DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This communication is responsive to the submission filed August 5, 2026.
Claim 1 is amended.
Claims 11-12 are canceled.
Claims 1-10 and 13-20 are pending.
Response to Remarks
35 U.S.C. § 101
Applicant contends that the claims are directed towards patent eligible subject matter. First, Applicant contends that the claims are not directed towards an abstract idea, specifically a Certain Method of Organizing Human Activities. Applicant contends that the claims recite four elements that remove the claims from the scope of Certain Methods of Organizing Human Activities: 1) each NFT includes ownership transfer data, fractional ownership data, and value units stored on a blockchain, i.e., a ledger; 2) a smart contract, i.e., a contract, performs the ownership transfer and verifies the result before recording the transfer on the blockchain, i.e., ledger; 3) a private key is used to update ownership transfer data, fractional ownership data, and value units; and 4) value unit accounting is performed by the smart contract. Examiner respectfully disagrees that such subject matter removes the claims from the scope of Certain Methods of Organizing Human Activities. For example, recording ownership transfer data, fractional ownership data, and value of the asset are examples of Certain Methods of Organizing Human Activities as they relate to recording asset ownership data and asset value in a ledger, i.e., the blockchain. Further, using a contract to perform an asset transfer and verifying that the asset has successfully transferred are commercial interactions as they relate to an asset transfer, for example from a seller to a buyer. Third, generally updating ownership transfer data, fractional ownership data, and value units using a key, e.g., a password, without more fail to place any meaningful limits on how the updating is performed. Fourth, updating a value of an asset using a contract is also an example of a legal interaction as well as a commercial interaction, i.e., Certain Methods of Organizing Human Activities. Therefore, Applicant’s contention that the claims do not recite abstract ideas is unpersuasive.
Applicant next contends that the claims recite a practical application of any abstract ideas. Specifically, Applicant contends that the claims recite a practical application of the abstract idea because the ownership transfer, fractional ownership, and value unit data are encoded on the blockchain as data fields of the NFT such that a current ownership state of the NFT, including the fractional percentage of ownership and the at least one value unit tied to the NFT, is determinable from the blockchain independently of the server. Such subject matter recites a technical improvement as it concerns durability and recoverability of system state across failure, upgrade, or replacement of a component. Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. See MPEP 2106.04(d)(II). Examiner respectfully disagrees as recording ownership information of an asset in a ledger on a third party system amounts to recordkeeping of the asset, an abstract idea, rather than an additional element that could serve as a basis to recite a practical application of the abstract idea. Further, as alluded to above, the generality of how the private keys, verifying that the asset has successfully transferred, and the ownership data fields stored in the NFT on the ledger fail to recite specific technical steps performed in the claim that could recite an additional element that could recite a practical application. Therefore, Applicant’s contention that the claims recite a practical application of the abstract ideas is unpersuasive.
Applicant also contends that the claim, as a whole, recites significantly more than the abstract idea. Specifically, Applicant contends that Step 2B requires evidentiary support for whether additional elements recite well-understood, routine, and conventional activities as required by Berkheimer. Examiner respectfully disagrees. For example, Example 42 Claim 2 identifies additional elements at Step 2A that amount to an instruction to implement the abstract idea on a computer or using a computer as a tool to perform the abstract idea. At Step 2B, the example concludes that the same analysis applies as in Step 2A and does not provide any evidence for support of whether the additional elements are well-understood, routine, and conventional. Therefore, Applicant’s contention that evidentiary support is required is supported by neither the MPEP nor the 2019 Patent Eligibility Guidance and its accompanying examples. Therefore, Applicant’s contention that the claims recite significantly more than the abstract ideas is unpersuasive.
Applicant also cites to Ex Parte Desjardins. While Examiner agrees that the analytical framework in Desjardin is applicable, the claim language in Desjardins is significantly different from that recited here. For example, the claim in Desjardins recited additional elements that recited a practical application rather than an additional element that served to apply the abstract idea. Such additional elements are missing from the claims here. Therefore, Applicant’s contention that the Desjardin analytical framework applied to the claims here recites patent eligible subject matter is unpersuasive.
Accordingly, this ground of rejection is maintained.
35 U.S.C. § 103
Applicant’s arguments, see pp. 12-15, filed August 5, 2026, with respect to claims 1-10 and 13-20 have been fully considered and are persuasive. The rejection of February 6, 2026, has been withdrawn.
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 1-10 and 13-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more. There are two criteria for subject matter eligibility. The first is that the claimed invention must be to one of the four statutory categories, i.e., a process, machine, manufacture, or composition of matter. See MPEP 2106(I). Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. See MPEP 2106(I). Here, claims 1-10 and 13-16 are directed towards a process, claim 17 is directed towards a manufacture, and claims 18-20 are directed towards a machine. Therefore, the analysis proceeds to determine whether the claims recite abstract ideas.
