DETAILED ACTION
Acknowledgements
This Final Office Action is in reply to Applicant’s response filed 1/29/2026.
Claims 2, 5, 10, 13, and 18 are currently cancelled. Claims 1, 3, 4, 6, 7, 9, 11, 12, 14, 15, 17, 19, and 20 are currently amended.
Claims 1, 3, 4, 6-9, 11, 12, 14-17, 19, and 20 are currently pending.
Claims 1, 3, 4, 6-9, 11, 12, 14-17, 19, and 20 have been examined.
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 .
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, 3, 4, 6-9, 11, 12, 14-17, 19, 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
Each of claims 1, 3, 4, 6-9, 11, 12, 14-17, 19, and 20 falls within one of the four statutory categories. Each of claims 1, 3, 4, 6-8 falls within the category of process; each of claims 9, 11, 12, 14-16 falls within the category of machine; and each of claims 17, 19-20 is directed to a “computer-readable medium” and therefore falls within the category of manufacture.
Step 2A – Prong 1
Exemplary claim 1 is directed to an abstract idea of searching a marketplace for items which meet a set of criteria, a fundamental economic practice. The abstract idea is set forth or described by the following bolded limitations:
A computer-implemented method comprising:
causing presentation, by an online marketplace. of a user interface (UI) with options for searching items in an online marketplace;
receiving, at the online marketplace via the UI, a search query for an item listing of the online marketplace, the search query indicating a manufacturing attribute and a unique characteristic attribute for the item listing;
searching a blockchain associated with the online marketplace for a set of non-fungible tokens that correspond to the manufacturing attribute and the unique characteristic attribute, the set of non-fungible tokens corresponding to a set of respective physical items authenticated by the online marketplace, each of the set of non-fungible tokens being indicative of the manufacturing attribute, each of the set of non-fungible tokens being further indicative of the unique characteristic attribute, the blockchain storing unique characteristic attributes that comprise ownership history of the item listing;
causing presentation, by the online marketplace via the UI, of a set of item listings resulting from the searching of the blockchain, the set of item listings indicating, for each of the set of respective physical items, the manufacturing attribute, the unique characteristic attribute, and the ownership history.
The bolded limitations above represent the abstract idea of searching for items which match a set of criteria, the idea being applied to NFTs. For example, the same abstract idea is performed when a prospective home purchaser gives a list of requirements to a realtor who then searches a listing service and returns a set of homes for sale. This is a fundamental economic practice.
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 “computer-implemented”, “online marketplace”, and “a user interface” constitute mere instructions to perform the abstract idea using a computer.
The additional elements “blockchain” and “non-fungible tokens” are merely instructions to apply the abstract idea to NFTs on a blockchain. They therefore are only a general link to a particular technological environment/field of use of the abstract idea.
Considering the additional elements in combination does not change the analysis because together they still function as only a mere link to a computer-implemented blockchain environment.
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 3, 4, 6-8
Dependent claims 3, 4, 6-8 fail to cure this deficiency of independent claim 1 (set forth above) and are rejected accordingly. Particularly, claims 3, 4, 6-8 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 3 recites:
The computer-implemented method of claim 1, further comprising:
authenticating a physical item by identifying the unique characteristic attribute of the physical item;
generating, based on the authenticating, a non-fungible token; and
storing the non-fungible token on the blockchain, wherein the non-fungible token is indicative of the unique characteristic attribute.
This adds the fundamental economic practice of generating non-fungible tokens and identifying attributes of an item. By way of example, this is the same abstract idea a realtor performs when adding homes to a listing service, with the only difference being that the claim uses NFTs as listings and a blockchain as the database. This is a mere link to NFTs and blockchain as explained with respect to the independent claim. It does not recite any new additional elements for further consideration under Step 2A, prong 2 or 2B and is therefore ineligible for the same reasons provided for claim 1 above.
Claim 4 recites:
The computer-implemented method of claim 1, further comprising:
receiving, via the UI, a purchase request for a physical item of the set of respective physical items; and
updating, in response to a completion of a purchase of the physical item based on the purchase request, the ownership history of the non-fungible token corresponding to the physical item on the blockchain.
