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 .
Response to Arguments
Applicant's arguments filed on 05/20/2026 have been fully considered but they are not persuasive.
With respect to U.S.C. 101, Applicant is of the opinion that claims are not directed to abstract idea. Applicant state that token wallet is a digital or hardware-based tool that stores digital private keys for managing cryptocurrencies, NFTs, and other blockchain-based assets. Token wallets are how the digital private keys for managing cryptocurrencies, NFTs, and other blockchain-based assets are actually technologically stored. Classifying token wallets as "accounts" genericizes token wallets beyond their technological characteristics and functions. Further, creation of token wallets and analysis of token wallets is a technical not a commercial or legal interaction. The token wallet has to be created, which may involve allocation of storage space as well as other technical functions. There is nothing inherently commercial or legal about such actions.
Further, even if the claims were directed to an abstract idea, the claims improve the operation of the system by improving efficiency due to elimination of time and resource consumption required to generate the second token wallet as well as eliminate delays introduced by token wallets not being available when needed, and enable performance of token wallet related functions that the system involved would not previously have been able to perform absent the claimed technology. Additionally, claims are similar to Enfish, LLC v. Microsoft Corp.
However, Examiner respectfully disagrees.
Firstly, Applicant’s characterization of token wallet as a general technological matter does not overcome the rejection because claim does not recite the technical characteristics such as no private-key generation, storage or cryptographic operation. Claim recites generating, associating and reusing a token wallet based on an identity match between two identifiers is the digital analog of creating and consolidating account records to avoid duplication which is a certain method of organizing human activity.
Secondly, with respect to claim improving efficiency by elimination of time and resource consumption of generating a redundant wallet (i.e. second token wallet) reflects an administrative efficiency inherent in applying the abstract idea, not a technical improvement to how the underlying computer or blockchain system functions. Applicant’s remarks do not identify any claim limitations reciting a specific technical mechanism that would distinguish the claim from conventional record creation and deduplication.
Thirdly, claims are not in any way similar to Enfish (Enfish LLC v. Microsoft Corp) as the claims do not improve the function of the computer itself by providing increased flexibility, faster search times, and smaller memory requirements (Enfish at 1690) but merely serves as creating and consolidating account records to avoid duplication. Applicant relies on paragraph 0037 and 0106 of the specification for broader enabled functionality, that disclosure is not reflected in any claim limitation and cannot substitute for claim language.
Therefore, the rejection is maintained.
Status of Claims
Claims 8-14 and 21-33 have been examined.
Claims 1-7 and 15-20 have been canceled by the Applicant.
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 8-14 and 21-33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In the instant case, claims 8-14 and 21-30, are directed to a system and claims 31-33 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
The claims recite creating and consolidating account records to avoid duplication which is an abstract idea. Specifically, the claims recite “generate the token…; associated…; associated….; identifies that a third token…; uses the third token…; and omits generating…” which grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106) because the claims involve a series of steps of generating a record tied to an identifier, if one does not already exist, associating a digital asset record with it, recognizing that two different identifiers actually correspond to the same person, reusing the existing record instead of creating a new duplicate one and skipping the redundant record creation step as a result which is a process that deals with commercial or legal interactions. Accordingly, the claims recite an abstract idea (See MPEP 2106.05).
Additionally, claims are directed to decision making by analyzing data (i.e. matching records to a common identity) which is an abstract idea and deals with mental process. Therefore, the claim is directed to an abstract idea, as it has been held that a combination of abstract ideas, in this case mental processes and certain methods of organizing human activity, is still an abstract idea. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016)
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106), the additional elements of the claims such as, storage medium, a processor, wallet and NFT merely use a computer as a tool to perform an abstract idea. Specifically, storage medium, a processor, wallet and NFT perform the steps of generating a record tied to an identifier, if one does not already exist, associating a digital asset record with it, recognizing that two different identifiers actually correspond to the same person, reusing the existing record instead of creating a new duplicate one and skipping the redundant record creation step as a result. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106), the additional elements of storage medium, a processor, wallet and NFT, to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of creating and consolidating account records to avoid duplication. As discussed above, taking the claim elements separately, storage medium, a processor, wallet and NFT the steps of generating a record tied to an identifier, if one does not already exist, associating a digital asset record with it, recognizing that two different identifiers actually correspond to the same person, reusing the existing record instead of creating a new duplicate one and skipping the redundant record creation step as a result. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of creating and consolidating account records to avoid duplication. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims further describe the abstract idea of creating and consolidating account records to avoid duplication. Specifically, claims 9-11 describing the analyzing the data and storing the information, which is part of the abstract idea of Mental process. Claim 12 describing a data which is part of the abstract idea, claim 13 describing access control which is also an abstract idea that that deals with commercial or legal interactions, and claim 14 further describing the operation which is part of the abstract idea. Claims 21-24 and 32-33 describing the additionally element of wallet and data such as identifier which is part of the abstract idea. Claims 25-30 further describing the operation of access protection which is part of the abstract idea fall in commercial or legal interactions. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Conclusion
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/ZESHAN QAYYUM/Primary Examiner, Art Unit 3697
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