Detailed Action
Acknowledgements
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the preliminary amendment filed on January 12, 2024.
Claims 1-15 are pending.
Claims 1-15 are examined.
This Office Action is given Paper No. 20251008 for references purposes only.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statement filed on September 25, 2023 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Claim Rejections - 35 USC § 112b
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION - The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 4 recites “receiving a non-fungible token request having the identification information.” This phrase is vague and indefinite because it is unclear whether this refers to “the non-fungible token request” previously recited, or to “a second non-fungible token request.” For purposes of applying the prior art only, Examiner will interpret as “the non-fungible token request.”
Claim 4 recites “generating the target non-fungible token of the identified type.” This phrase is vague and indefinite because it is unclear whether this refers to “the target non-fungible token” previously recited in claim 1, or to “a second target non-fungible token.” For purposes of applying the prior art only, Examiner will interpret as “the target non-fungible token.”
Claim 10 recites “the plurality of material data.” There is lack of antecedent basis for this term. For purposes of applying the prior art only, Examiner will interpret as “a plurality of material data.”
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 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to mere information in the form of data.
Claim 1 is a system claim configured to execute: receiving information, identifying a type of token to be generated, generating the target token, and transmitting the token. There is no structure recited in this system claim; only the receiving/identifying/generating/transmitting of data.
Claim 12 is a system claim including a database of data (see definition under Claim Interpretation below), receiving a request, and generating a token. There is no structure recited in this system claim; only data, receiving data, and generating data.
Although claims 1-13 fail to fall under one of the four statutory categories, the claims could potentially be amended. When a claim fails to fall under at least one of the four statutory categories and it appears from Applicant’s disclosure that the claim could be amended to be directed to a statutory category, it should be determined whether the claim wholly embraces a judicially recognized exception, which includes laws of nature, physical phenomena, and abstract ideas, or is it a particular practical application of a judicial exception. See MPEP 2106 I and II.
Alice analysis
Claims 1-15 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.
Step 2A Prong 1: The claims recite an abstract idea of generating a requested token, which is a certain method of organizing human activity (e.g. fundamental economic principles or practices including hedging, insurance, mitigating risk; commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations; managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions).
Claim 1, representative of claim 14, includes the following limitations:
Receiving a non-fungible token request having identification information;
Identifying a type of a target non-fungible token based on the identification information;
Generating the target non-fungible token based on the identified type.
Claim 12, representative of claim 15, includes the following limitations:
receiving a non-fungible token request having identification information;
generating a non-fungible token by using data selected based on the identification information from among the plurality of material data.
Step 2A Prong 2: The claim limitations recite the following additional elements that are beyond the judicial exception:
transmitting the generated token (for claims 1, 14).
a database including a plurality of material data (for claims 12, 15).
These additional elements are not indicative of integration into a practical application because:
They add insignificant extra-solution activity to the judicial exception. Note that “extra-solution activity” can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity can include both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process. An example of post-solution activity is an element that is not integrated into the claim as whole. See MPEP 2106.05(g).
They add the words “apply it” (or an equivalent) with the judicial exception, or are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. See MPEP 2106.05(f).
Step 2B: The claim limitations do not recite additional elements, or an ordered combination of additional elements, that are sufficient to amount to significantly more than the judicial exception.
As discussed with respect to step 2A prong 2 above, the additional element of “transmitting the generated token” is extra solution activity that does not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is insignificant extra solution activity under step 2A should be re-evaluated at step 2B. The limitation “transmitting the generated token” is re-evaluated to determine whether it constitutes well-understood, routine, and conventional activity in the field. The “transmitting of data” is well-understood, routine, and conventional in the field. See Symantec, TLI Communications, and MPEP 2106.05(d). Thus, a conclusion that the limitation “transmitting the generated token” is well-understood, routine, and conventional is supported under Berkheimer.
As discussed with respect to step 2A prong 2 above, the additional element of “a database including a plurality of material data” is mere instructions to apply an exception, and does not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is mere instructions to apply an exception under step 2A should be re-evaluated at step 2B. Thus, the additional element of “a database including a plurality of material data” is re-evaluated to determine whether it constitutes significantly more. Examiner finds that the additional element of “a database including a plurality of material data” is simply the use of a computer in its ordinary capacity and does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 and MPEP 2106.05(f). For example, the additional elements only provide a result-oriented solution and lack details as to how the computer performs the modifications, which is equivalent to “apply it”. See Alice Corp. v. CLS Bank, 134 S. Ct. 2347, 2357 and MPEP 2106.05(f).
Therefore, when considering all the additional claim elements both individually and as an ordered combination, Examiner finds that the claim does not amount to significantly more than the exception.
The dependent claims fail to cure this deficiency and are rejected accordingly.
Claim 2 recites receiving a request transmission token and identifying the type of non-fungible token using the number or type of transmission tokens, which is insignificant extra-solution activity (e.g. mere data gathering). See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, and MPEP 2106.05(g).