This adds steps of receiving a purchase request and updating an ownership record, which is also a fundamental economic practice. The additional elements of a blockchain, an NFT, and a user interface still operate as a general link to a computer-implemented blockchain environment. It does not recite any new additional elements for further consideration under Step 2A, prong 2 or 2B and is therefore ineligible for the same reasons provided for claim 1 above.
Claim 6 recites:
The computer-implemented method of claim 1, wherein the respective unique characteristic attribute for each of the set of non-fungible tokens comprises an ownership record for a corresponding respective physical item.
This is not given patentable weight because it is not a method step and does not affect the performance of any method step. It does not recite any new additional elements for further consideration under Step 2A, prong 2 or 2B and is therefore ineligible for the same reasons provided for claim 1 above.
Claim 7 recites:
The computer-implemented method of claim 1, wherein the respective unique characteristic attribute for each of the set of non-fungible tokens comprises a physical defect unique to a corresponding respective physical item.
This is not given patentable weight because it is not a method step and does not affect the performance of any method step. It does not recite any new additional elements for further consideration under Step 2A, prong 2 or 2B and is therefore ineligible for the same reasons provided for claim 1 above.
Claim 8 recites:
The computer-implemented method of claim 1, wherein the manufacturing attribute is a feature common to a plurality of physical items.
This is not given patentable weight because it is not a method step and does not affect the performance of any method step. It does not recite any new additional elements for further consideration under Step 2A, prong 2 or 2B and is therefore ineligible for the same reasons provided for claim 1 above.
Claims 9, 11, 12, 14-16, 17, 19-20
Claims 9, 11, 12, 14-16 contain language similar to claims 1, 3, 4, 6-8 as discussed in the preceding paragraphs and claims 17, 19-20 contain language similar to claims 1, 3-4, and for reasons similar to those discussed above, these claims are also rejected under 35 U.S.C. § 101.
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, 3, 4, 6-9, 11, 12, 14-17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Opensea.io Search Page (cited in 11/19/2025 PTO-892) in view of Opensea.io Product Page (cited in current PTO-892) in view of Andon (US 20200273048 A1).
Regarding claims 1, 9, 17
Opensea.io Search Page teaches:
A computer-implemented method comprising:
causing presentation, by an online marketplace. of a user interface (UI) with options for searching items in an online marketplace; {See screenshot from pages 1-2 below}
receiving, at the online marketplace via the UI, a search query for an item listing of the online marketplace, the search query indicating a manufacturing attribute and a unique characteristic attribute for the item listing; {See screenshot from pages 1-2 and 4 below with boxes added for emphasis, and screenshot after checking box from page 3}
Opensea.io does not explicitly teach receiving a search query. However, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that the user interface of opensea.io allows a user to submit a search query consisting of an Artefact property (manufacturing attribute) and DNA property (unique characteristic attribute) by checking the box.
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searching a blockchain associated with the online marketplace for a set of non-fungible tokens that correspond to the manufacturing attribute and the unique characteristic attribute, […] {see above screenshots}
Filtering and searching are interpreted as synonymous in this context because both involve iterating through the items and selecting the ones with a matching attribute. Opensea.io does not explicitly teach searching but it is implied by the user interface for the same reasons as given above.
causing presentation, by the online marketplace via the UI, of a set of item listings resulting from the searching of the blockchain […], the set of item listings indicating, […], the manufacturing attribute, the unique characteristic attribute, […] {see above screenshots}
After clicking the checkbox “ROBOT” opensea.io returns a list of items (page 3). The picture of the item (pages 1-2) indicate the attributes.
Opensea.io Search Page does not teach the following bolded language, however Opensea.io Product Page teaches:
the set of item listings indicating, […] and the ownership history. {Opensea.io Product Page, page 1 “item activity” section, shown in part below}
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No actual ownership history is shown, as the screenshot is taken from an archived page. However, it can be seen that the item activity section is meant to show past sales and transfers (ownership history).
Opensea.io Product Page is the page that appears if one clicks one of the listings from Opensea.io Search Page. Therefore, the prior art itself already suggests the combination.
