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 USC §101
1. 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.
2. Claims 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the MPEP § 2106, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP 2106.03.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity. For instance, the claimed steps “identifying…a data record associated with the stored value token that corresponds to the unique identifier; generating or retrieving a NFT having one or more non-fungible token parameters that match non-fungible token parameters represented by the data extracted from the identified data record; initiating a NFT transfer process for transferring rights in the NFT to an identified beneficiary” are steps that can be performed in the human mind. Any steps that can be performed in the human mind fall into the category of mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “receiving a data input transmitted from a client terminal; responsive to transfer of the NFT to the crypto-wallet associated with the identified beneficiary, recording data representing the identified beneficiary's right{s} in the NFT in a record block within a distributed blockchain ledger on which the NFP is stored; extracting from the identified data record, data representing a set of non-fungible token parameters associated with the stored value token.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of inputting data, processing data, and recording data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the client terminal and distributed blockchain ledger are caused to perform these steps. The client terminal, NFT service platform and distributed blockchain ledger, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting a patent-ineligible insignificant extra-solution activities. For instance, the steps of “receiving a data input; and responsive to transfer of the NFT to the crypto-wallet associated with the identified beneficiary, recording data representing the identified beneficiary's right{s} in the NFT,” when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Further, the limitations “wherein the data input identifies a unique identifier corresponding to a stored value token; wherein: the NFT transfer process includes selectively transferring the NFT to a one of: a crypto-wallet associated with the identified beneficiary; and an administrator account” are recited to further narrow the scope of the abstract idea. In all, these recited steps merely describe an intangible property of data that does not affect the examiner’s characterization of the additional limitations as insignificant extra-solution activities. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited “client terminal, NFT service platform and distributed blockchain ledger.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. The specification substantiates this, for instance at paras 0088, 0090, and 0091. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. More specifically, dependent claims 5-7, 12-14 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claim 2-4, 9-11 recites additional elements, but these additional elements comprise the analyses of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MCCOY et al (MCCOY hereinafter, US PUB: 2022/0366486).
Re claim 1. MCCOY discloses a method for obtaining to a beneficiary, rights in a non-fungible token (NFT} that is recorded within a distributed blockchain ledger, based on acquisition of a stored value token, the method comprising implementing at a NFT service platform server, the steps of: receiving a data input transmitted from a client terminal (see paras 0050, 0053), wherein the data input identifies a unique identifier corresponding to a stored value token (see paras 0050, 0053); identifying within a database of stored value token data records, a data record associated with the stored value token that corresponds to the unique identifier (0174); extracting from the identified data record, data representing a set of non-fungible token parameters associated with the stored value token (see paras 0174-0175); generating or retrieving a NFT having one or more non-fungible token parameters that match non-fungible token parameters represented by the data extracted from the identified data record (i.e., invoking an NFT to mint a new token, see paras 0174): initiating a NFT transfer process for transferring rights in the NFT to an identified beneficiary (see paras 0041, 0051, 0062, 0209), wherein: the NFT transfer process includes selectively transferring the NFT to a one of: a crypto-wallet associated with the identified beneficiary; and an administrator account; responsive to transfer of the NFT to the crypto-wallet associated with the identified beneficiary (see paras 0209), recording data representing the identified beneficiary's right{s} in the NFT in a record block within a distributed blockchain ledger on which the NFP is stored (see paras 0209).
Re claim 2. MCCOY further discloses the method as claimed in claim 1, wherein the NFT transfer process comprises: responding to a determination that a crypto-wallet address of the identified beneficiary is available, by transferring the NFT to a crypto-wallet identified by the crypto-wallet address (see paras 0174-0175).
Re claim 3. MCCOY discloses the method as claimed in claim 1, wherein the NPT transfer process comprises: responding to a determination that a crypto-wallet address of the identified beneficiary is unavailable, by: transferring the NFT to the administrator account; and recording at the administrator account, an association between the NFT and a unique identifier associated with the identified beneficiary (see paras 0031, 0069).
Re claim 4. MCCOY further discloses the method as claimed in claim 3, further comprising: identifying based on a received user is a set of NFTs stored in the administrator account (see paras 0194), wherein the received user id comprises an identifier uniquely associated with the beneficiary in the records of the administrator account (see paras 0031, 0069); transferring one or more NFTs within the identified set of NFTs from the beneficiary to the transferee crypto-wallet associated with a specified transferee, and responsive to transfer of the one or more NFTs to the transferee crypto-wallet, recording data representing the transferee’s right(s} in the transferred one or more NFTs in one or more record block within a distributed blockchain ledger on which said one or more NFTs are stored (see paras 0041, 0051, 0062, 0209).
Re claim 5. MCCOY further discloses the method as claimed in claim 1, wherein the stored value token comprises any physical token or electronic token or virtual token that has one or more unique identifier{s} associated therewith, and that has a stored value account linked thereto, wherein said stored value account is configured to enable record or storage of any of currency value, rewards points, or gift coupon points (see paras 0170-0171, 0174).
Re claim 6. MCCOY discloses the method as claimed in claim 1, wherein the identified beneficiary: is an entity that is associated with the stored value token, or that has ownership or possession of the stored value token; or has been identified based on a data instruction received from an entity that is associated with the stored value token, or that has ownership or possession of the stored value token (see paras 0037).
Re claim 7. MCCOY discloses the method as claimed in claim 1, wherein the data representing the identified beneficiary's right(s} in the NFT in the record block within the distributed blockchain ledger on which the NFT is stored, is associated with the stored NFT (see paras 0039).
Re claim 8. Claim 8 recites similar limitations to claim 1 and thus rejected using the same art and rationale as in claim 1 above.
Re claim 9. Claim 9 recites similar limitations to claim 2 and thus rejected using the same art and rationale as in claim 2 above.
Re claim 10. Claim 10 recites similar limitations to claim 3 and thus rejected using the same art and rationale as in claim 3 above.
Re claim 11. Claim 11 recites similar limitations to claim 4 and thus rejected using the same art and rationale as in claim 4 above.
Re claim 12. Claim 12 recites similar limitations to claim 5 and thus rejected using the same art and rationale as in claim 5 above.
Re claim 13. Claim 13 recites similar limitations to claim 6 and thus rejected using the same art and rationale as in claim 6 above.
Re claim 14. Claim 14 recites similar limitations to claim 7 and thus rejected using the same art and rationale as in claim 7 above.
Re claim 15. Claim 15 recites similar limitations to claim 1 and thus rejected using the same art and rationale as in claim 1 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. 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, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3697