DETAILED ACTION
This is an office action on the merits in response to the communication filed on 1/21/2026.
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 .
Claims’ Status
Claims 1-5 are amended. Claims 1-5 are pending and are considered in this office action.
101
Applicant’s 101 argument is primarily focus on the amended claims, however the amended claims are mostly new subject matter, see below for the new rejection.
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.
Claim 1 is 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 1 recites “obtaining AI-generated information of health of the forest plot comprising indicators selected from forest growth, forest age, carbon dioxide capacity, oxygen release capacity; providing an environment value to each issued NFT based on at least carbon sink value defined by the obtained AI-generated information …….to non-clearcut contract; wherein the environment value of each issued NFT is updated in real time and wherein the exchange value of the NFT is determined based on said environment value” These limitations are not supported by the original specification, therefore the limitations carry limited patentable weight. Corrections are required.
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.
Claim 1 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 recites “obtaining AI-generated information of health of the forest plot comprising indicators selected from forest growth, forest age, carbon dioxide capacity, oxygen release capacity”, however the list doesn’t end with an “and” or an “or”, it is unclear whether all of these are required or if only one would suffice. Correction is required.
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 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1 (The Statutory Categories): Is the claim to a process, machine, manufacture or composition of matter? MPEP 2106.03
Per Step 1, Claims 1-5 are drawn to method claims which are within the four statutory categories (i.e., a process).
Furthermore, under Step 2A Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon MPEP 2106.04.
Claim 1:
providing a multitude of non-fungible tokens (NFTs), wherein each NFT corresponds to an individual or shared forest plot, said forest plot being subject to a binding no-clearcut agreement executed in exchange of issuing the NFT;
obtaining AI-generated information of health of the forest plot comprising indicators selected from forest growth, forest age, carbon dioxide absorption capacity, oxygen release capacity;
processing the obtained AI-generated information by a server:
providing an environmental value to each issued NFT based on at least a carbon sink value defined by the obtained AI-generated information of the forest plot and a period of time since the NFT was issued which time period corresponds to time the forest plot has been subject to the no-clearcut contract; and wherein the environmental value of each issued NET is updated in real time and wherein an exchange value of the NFT is determined based on said environmental value, and each issued NET corresponds to a tradeable digital or physical NET certificate having a scannable code that comprises information of the forest plot and the real time environmental value of the NFT.
The limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers fundamental economic principles or practices, under the Certain methods of organizing human activity, but for the recitation of generic computer components. The abstract idea, recited above, includes: said forest plot being subject to a binding agreement executed in exchange of issuing the NFT; each issued NFT having a defined environmental value determined by at least a carbon sink value of the forest plot and a period of time since the NFT was issued which time period corresponds to time the forest plot has been subject to the no clearcut contract. If a claim limitation, under its broadest reasonable interpretation, covers performance of managing relationships by following rules, but for the recitation of generic computer components, it falls within the Certain Methods of Organizing Human Activity – fundamental economic principles or practices, grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application? MPEP 2106.04.
The additional positive elements are: each issued NFT corresponds to a tradeable digital or physical NFT certificate having a scannable code that comprises information of the forest plot and the environmental value of the NFT” in claim 1; which amounts to linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h).
Accordingly, these additional claim elements, alone and in combination do not integrate the abstract idea into a practical application, because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05(a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05(b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05(e) and the Vanda memo). Therefore, per Step 2A, Prong Two, the claim is directed to an abstract idea not integrated into a practical application.
Step 2B (The Inventive Concept): Does the claim recite additional elements that amount to significantly more than the judicial exception? MPEP 2106.05.
Step 2B of the eligibility analysis concludes that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Examiner carries over the analysis from Step 2A related to the generic computing elements being no more than a recitation of the words "apply it" (or an equivalent) to implement an abstract idea or other exception on a computer (MPEP 2106.05(f)). The additional claim elements that are just “applying it” or “generally linking the use of the judicial exception to a particular technological environment or field of use” are mere instructions to implement an abstract idea, are carried over for further analysis in Step 2B.
When the independent claims are considered as a whole, as a combination, the claim elements noted above do not amount to any more than they amount to individually. The operations appear to merely apply the abstract concept to a technical environment in a very general sense. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified as an abstract idea. Therefore, it is concluded that the elements of the independent claims are directed to one or more abstract ideas and do not amount to significantly more. (MPEP 2106.05)
Further, Step 2B of the analysis takes into consideration all dependent claims as well, both individually and as a whole, as a combination:
Claims 2-3 and 5 are further directed to additional abstract ideas because the elements are simply narrowing the scope of the abstract idea of claim 1 since their individual and combined significance is still not significantly more than the abstract concept at the core of the claimed invention. For example, claim 2 narrowing the QR code by changes in the information and environmental value of the NFT; claim 3 describes using AI to changes in the information and environmental value of the NFT; claim 5 describes NFTs is owned by one entity; etc, which all of the limitation are narrowing the steps performed in claim 1.
Claim 4 is directed to nonfunctional descriptive material of “NFT” where it describes NFT comprises photographs, videos, etc in claim 4. While these descriptive elements may provide further helpful context for the claimed invention, these elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not significantly more than the abstract concept at the core of the claimed invention.
Moreover, the claims in the instant application do not constitute significantly more also because the claims or claim elements only serve to implement the abstract idea using computer components to perform computing functions (Enfish, see MPEP 2106.05(a)). Specifically, the computing system encompasses general purpose hardware and software modules.
The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified in the independent claims as an abstract idea. In sum, the additional elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention. Therefore, it is concluded that the dependent claims of the instant application do not amount to significantly more either. (see MPEP 2106.05)
In sum, claims 1-5 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Reasons for allowance over the prior art
The following is a statement of reasons for the indication of allowable subject matter: Claim 1 contains allowable subject matter. As per claim 1, the closest prior art of record, US20220027992A1 to Blevins teaches process of tracking trees may include one or more of generating a listing of trees, generating digital tokens representing the trees, or performing one or more operations associated with the trees using the digital tokens (e.g., creating a market place for trading digital tokens, trading digital tokens, or computing carbon credits associated with a tree.) What is missing from Blevins is the teaching “each issued NFT having a period of time since the NFT was issued which time period corresponds to time the forest plot has been subject to the no clearcut contract.” Therefore, the closest prior arts of record fail to teach or suggest, in the context of the ordered combination of the claim, “each issued NFT having a defined environmental value determined by at least a carbon sink value of the forest plot and a period of time since the NFT was issued which time period corresponds to time the forest plot has been subject to the no clearcut contract.”
Claims 2-5 are dependent on claim 1 and are allowable because of dependency on claim 1.
Conclusion
THIS ACTION IS MADE FINAL, necessitated by amendment. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YIN Y CHOI whose telephone number is (571)272-1094 or yin.choi@uspto.gov. The examiner can normally be reached on M-F 7:30 - 5:30pm EST.
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, Neha Patel can be reached on 571-270-1492. 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 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). 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.
/YIN Y CHOI/Examiner, Art Unit 3699 5/18/2026
/NILESH B KHATRI/Primary Examiner, Art Unit 3699
Prosecution Insights