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 .
Status of Claims
Claims 1-9 and 19 are elected, in response to restriction.
Claims 10-18 and 20 are non-elected and withdrawn.
Claims 1-9 and 19 are pending.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 07/04/2023 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been considered by the examiner.
Claim Objections
Claims 9 and 19 are objected to because of the following informalities. The claims contain a reference to a previous claim in the same application while failing to include all the limitations of the previous claim. Appropriate correction is required. Examiner suggests amending the claim to explicitly recite the method steps referred to. For purposes of compact prosecution, Examiner will interpret the claim as if amended to explicitly recite the method steps referred to.
Election/Restrictions
Applicant made an election of claims 1-9 and 19 in the reply filed on 07/29/2026. However, no statement was made indicating whether the requirement to restrict is traversed. MPEP 818.01 states that “The absence of any statement indicating whether the requirement to restrict is traversed or the failure to provide reasons for traverse will be treated as an election without traverse”. As such, Applicant's election without traverse of claims 1-9 and 19 in the reply filed on 07/29/2026 is acknowledged. Claims 10-18 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention.
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 1-9 and 19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Step 1 of the eligibility analysis asks is the claim to a process, machine, manufacture or composition of matter (See MPEP § 2106.03, subsections I and II). Claims 1-8 are directed to a computer-implemented method (i.e., process). Claim 9 is directed to a computer-implemented apparatus (i.e., machine, and manufacture). Claim 19 is directed to a non-transitory computer-readable storage medium (i.e., manufacture). Therefore, these claims fall within the four statutory categories of invention.
Step 2A, Prong One
Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon (MPEP § 2106.04(II)(A)(1)). The independent claims under a broadest reasonable interpretation recite an abstract idea because the claims describe asset request and result management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas (MPEP § 2106.04(a)(2), subsection II). The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity” grouping of abstract ideas because the limitations describe fundamental economic principles or practices, including mitigating risk, and describe commercial or legal interactions, including advertising, marketing or sales activities or behaviors. The following underlined claim limitations recite the abstract idea.
Claim 1:
A method comprising:
obtaining, by a non-fungible token (NFT) smart contract being executed in a trusted execution environment, a request to perform an operation using the asset;
providing, by the NFT smart contract, the request for a service for providing access to the asset if the request is obtained from a current owner of the NFT smart contract;
obtaining, by the NFT smart contract, a result provided by the service for providing access to the asset, the result being based on the request; and
providing, by the NFT smart contract, the result for the current owner of the NFT smart contract.
Claim 9:
An apparatus comprising:
an interface for communicating with a service for providing access to an asset;
machine-readable instructions; and
processor circuitry with a trusted execution environment to execute the machine-readable instructions inside the trusted execution environment to perform the method according to claim 1.
Claim 19:
A non-transitory machine-readable storage medium including program code, when executed, to cause a machine to perform the method of claim 1.
Step 2A, Prong Two
Prong Two asks does the claim recite additional elements that integrate the judicial exception into a practical application (MPEP § 2106.04(II)(A)(2)). Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations discussed in more detail in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and 2106.05(e) through (h). Here, the non-underlined claim limitations above recite additional elements. The additional elements do not improve the functioning of computers, another technology, or a technical field (MPEP §§ 2106.04(d)(1) and 2106.05(a)). The Specification does not assert that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. The claim does not purport to improve computer capabilities, but rather invokes computers merely as a tool by adding general purpose computers post-hoc to an abstract idea. A commonplace business method being applied on a general-purpose computer is not sufficient to show an improvement to technology. The claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. The Specification and the claim language provide evidence that the focus of the claim is on a scheme. An improvement in the abstract idea itself is not an improvement in technology. Even if the Specification describes technical improvements, they are not claimed. The additional elements do not apply the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (MPEP § 2106.04(d)(2)). The additional elements do not implement the abstract idea with a particular machine or manufacture that is integral to the claim (MPEP § 2106.05(b)). A general-purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. The additional elements do not transform or reduce a particular article to a different state or thing (MPEP § 2106.05(c)). The claim does not recite any transformation of an article where the article changes to a different state or thing. Nor do the additional elements apply the abstract idea in a meaningful way or impose a meaningful limit on it beyond linking its use 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)). The additional elements generally link the use of the judicial exception to a particular technological environment. A wholly generic computer implementation is not generally the sort of additional feature that provides any practical assurance that the process is more than a drafting effort designed to monopolize the abstract idea itself. The additional elements individually and in combination, merely serve as a tool to perform the abstract idea (MPEP § 2106.05(f)). Implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. Use of a computer or other machinery in its ordinary capacity for economic or other tasks or simply adding a general-purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application. The additional elements are being used in their ordinary capacity. The additional elements do no more than merely invoke computers or machinery as a tool to perform an existing process. The additional elements generally link the use of the abstract idea to a particular technological environment or field of use (MPEP § 2106.05(h)). Limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception cannot integrate a judicial exception into a practical application. Thus, the additional elements do not integrate the abstract idea into a practical application. Accordingly, the claims are directed to the abstract idea identified above.