Per Claim 1: Claim 1, as a whole, is directed towards the abstract idea of accounting for fractional ownership transfer of an asset by recording specific data in a ledger. In particular, the claim recites interacting with a ledger system that includes contracts and stores data fields of assets, i.e., NFTS. The system also interacts with a plurality of end users to facilitate ownership transfer of the assets by using a contract of the ledger system to execute the ownership transfer and verifying the result of the transfer before recording it in the ledger. The system also uses a private key to update ownership transfer data fields of the asset. The process also adds or subtracts a value unit tied to the NFT and accounting for the value unit in the ledger. Ownership transfer is facilitated by maintaining an account of ownership transfer in the ledger and updating fractional ownership data fields of the asset in the ledger. In other words, the claim recites Certain Methods of Organizing Human Activities recognized as reciting abstract ideas. More specifically, the following underlined claim elements recite abstract ideas while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a).
interacting with a blockchain network having smart contracts and blockchain storing a plurality of NFTs, each NFT including one or more data fields encoded on the blockchain, the one or more data fields of each NFT comprising one or more ownership transfer data fields, one or more fractional ownership data fields, and one or more value unit data fields; and
interacting with a plurality of client computing devices;
for each NFT, facilitating ownership transfer of the NFT based on the interacting with the client computing devices by:
utilizing smart contract of the blockchain network to execute the ownership transfer and to verify an execution result prior to encoding the ownership transfer into the blockchain; and
using a private key maintained by the server on behalf of an owner of the NFT to update, and cause to be encoded on the blockchain, one or more ownership transfer data fields of the NFT;
for each NFT, facilitating addition and subtraction of at least one value unit tied to the NFT based on the interacting with the client computing devices, including maintaining an accounting of the at least one value unit in the blockchain network by using the private key maintained by the server on behalf of the owner of the NFT to update, via the smart contract of the blockchain network, the one or more value unit data fields of the NFT and to cause the updated one or more value unit data fields to be encoded on the blockchain;
wherein facilitating ownership transfer comprises: maintaining an accounting of the ownership transfer in the blockchain network; and
facilitating a fractional ownership transfer of at least some of the NFTs by updating and causing to be encoded on the blockchain, one or more fractional ownership data fields of those NFTs to indicate a fractional percentage of ownership; and
wherein the one or more ownership transfer data fields, the one or more fractional ownership data fields, and the one or more value unit data fields are encoded on the blockchain as data fields of the NFT such that a current ownership state of the NFT, including the fractional percentage of ownership and the at least one value unit tied to the NFT, is determinable from the blockchain independently of the server.
Because the claim recites abstract ideas, the analysis proceeds to determine whether the claim recites additional elements that recite a practical application of the abstract ideas. According to MPEP 2106.04(d), additional elements that recite an instruction to apply the abstract ideas using a computer, that recite insignificant extra-solution activities, or that generally link the use of the abstract ideas to a particular technological environment or field of use are not indicative of a practical application. Here, the claim recites the additional elements of interacting with a blockchain network having smart contracts, client computing devices, and a server. However, these additional elements are used to implement the identified abstract ideas recited in the claim. In other words, these additional elements amount to an instruction to apply the abstract ideas using computers. Therefore, the claim as a whole fails to recite a practical application of the abstract ideas.
The analysis then proceeds to determine whether the additional elements, when considered individually and in combination, recite significantly more than the abstract ideas. According to MPEP 2106.05, additional elements that recite an instruction to apply the abstract ideas using a computer, that recite insignificant extra-solution activities, that generally link the use of the abstract ideas to a particular technological environment or field of use, or that recite well-understood, routine, and conventional activities are not indicative of reciting significantly more than the abstract ideas. Claim elements previously considered to recite insignificant extra-solution activities are reevaluated at this step to determine whether they recite well-understood, routine, and conventional activities. Such findings must be supported by the evidentiary requirements set forth in the Berkheimer Memo. Here, as noted above, the claim recites the additional elements of interacting with a blockchain network having smart contracts, client computing devices, and a server. However, these additional elements are used to implement the identified abstract ideas recited in the claim. In other words, these additional elements amount to an instruction to apply the abstract ideas using computers. Therefore, the additional claim elements, when considered individually and in combination, fail to recite significantly more than the abstract ideas.
Accordingly, claim 1 is rejected as being directed towards patent ineligible subject matter.
Per Claim 17: Claim 17 recites abstract subject matter similar to that discussed above in connection with claim 1. Claim 17 recites the following additional element:
A non-transitory computer readable medium having recorded thereon statements and instructions that, when executed by a processor of a server, configure the server to implement the method of claim 1.
However, the additional element of a non-transitory computer readable medium fails to recite a practical application or significantly more than the abstract ideas because it recites an instruction to apply the abstract ideas using a computer.
Accordingly, claim 17 is rejected as being directed towards patent ineligible subject matter.
Per Claim 18: Claim 18 recites abstract subject matter similar to that discussed above in connection with claim 1. Claim 17 recites the following additional elements:
a network adapter; and
NFT functionality circuitry coupled to the network adapter and configured to implement the method of claim 1.
