attributes further comprise identification of achievements available to users holding one or more slices of the fractionalized NFT who also perform a particular action associated with a particular achievement.
However, Meyer et al. teach:
the Universal Asset Token parameters (i.e., fractionalized NFT attributes) comprise identification of achievements (i.e. rewards) available to owners of the UATs or sub-tokens (i.e., one or more slices of the fractionalized NFT.) ([0045], [0147])
Yang et al. and Ferenczi and Meyer et al. do not explicitly teach:
users who also perform a particular action associated with a particular achievement,
However, the claim recitation indicates non-functional descriptive material that merely describes actions of a user and therefore does not further limit the scope of the claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Teel (US 2021/0279358.)
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 SIMA ASGARI whose telephone number is (571)272-2037. The examiner can normally be reached M-F 9am-6pm.
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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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/SIMA ASGARI/Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698