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 10/27/2025 have been fully considered but they are not persuasive.
With respect to U.S.C. 101 rejection, Applicant is of the opinion that claims are not directed to abstract idea. The claims are directed to the technological solution to the problem introduced by the technological nature of how token wallets and NFTs operate, not the determining and/or decision making steps that happen to be included within that. Further, claims are similar to Core Wireless licensing S.A.R.L. v. LG Electronics, Inc. Additionally, claims improve the operation of the system and/or device involved and satisfy the second prong. However, Examiner respectfully disagrees.
Firstly, claims recite creating an account to store information which is abstract idea that deals with commercial or legal interactions. Examiner notes that Applicant did not provide any arguments related to claims being abstract idea that deals with commercial or legal interactions. Therefore, the rejection is maintained.
Secondly, with respect to “technological solution to the problem introduced by the technological nature of how token wallets and NFTs operate”, creating an account to store information is not a technical problem. Further, Wallets and NFTs are additional elements and are no more than using a computer to automate and implement the abstract idea of creating an account to store information. Additionally, 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.
Applicant must take into consideration that in order to view the claims as supplying an inventive concept the technological improvement must be present within the claims themselves (Accenture Global Servs., GmbH v. Guidewire Software, inc., 108 USPQ2d 1173 (Fed. Cir. 2013)), (Synopsys, inc. v. Mentor Graphics Corp... 120 USPQ2d 1473 (Fed. Cir. 2016). Additionally, specification does not provide any evidence that how the claims provide an improvement to functioning of computing systems. Applicant failed to provide persuasive arguments supported by any necessary evidence to demonstrate that one of ordinary skill in the art would understand that the disclosed invention improves technology.
Thirdly, claims are not similar to Core Wireless licensing S.A.R.L. v. LG Electronics, Inc. The Claims do not recite improved user interfaces as in Core Wireless. Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362 (Fed. Cir. 2018). Core Wireless claimed “a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer.” /d. at 1363. Whereas “prior art interfaces required users to drill down through many layers to get to desired data or functionality,” the user interface in Core Wireless improved the efficiency of electronic devices with small screens by grouping “a limited list of common functions and commonly accessed stored data” to be accessed directly from the main menu. Here, claims do not recite a user interface but recite creating an account to store information which is abstract idea that deals with commercial or legal interactions.
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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 25-30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 25 recites “the operation comprises sharing a digital item”, however, this limitation was not described in the specification.
Specification discloses: In some examples, the unique identifier is a frequent flyer number. In a number of examples, association of the NFT with the token wallet is usable in place of an access credential to access a computing device associated with a requestor of the operation. In some examples, the operation is generation of the NFT. (See paragraph 0011). The specification discloses the operation is generation of the NFT, however, specification does not recite that the operation comprises sharing a digital item.
Claims 25-30 are also rejected as each depends from claim 25.
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 an account to store information which is an abstract idea. Specifically, the claims recite “determine that an operation requires…; determine that the…; generate the token…; associated…; determines that a second operation requires…; 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 determining that an account is require to perform a transaction, determine if there is no account, create an account and store token in the account, determines that a second operation requires a second account, identifies that a third account associated with a third unique identifier, user the third account and omits generating the second account 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 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 determining that an account is require to perform a transaction, determine if there is no account, create an account and store token in the account, determines that a second operation requires a second account, identifies that a third account associated with a third unique identifier, user the third account and omits generating the second account. 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 an account to store information. As discussed above, taking the claim elements separately, storage medium, a processor, wallet and NFT the steps of determining that an account is require to perform a transaction, determine if there is no account, create an account and store token in the account, determines that a second operation requires a second account, identifies that a third account associated with a third unique identifier, user the third account and omits generating the second account. 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 an account to store information. 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 an account to store information. 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
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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/ZESHAN QAYYUM/Primary Examiner, Art Unit 3697