Opensea.io Search Page in view of Opensea.io Product Page does not teach the following bolded language, however Andon teaches:
searching a blockchain associated with the online marketplace for a set of non- fungible tokens that correspond to the manufacturing attribute and the unique characteristic attribute, the set of non-fungible tokens corresponding to a set of respective physical items authenticated by the online marketplace, each of the set of non-fungible tokens being indicative of the manufacturing attribute, each of the set of non-fungible tokens being further indicative of the unique characteristic attribute, the blockchain storing unique characteristic attributes that comprise ownership history of the item listing; {[0008] “By way of example, and not limitation, there are presented cryptographic digital assets that are secured through a blockchain ledger of transaction blocks. These digital assets may function, at least in part, to connect a real-world product, such as a physical shoe, to a virtual collectible, such as a digital shoe. When a consumer buys a genuine pair of shoes—colloquially known as ‘kicks’—a digital representation of a shoe may be generated, linked with the consumer, and assigned a cryptographic token, where the digital shoe and cryptographic token collectively may represent a ‘CryptoKick’ (CK).”; [0017] “For any of the disclosed systems, methods, digital assets, and retail products, the unique digital shoe ID code may include a cryptographic token key with a code string that is segmented into a series of code subsets. A first of these code subsets may include data indicative of attributes of the digital shoe. This attribute data may include genotype and phenotype data for the digital shoe. A second of these code subsets may include data indicative of attributes of the real-world article of footwear, such as colorway, materials, manufacturing, make, sustainability/eco-responsibility, and/or model data, etc., for the article of footwear.”; [0130] “each pair of shoes is assigned with a respective blockchain-backed digital asset that allows the system 400 to track and analyze the chain of title/ownership [ownership history] for each tangible shoe.”}
causing presentation, by the online marketplace via the UI, of a set of item listings resulting from the searching of the blockchain, the set of item listings indicating, for each of the set of respective physical items, the manufacturing attribute, the unique characteristic attribute, and the ownership history. {[0008] “By way of example, and not limitation, there are presented cryptographic digital assets that are secured through a blockchain ledger of transaction blocks. These digital assets may function, at least in part, to connect a real-world product, such as a physical shoe, to a virtual collectible, such as a digital shoe.”}
Andon teaches CryptoKicks having an associated physical shoe, and the NFT having attributes of the real-world article of footwear.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention the CryptoKicks and their corresponding physical shoe with the market search features of Opensea.io since Andon is describing CryptoKicks, and Opensea.io is a marketplace for purchasing CryptoKicks, and therefore the references themselves suggest the combination. Additionally, the search functionality of Opensea.io is generic such that it would be reasonable to apply it to any particular product such as the CryptoKicks of Andon and the result would be predictable.
Regarding claims 3, 11, 19
Opensea.io Search Page in view of Opensea.io Product Page does not teach, however Andon teaches:
The computer-implemented method of claim 1, further comprising:
authenticating a physical item by identifying the unique characteristic attribute of the physical item; {[0017] “For any of the disclosed systems, methods, digital assets, and retail products, the unique digital shoe ID code may include a cryptographic token key with a code string that is segmented into a series of code subsets. […] A second of these code subsets may include data indicative of attributes of the real-world article of footwear, such as colorway, materials, manufacturing, make, sustainability/eco-responsibility, and/or model data, etc., for the article of footwear.”}
The term “unique characteristic” is interpreted as encompassing “physical characteristics such as manufacturing qualities” (specification [0002]).
generating, based on the authenticating, a non-fungible token; and storing the non-fungible token on the blockchain, wherein the non-fungible token is indicative of the unique characteristic attribute. {[0009] “a first Ethereum Request for Comments (ERC) 721 or ERC1155 token may be granted to authenticate and transact a physical shoe” [0011] “generating a cryptographic digital asset associated with the article of footwear, the cryptographic digital asset including a digital shoe (e.g., a computer-generated avatar) and a unique digital shoe ID code (e.g., a key and cryptographic token)”}
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to add the generation of digital assets including data indicative of attributes of a physical shoe to the NFT search of Opensea.io because it provides a method of generating the NFTs which Opensea.io allows users to search. Opensea.io allows searching of Cryptokick NFTs and Andon describes a method of creating Cryptokick NFTs so the references themselves suggest combining the teachings of each.