Step 2B
Step 2B determines whether the claim as a whole amount to significantly more than the abstract idea itself (MPEP § 2106.05). In Step 2B examiners carry over their identification of the additional element(s) in the claim from Step 2A Prong Two; carry over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a)-(c), (e), (f) and (h); re-evaluate any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant; and evaluate whether any additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, per MPEP § 2106.05(d). The additional elements individually and in combination, merely serve as a tool to perform the abstract idea (MPEP § 2106.05(f)). The additional elements generally link the use of the abstract idea to a particular technological environment or field of use (MPEP § 2106.05(h)). Individually, the additional elements do not amount to significantly more than the abstract idea. Here, the additional elements simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity. Here, the specification of the application indicates that additional elements are well-known or conventional (See Spec. 0001, 0033-0038, 0050-0053, 0056, 0057, 0069-0072, 0132, 0135-0139). There is nothing in the specification to indicate that the operations recited in the claims require any specialized hardware or inventive computer components or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. The ordered combination recites no more than the individual elements do. Thus, the additional elements are not significantly more than the abstract idea. Accordingly, the claims are directed to the abstract idea identified above without significantly more. The claims are not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Dependent Claims
Claim 2 recites an abstract idea because the claim describes asset request and result management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0001, 0033-0038, 0050-0053, 0056, 0057, 0069-0072, 0132, 0135-0139). Therefore, the claim is not eligible.
wherein the NFT smart contract grants the current owner of the NFT smart contract the right to perform one or more operations on the asset.
Claim 3 recites an abstract idea because the claim describes asset request and result management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0001, 0033-0038, 0050-0053, 0056, 0057, 0069-0072, 0132, 0135-0139). Therefore, the claim is not eligible.
wherein the method comprises checking, by the NFT smart contract, whether the request is permissible according to at least one pre-defined policy, wherein the request is provided if the request is obtained from the current owner of the NFT smart contract and the request is permissible.
Claim 4 recites an abstract idea because the claim describes asset request and result management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0001, 0033-0038, 0050-0053, 0056, 0057, 0069-0072, 0132, 0135-0139). Therefore, the claim is not eligible.
wherein the NFT smart contract provides the request as part of a request package to the current owner of the NFT smart contract and obtains the result as part of a result package from the current owner of the NFT smart contract.
Claim 5 recites an abstract idea because the claim describes asset request and result management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0001, 0033-0038, 0050-0053, 0056, 0057, 0069-0072, 0132, 0135-0139). Therefore, the claim is not eligible.
wherein the NFT smart contract provides the request to the service for providing access to the asset and obtains the result from the service for providing access to the asset.
Claim 6 recites an abstract idea because the claim describes asset request and result management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0001, 0033-0038, 0050-0053, 0056, 0057, 0069-0072, 0132, 0135-0139). Therefore, the claim is not eligible.
wherein providing the request comprises encrypting, by the NFT smart contract, at least a portion of a request package comprising the request using an encryption key provided by the service for providing access to the asset, the encryption key being associated with an identity of the NFT smart contract.
Claim 7 recites an abstract idea because the claim describes asset request and result management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0001, 0033-0038, 0050-0053, 0056, 0057, 0069-0072, 0132, 0135-0139). Therefore, the claim is not eligible.
wherein obtaining the result comprises decrypting, using a session key included in a request package being provided for the service, a result package.
Claim 8 recites an abstract idea because the claim describes asset request and result management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0001, 0033-0038, 0050-0053, 0056, 0057, 0069-0072, 0132, 0135-0139). Therefore, the claim is not eligible.
wherein the method comprises, to transfer the NFT smart contract to a new owner, by the NFT smart contract,
obtaining a transfer request to transfer ownership of the NFT smart contract,
checking, whether the transfer request is obtained from the current owner of the NFT smart contract,
resetting one or more encryption keys contained in the NFT smart contract,
providing a transfer ownership package for the service for providing access to the asset, and
obtaining an encryption key being associated with an identity of the NFT smart contract from the service for providing access to the asset, the encryption key being provided in response to the transfer ownership package.
Claim Rejections - 35 USC § 112
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 1-8 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.
Lack of Antecedent Basis
Claims 1-2, 5-6 and 8 recite "the asset" without proper antecedent basis. Appropriate correction is needed. Therefore, these claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claims 2-8 are also rejected per dependency upon a rejected claim.
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.
Claims 1-7, 9 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0273048 A1 to Andon et al. ("Andon").