However, the additional elements a network adapter and NFT functionality circuitry coupled to the network adapter fails to recite a practical application or significantly more than the abstract ideas as they recite an instruction to apply the abstract ideas using a computer.
Accordingly, claim 18 is rejected as being directed towards patent ineligible subject matter.
Per Claims 2-16 and 19-20: Claims 2-10, 13-16, and 19-20 have also been analyzed for subject matter eligibility. However, these claims also fail to recite patent eligible subject matter for the following reasons:
Claim 2 recites the abstract idea that the value unit is a share, which is a Certain Method of Organizing Human Activities.
Claim 3 recites the abstract idea that the NFT is tied to media content that depicts a sports team and the shares are a virtual share of the sports team, which is a Certain Method of Organizing Human Activities.
Claim 4 recites the abstract idea of determining a price of an NFT and shares based on performance of the sports team, which is a Certain Method of Organizing Human Activities.
Claim 5 recites the abstract idea that the value unit is an offering, which is a Certain Method of Organizing Human Activities.
Claim 6 recites the abstract idea that the media content is depicts an athlete and the offering is an offering from the athlete, which is a Certain Method of Organizing Human Activities.
Claim 7 recites the abstract idea of determining a price of the NFT and offering based on supply and demand for the NFT and offering, which is a Certain Method of Organizing Human Activities.
Claim 8 recites the abstract idea of maintaining an accounting of the value unit, which is a Certain Method of Organizing Human Activities.
Claim 9 recites the abstract idea of maintaining an accounting of the value unit, which is a Certain Method of Organizing Human Activities. The additional element of performing this on a blockchain fails to recite a practical application or significantly more than the abstract ideas as it is an instruction to apply the abstract ideas using computers in the blockchain technological environment.
Claim 10 recites the abstract idea of maintaining private keys for the NFT on behalf of the owner and maintaining an accounting of the ownership transfer in a database, which is a Certain Method of Organizing Human Activities.
Claim 13 recites the abstract idea of facilitating a swap of a first NFT against a second NFT based on a sports outcome, which is a Certain Method of Organizing Human Activities.
Claim 14 recites the abstract idea that the swap involves a fractional ownership bet, which is a Certain Method of Organizing Human Activities.
Claim 15 recites the abstract idea of hosting an NFT marketplace to buy, sell, or swap NFTs, which is a Certain Method of Organizing Human Activities.
Claim 16 recites the abstract idea of maintaining a book value for each NFT and redeeming an NFT for book value, which is a Certain Method of Organizing Human Activities.
Claim 19 recites the additional elements of a processor and non-transitory computer-readable medium. However, these additional elements fail to recite a practical application or significantly more than the abstract ideas because they are instructions to apply the abstract ideas using computers.
Claim 20 recites the additional element that the non-transitory computer readable medium includes a database for storing data in a centralized manner. However, this additional element fails to recite a practical application or significantly more than the abstract ideas because it amounts to an instruction to apply the abstract ideas using a computer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Pub. No. 2023/0073545 discloses systems, computer program products, and methods are described herein for linking and partitioning non-fungible tokens. The present invention is configured to receive, from a computing device of a first user, a first request to transfer ownership of a resource from a first user to a second user; retrieve, from the computing device of the first user, a first non-fungible token (NFT) for the resource; determine, using an NFT valuation engine, a first value of the first NFT; initiate an NFT generator on the resource based on at least receiving the first request; generate, using the NFT generator, a second NFT for the resource, wherein the second NFT comprises at least an indication of transfer of ownership of the resource from the first user to the second user and the first value of the NFT; and record the second NFT on a distributed ledger.
U.S. Patent No. 11,308,487 discloses the use of stable value digital assets and/or fiat-backed digital assets as cryptocurrencies that can be linked to other digital assets using blockchain technology and/or through a peer-to-peer network. In embodiments, the present invention relates to specific applications of non-fungible digital assets tied to a peer-to-peer network, such as a blockchain network.
U.S. Patent Pub. No. 2023/0141154 discloses a method, performed by a server, of managing a non-fungible token (NFT) for content, is provided. The method includes, in response to receiving a request to issue an NFT for target content from a first electronic device of a first user who has generated the target content, generating basic metadata on the target content, uploading the generated basic metadata to a target folder generated in an interplanetary file system (IPFS), generating first ownership metadata including a content identifier (CID) of the uploaded basic metadata, obtaining a first CID of the target folder with the first ownership metadata uploaded to the target folder, and linking the obtained first CID of the target folder to an NFT uniform resource identifier (URI) of the target content.
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 NILESH B KHATRI whose telephone number is (571)270-7083. The examiner can normally be reached 8:30 AM - 5:30 PM Monday-Friday, alternating Fridays off.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel can be reached at (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NILESH B KHATRI/Primary Examiner, Art Unit 3699