Regarding claims 4, 12, 20
Opensea.io Search Page in view of Opensea.io Product Page does not teach, however Andon teaches:
The computer-implemented method of claim 1, further comprising:
receiving, via the UI, a purchase request for a physical item of the set of respective physical items; and {[0084] “Utilizing a portable electronic device 39, such as smartphone 40 or smartwatch 42 of FIG. 2, the user 11 may launch a dedicated mobile software application (“app”) or a web-based applet, such as NIKE+®, that collaborates with a server-class (backend or middleware) computer (e.g., remote host system 34) to communicate with the various peer devices on decentralized computing system 30. During a communication session with the host system 34, for example, the user 11 may purchase a pair of the footwear 10 using a corresponding feature provisioned by the app.”}
The communication received during the “communication session” reads on a purchase request.
updating, in response to a completion of a purchase of the physical item based on the purchase request, the ownership history of the non-fungible token corresponding to the physical item on the blockchain. ([0021] “For any of the disclosed systems, methods, digital assets, and retail products, the server-class computer may receive a digital transfer proposal (from either the transferor or the transferee) with a request to transfer the cryptographic digital asset to a third party. The server-class computer may respond by determining a new unique owner ID code of the third party, link the cryptographic digital asset with this new unique owner ID code, and record [updating] the transfer of the unique digital shoe ID code to the new unique owner ID code on a new transaction block with the distributed blockchain ledger. The digital transfer proposal may be transmitted in response to a confirmation indicative of a new validated transfer of the article of footwear from the second party to the third party.” [0008] “the buyer is enabled to securely trade or sell the tangible pair of shoes, trade or sell the digital shoe, store the digital shoe in a cryptocurrency wallet or other digital blockchain locker”)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to add receiving the communication of Andon and recording transfer of the digital code to the filtering system of Opensea.io because “the buyer is enabled to securely trade or sell the tangible pair of shoes, trade or sell the digital shoe, store the digital shoe in a cryptocurrency wallet or other digital blockchain locker”.
Regarding claims 6, 14
The computer-implemented method of claim 1, wherein the respective unique characteristic attribute for each of the set of non-fungible tokens comprises an ownership record for a corresponding respective physical item.
The respective unique characteristic is merely a piece of information which the NFT indicates. It serves no functional role in the claim and therefore its content is not given patentable weight and does not distinguish the claims from the prior art.
Regarding claims 7, 15
The computer-implemented method of claim 1, wherein the respective unique characteristic attribute for each of the set of non-fungible tokens comprises a physical defect unique to a corresponding respective physical item.
The respective unique characteristic is merely a piece of information which the NFT indicates. It serves no functional role in the claim and therefore its content is not given patentable weight and does not distinguish the claims from the prior art.
Regarding claims 8, 16
Opensea.io Search Page teaches:
The computer-implemented method of claim 1, wherein the manufacturing attribute is a feature common to a plurality of physical items. {See screenshots above}
This is not given patentable weight because it is not a method step, nor does it affect the performance of any method step and does not distinguish over the prior art. However, for purposes of compact prosecution, the examiner cites page 3 of Opensea.io Search Page which shows “ROBOT 163” suggesting the manufacturing attribute “ROBOT” is a feature common to 163 items in the inventory.
Response to Arguments
35 USC § 101
Applicant argues the claims are not directed to an abstract idea and are technical in nature because they leverage blockchain technology and NFTs to authenticate and track unique physical items in a manner that was not previously possible. However, this vastly overstates the extent of the claimed invention. The blockchain and NFTs are merely being used as a data store. No aspect of the claims makes use of any feature of blockchain technology beyond simple data storage.
Applicant argues the claims leverage the unique technical properties of blockchain technology, specifically its immutability, to prevent authentication fraud. However, this is merely pointing out a benefit of blockchain technology. None of this improvement comes from the claimed invention, which is merely linked to a blockchain environment in order to gain the benefits of a blockchain environment.