Claim 3 recites the type of non-fungible token is identified based on the type of fungible or non-fungible tokens received, which is merely describing data and further defining the abstract idea.
Claim 4 recites executing a smart contract on a blockchain, which generally links the use of the judicial exception to a particular technological environment or field of use (e.g. merely an attempt to limit the use of the abstract idea to a particular technological environment). See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 and MPEP 2106.05(h).
Claim 5 recites generating the non-fungible token using data selected based on the identification information, which is merely describing data and further defining the abstract idea.
Claim 6 recites the target token has an identifier indicating duplicate data, which is merely describing data and further defining the abstract idea.
Claim 7 recites the duplicate data is a URI, which is merely describing data and further defining the abstract idea.
Claim 8 recites identifying the number of target non-fungible tokens to be generated based on the identification information, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 9 recites receiving a request transmission token that is non-fungible and has the identification information, which is insignificant extra-solution activity (e.g. mere data gathering). See Ultramercial, Inc. v. Hulu, 772 F.3d 709, 715.
Claim 10 recites the identification information includes any of a plurality of material data, which is merely describing data and further defining the abstract idea.
Claim 11 recites generating a private key and generating the target token using the private key, which is insignificant extra-solution activity (e.g. mere data gathering). See Ultramercial, Inc. v. Hulu, 772 F.3d 709, 715.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Papanikolas (US 2021/0097508) in view of Yantis et al. (US 2022/0058633).
Claims 1, 14
Papanikolas discloses:
receiving a non-fungible token request (user enters number, see [0055]) having identification information (token address and token ID, FROM and TO values, see [0039, 0066]);
identifying a type (collectibles, NFTs, see [0055]) of a target non-fungible token to be generated, based on the identification information possessed by the non-fungible token request;
generating (created, see [0066]) the target non-fungible token of the identified type; and
transmitting (transferring tokens, see [0069]) the generated target non-fungible token.
Papanikolas does not explicitly disclose:
the non-fungible… tokens.
Yantis teaches:
the non-fungible token generation system being capable of generating a plurality of types (e.g. Model X widget, purchasable skins, type of currency, see [0847, 0900, 0915]) of target non-fungible tokens.
Papanikolas discloses receiving a non-fungible token request, identifying a type of a target token, generating the target token, and transmitting the target token. Papanikolas does not disclose a system capable of generating a plurality of types of target tokens, but Yantis does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the system and method for creating, tracking, and transferring non-fungible tokens in the Ethereum blockchain of Papanikolas with the system capable of generating a plurality of types of target tokens of Yantis because 1) a need exists for creating multiple NFTs at one time (see Papanikolas [0022]); and 2) a need exists for a platform that provides flexibility and convenience of virtual item transactions and reliability and value of physical item transactions (see Yantis [0004]). Having a system capable of generating a plurality of types of target tokens provides flexibility for virtual item transactions.
Claim 2
Papanikolas in view of Yantis discloses the limitations above. Furthermore, Yantis teaches:
receiving the non-fungible token request includes receiving a request transmission token that is a fungible token (fungible token, see [0852]) or a non-fungible token (non-fungible token, see [0852]), and
the type of the target non-fungible token is identified by using, as the identification information, the number or type (e.g. type of currency, see [0915]) of the request transmission tokens.
Claim 3
Papanikolas in view of Yantis discloses the limitations above. Furthermore, Yantis teaches:
being configured to be able to receive both a fungible token (fungible token, see [0852]) and a non-fungible token (non-fungible token, see [0852]) as the request transmission token (request may include the token, see [0849]), wherein
when the fungible token has been received as the request transmission token, the type of the target non-fungible token is identified based on the number (number of total tokens, see [0885]) of the fungible tokens having been received as the request transmission token, and
when the non-fungible token has been received as the request transmission token, the type of the target non-fungible token (non-fungible token, see [0915]) is identified based on the type (e.g. type of currency, see [0915]) of the non-fungible token having been received as the request transmission token.
Claim 4
Papanikolas in view of Yantis discloses the limitations above. Furthermore, Papanikolas discloses:
a contract computer that executes a smart contract (smart contract, see [0036, 0065]) on a blockchain,
the smart contract being configured to cause the contract computer to execute:
receiving a non-fungible token request (user enters number, see [0055]) having the identification information;
identifying the type (collectibles, NFTs, see [0055]) of the target non-fungible token to be generated, based on the identification information possessed by the non-fungible token request;
generating (created, see [0066]) the target non-fungible token of the identified type; and
transmitting (transferring tokens, see [0069]) the generated target non-fungible token.
Claim 5
Papanikolas in view of Yantis discloses the limitations above. Furthermore, Papanikolas discloses:
generating the target non-fungible token includes generating the target non-fungible token by using data that is selected based on the received identification information from among a plurality of material data (TO and FROM values, see [0039, 0058]).
Claim 6
Papanikolas in view of Yantis discloses the limitations above. Furthermore, Papanikolas discloses:
the target non-fungible token has an identifier (URI, see [0065]) indicating duplicate data of the selected data.