Claims 1, 9, 19:
Andon discloses:
an interface for communicating with a service for providing access to an asset; machine-readable instructions; and processor circuitry with a trusted execution environment to execute the machine-readable instructions inside the trusted execution environment to perform the method according to claim 1 [A non-transitory machine-readable storage medium including program code, when executed, to cause a machine to perform the method of claim 1] (paras 82-84, 134, 143-144)
obtaining, by a non-fungible token (NFT) smart contract (paras 48, 108) being executed in a trusted execution environment (paras 82-84, 134, 143-144), a request to perform an operation using the asset; (paras 54, 63, 79, 84, 90-91, 107)
providing, by the NFT smart contract (paras 48, 108), the request for a service (paras 54, 74, 76, 79, 88) for providing access to the asset if the request is obtained from a current owner of the NFT smart contract; (paras 46, 48)
obtaining, by the NFT smart contract (paras 48, 108), a result provided by the service (paras 54, 74, 76, 79, 88) for providing access to the asset, the result being based on the request; and (paras 63, 74, 79, 85, 88, 124)
providing, by the NFT smart contract (paras 48, 108), the result for the current owner of the NFT smart contract. (paras 63, 74, 79, 85, 88, 124)
Claim 2:
Andon discloses all limitations of claim 1. Andon further discloses:
wherein the NFT smart contract (paras 48, 108) grants the current owner of the NFT smart contract the right to perform one or more operations on the asset (paras 54, 63, 79, 84, 90-91, 107)
Claim 3:
Andon discloses all limitations of claim 1. Andon further discloses:
wherein the method comprises checking, by the NFT smart contract (paras 48, 108), whether the request is permissible according to at least one pre-defined policy, wherein the request is provided if the request is obtained from the current owner of the NFT smart contract and the request is permissible (paras 46, 48)
Claim 4:
Andon discloses all limitations of claim 1. Andon further discloses:
wherein the NFT smart contract (paras 48, 108) provides the request as part of a request package to the current owner of the NFT smart contract (paras 54, 63, 79, 84, 90-91, 107) and obtains the result as part of a result package from the current owner of the NFT smart contract (paras 63, 74, 79, 85, 88, 124)
Claim 5:
Andon discloses all limitations of claim 1. Andon further discloses:
wherein the NFT smart contract provides the request (paras 54, 63, 79, 84, 90-91, 107) to the service (paras 54, 74, 76, 79, 88) for providing access to the asset and obtains the result from the service (paras 54, 74, 76, 79, 88) for providing access to the asset (paras 63, 74, 79, 85, 88, 124)
Claim 6:
Andon discloses all limitations of claim 1. Andon further discloses:
wherein providing the request comprises encrypting, by the NFT smart contract (paras 48, 108), at least a portion of a request package comprising the request using an encryption key provided by the service (paras 54, 74, 76, 79, 88) for providing access to the asset, the encryption key being associated with an identity of the NFT smart contract (paras 22, 50-51, 74, 85, 88, 90, 133, 139)
Claim 7:
Andon discloses all limitations of claim 1. Andon further discloses:
wherein obtaining the result comprises decrypting, using a session key included in a request package being provided for the service (paras 54, 74, 76, 79, 88), a result package (paras 22, 50-51, 74, 85, 88, 90, 133, 139)
Claims Free of Art
Claim 8 is free of art. The prior art does not teach, neither singly nor in combination the following:
wherein the method comprises, to transfer the NFT smart contract to a new owner, by the NFT smart contract, obtaining a transfer request to transfer ownership of the NFT smart contract, checking, whether the transfer request is obtained from the current owner of the NFT smart contract, resetting one or more encryption keys contained in the NFT smart contract, providing a transfer ownership package for the service for providing access to the asset, and obtaining an encryption key being associated with an identity of the NFT smart contract from the service for providing access to the asset, the encryption key being provided in response to the transfer ownership package
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2021/0248594 A1 (“Yantis”) discloses: Systems, methods, platforms, and devices that generate, store, transact, transfer, exchange, and/or otherwise process digital tokens are described. In embodiments, systems, methods, platforms, and devices obtain an identifier for an item that includes a set of item attributes, generate a digital token including a set of digital attributes that correspond to the set of item attributes, and cryptographically link the digital token to one or more units of the item. The digital token may be transferred, exchanged, redeemed, or otherwise transacted, which provides both the flexibility and convenience of virtual item transactions and the reliability and value of physical item transactions.
US 11,075,891 B1 (“Long”) discloses: Methods and systems are described for implementing decentralized digital rights management (DRM) within a decentralized network, satisfying an important need of content owners. First, the method implemented by a source cacher node includes broadcasting, to one or more viewer peer nodes in the decentralized network, a notification of the source cacher node's intent to transmit a data stream. Then, recording a smart contract on a blockchain associated with the decentralized network, the smart contract associated with the data stream and allowing the authentication of a viewer peer node through the smart contract by an ownership of a non-fungible token (NFT) in order to receive a data key to decrypt the data stream. Next, receiving a request from an authenticated viewer peer node for receiving the data stream. Finally, generating an encrypted data stream based on the data stream and the data key to decrypt the data stream, and transmitting the encrypted data stream and the data key to the authenticated viewer peer node.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ari Shahabi whose telephone number is (571)272-2565. The examiner can normally be reached M-F: 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at 571-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ARI SHAHABI/Primary Examiner, Art Unit 3697
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