Applicant argues claim 1 demonstrates integration into a practical application because it recites each NFT corresponding to a physical item that has been authenticated by the online marketplace. However, authenticating a physical item is not claimed. Furthermore, none of the steps of the method are affected by the NFT corresponding to a physical item. The claimed steps are entirely directed towards searching a marketplace and presenting results to a user.
USC § 103
Applicant argues the cited art does not teach “searching a blockchain…”. Applicant states: “There is no mention in Opensea of searching a blockchain. It seems like the Office believes that a "DNA" filter that includes the option "robot" teaches a blockchain. However, there is no indication in Opensea that a robot relates to a blockchain, as there is no description at all besides showing the option as a search filter.”
Opensea is not being alleged to teach searching a blockchain because the filter includes a “robot” option. Opensea clearly teaches a search function, and it is at least implied that a blockchain is being searched because the results are NFTs. See Opensea Search Page, page 1 “RTFKT, together with Nike, introduces the first RTFKT x NIKE CRYPTOKICKS NFT” and Opensea Product Page, details section, which shows blockchain token information.
Applicant further states: “the Office seems to contradict itself because the Office later admits that "Opensea. io does not teach, however Andon teaches: searching a blockchain" (Office Action at page 11, emphasis added).”
However, Andon is only being asserted to teach the bolded claim language. “Searching a blockchain…” is alleged as being taught by Opensea.io Search Page. The rejection has been updated to make this clearer.
Applicant further states: “Additionally, claim 1 recites that the physical items corresponding to the NFTs are to be authenticated by the online marketplace. Andon describes a consumer purchasing genuine shoes and receiving a cryptographic token, but does not describe an online marketplace that authenticates physical items. The authentication role and marketplace context specified in the claim are absent from the cited paragraphs.”
However, claim 1 merely says that the items have been authenticated, but does not claim the process of performing the authentication. Additionally, paragraph [0008] of the specification makes reference to “authenticating a physical item by identifying a unique characteristic attribute of the physical item”. In light of this, authenticating a physical item is interpreted as an intended result of the NFT identifying characteristics of the physical item because the NFT allows a user to verify it matches a given physical item, and this is taught by the cited art.
Applicant argues “the cited art does not teach the blockchain storing unique characteristic attributes that comprise ownership history of the item listing.”
However, as stated in the rejection, no patentable weight is given to the claimed description of what the characteristics represent. The only functional role of the characteristic in the claimed invention is that it is used for searching for a set of non-fungible tokens. The function of searching is the same whether the characteristic is color, manufacturer, physical defect, etc. Therefore, the description of the data is considered non-functional descriptive material and is not given patentable weight.
Additionally, the cited art teaches the non-fungible token including ownership records. Opensea.io Product Page includes a section labeled “item activity” with sales and transfers history. Andon also teaches [0124] “as CryptoKicks and CollaboKicks change owners due to selling, trading, buying, and collaboration, the resultant transaction history is tracked within the blockchain” and [0130] “each pair of shoes is assigned with a respective blockchain-backed digital asset that allows the system 400 to track and analyze the chain of title/ownership for each tangible shoe.”
Applicant argues Andon does not teach the limitation of “causing presentation…”.
However, Andon is only being asserted to teach the bolded claim language. “Causing presentation…” is alleged as being taught by Opensea.io.
Applicant argues the cited art does not teach that the respective unique characteristic attribute for each of the set of non-fungible tokens comprises an ownership record for a corresponding respective physical item.
See response to argument 2.
Applicant argues the cited art does not teach the respective unique characteristic attribute for each of the set of non-fungible tokens comprises a physical defect unique to a corresponding respective physical item.
However, as stated in the rejection, no patentable weight is given to the claimed description of what the characteristics represent. The only functional role of the characteristic in the claimed invention is that it is used for searching for a set of non-fungible tokens. The function of searching is the same whether the characteristic is color, manufacturer, physical defect, etc. Therefore, the description of the data is considered non-functional descriptive material and is not given patentable weight.
Conclusion
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.
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/S.M.D./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698