Claim 7
Papanikolas in view of Yantis discloses the limitations above. Furthermore, Papanikolas discloses:
the identifier indicating the duplicate data is a uniform resource identifier (URI, see [0065]) indicating the duplicate data.
Claim 8
Papanikolas in view of Yantis discloses the limitations above. Furthermore, Papanikolas discloses:
identifying the number (number, see [0055]) of the target non-fungible tokens to be generated, based on the identification information.
Claim 9
Papanikolas in view of Yantis discloses the limitations above. Furthermore, Yantis teaches:
receiving the non-fungible token request includes receiving a request transmission token (request may include the token, see [0849]) that is a non-fungible token (non-fungible token, see [0852]), and
the non-fungible token that is the request transmission token has the identification information used for identifying the type (e.g. type of currency, see [0915]) of the target non-fungible token to be generated.
Claim 10
Papanikolas in view of Yantis discloses the limitations above. Furthermore, Papanikolas discloses:
the identification information possessed by the non-fungible token request includes data indicating any of the plurality of material data (e.g. events regarding creation, transfer of ownership, and burning of NFTs, see [0044]).
Claims 11, 13
Papanikolas in view of Yantis discloses the limitations above. Furthermore, Yantis teaches:
include a generation private key (private key, see [0884]) for generating the target non-fungible token; and
generate the target non-fungible token by using the generation private key (utilize private key/public key pair to digitally sign the value that identifies the token, see [0884]).
Claims 12, 15
Papanikolas discloses:
the process of generating the non-fungible token comprising:
receiving a non-fungible token request (user enters number, see [0055]) having identification information (token address and token ID, FROM and TO values, see [0039, 0066]); and
generating (created, see [0066]) a non-fungible token (tokens, see [0066]) by using data that is selected based on the received identification information from among the plurality of material data included in the database.
Papanikolas does not disclose:
a database including a plurality of material data.
Yantis teaches:
a database (database, see [0839]) including a plurality of material data (data, see [0839]).
Papanikolas discloses receiving a non-fungible token request and generating the token. Papanikolas does not disclose a database of material data, but Yantis does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the system and method for creating, tracking, and transferring non-fungible tokens in the Ethereum blockchain of Papanikolas with the database of material data of Yantis because 1) a need exists for creating multiple NFTs at one time (see Papanikolas [0022]); and 2) a need exists for a platform that provides flexibility and convenience of virtual item transactions and reliability and value of physical item transactions (see Yantis [0004]). Having a database of material data provides flexibility for virtual item transactions.
Claim Interpretation
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure (see attached form PTO-892).
Basu et al. (US 2022/0173893) discloses non-fungible token blockchain processing.
Examiner hereby adopts the following definitions under the broadest reasonable interpretation standard. In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), Examiner points to these other sources to support her interpretation of the claims.1 Additionally, these definitions are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language. Finally, the following list is not intended to be exhaustive in any way:
configuration “(1) (A) (software) The arrangement of a computer system or component as defined by the number, nature, and interconnections of its constituent parts.” “(C) The physical and logical elements of an information processing system, the manner in which they are organized and connected, or both. Note: May refer to hardware configuration or software configuration.” IEEE 100 The Authoritative Dictionary of IEEE Standards Terms, 7th Edition, IEEE, Inc., New York, NY, Dec. 2000.
database “A file composed of records, each containing fields together with a set of operations for searching, sorting, recombining and other functions.” Computer Dictionary, 3rd Edition, Microsoft Press, Redmond, WA, 1997.
Applicant is reminded that functional recitation(s) using the word and/or phrases “for”, “adapted to”, or other functional language (e.g. see claims 1, 3, 4, 8, 11 which recite “configured to” and claim 1 which recites “capable of”) have been considered but are given little patentable weight because they fail to add any structural limitations and are thereby regarded as intended use language. To be especially clear, all limitations have been considered. However, a recitation of the intended use of the claimed product must result in a structural difference between the claimed product and the prior art in order to patentably distinguish the claimed product from the prior art. If the prior art structure is capable of performing the intended use, then it reads on the claimed limitation. In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) ("The manner or method in which such a machine is to be utilized is not germane to the issue of patentability of the machine itself.”); In re Otto, 136 USPQ 458, 459 (CCPA 1963). See also MPEP §§ 2106 II (C.), 2114 and 2115. Unless expressly noted otherwise by Examiner, the claim interpretation principles in the paragraph apply to all examined claims currently pending.
Conclusion
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from Examiner should be directed to Chrystina Zelaskiewicz whose telephone number is 571-270-3940. Examiner can normally be reached on Monday-Friday, 9:30am-5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Neha Patel can be reached at 571-270-1492.
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 http://portal.uspto.gov/external/portal/pair <http://pair-direct.uspto.gov>. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866.217.9197 (toll-free).
/CHRYSTINA E ZELASKIEWICZ/Primary Examiner, Art Unit 3699
1 While most definition(s) are cited because these terms are found in the claims, Examiner may have provided additional definition(s) to help interpret words, phrases, or concepts found in the definitions themselves or in the prior art.