DETAILED ACTION
1. 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 .
2. Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/13/2026 has been entered.
3. Status of Application and Claims
Claims 1-3, 6-10, 13-18 and 20-22 are pending.
Claim 8 was amended and/or newly added in the Applicant’s filing(s) on 8/13/2026.
This office action is being issued in response to the Applicant's filing(s) on 8/13/2026.
4. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternative interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 1 recites a system configured with machine-readable instructions to:
export the composite imaqe to cause display of the composite imaqe on a computinq platform.
Claim 1 is for a system, a system that generates and exports a composite image. The computing platform is a system outside the claimed system performing the generation and exportation of the composite image. The functions performed by the computing platform, whether the computing platform displays or does not display, are outside the scope of the claimed system.
Additionally, the intended use or purpose of the data (i.e., to be displayed) must result in a structural and/or functional difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or fulfilling said purpose (i.e., can be displayed), then it meets the claim. See MPEP §2114(II), citing Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987).
Claim 8 has similar claim interpretation
5. 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 1-3, 6-10, 13-18 and 20-22 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method and a system to confirmed to perform a method comprising:
accessing information stored on a … ledger, the information pertaining to a set of … assets recorded at one or more [locations] on the … ledger, wherein the one of more [locations] on the ledger correspond to a … wallet associated with the user, wherein the … assets are correlated with entities;
determining, based on the information, the entities;
determining that the user owns the entities by virtue of the … assets being recorded at the one or more [locations] on the … ledger corresponding with the … wallet associated with the user;
generating a composite image representing the representing the entities owned by the user, where the composite image includes a visual symbol that summarizes the entities and reflects an affinity toward the entities;
responsive to generating the composite image;
storing the composite image in … storage;
minting a composite … asset correlated with the composite image by creating the composite … asset, defining ownership of the composite … asset, defining a correlation with the composite image, and defining the appearance of the visual symbol; and
recording the composite … asset at a first [location] on the … ledger, wherein the first [location] corresponds with the … wallet associated with user ...
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to generate a composite asset based upon a collection of assets which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Additionally, these limitations, as drafted, under their broadest reasonable interpretation, cover a series of steps instructing how to define ownership of an asset which qualifies as a commercial or legal interaction, a subcategory of certain methods of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(B).
Additionally, these limitations, as drafted, under their broadest interpretation, cover a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind” is a court-provided example of a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a digital asset (Claim(s) 1, 8 and 15), a digital wallet (Claim(s) 1, 8 and 15), address(es) in a decentralized ledger (Claim(s) 1, 8 and 15), electronic storage (Claim(s) 1 and 8) and processor(s) (Claim(s) 1).
Examiner notes that Claims 8 and 15 (i.e., the method claims) do not recite that the method steps are being performed by a computer. Under the broadest reasonable interpretation, the method steps (e.g., accessing and determining) are being performed by a human being operating a computer and not the computer system itself.
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 2-4, 6, 7 and 9-11 and 13-22 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1, 8 and 15. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
Dependent Claim(s) recite additional elements (i.e., computer elements) of a digital character (Claim(s) 2, 9 and 16), a digital media file (Claim(s) 2, 9 and 16), a digital tool (Claim(s) 2, 9 and 16), a digital vehicle (Claim(s) 2, 9 and 16) and an electronic storage (Claim(s) 6, 13 and 22).
In each case, the additional element(s) are recited at a high level of generality such that these additional element(s) amount to no more than mere instructions to apply the exception using a generic computer component.
The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination utilizing the same rationale as previously asserted against the independent claims.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
6. Claim Rejections - 35 USC §103
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 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 1-3, 6-10, 13-18 and 20-22 is/are rejected under 35 U.S.C. 103 as obvious over Lipton (US PG Pub. 2023/0216682) in view of Newberg (US PG Pub. 2023/0360280).
Regarding Claim 8, Lipton discloses a method to generate a composite image representing a user affinity toward entities associated with digital assets indicated by a digital wallet comprising:
accessing information stored on a decentralized ledger, the information pertaining to a set of digital assets (tokens, i.e., digital assets stored as tokens) recorded at one or more addresses on a decentralized ledger, wherein the digital assets are correlated with entities (physical objects of value, metaverse assets, person/organization creator of said asset, or metaverse). (see abstract; para. 32-33, 45-50 and 57-61);
determining, based on the information, the correlated entities (physical objects of value, metaverse assets, person/organization creator of said asset, or metaverse). (see para. 32-33);
determining that the user owns the entities (physical objects of value or metaverse assets) by virtue of then digital assets (tokens) being recorded at one or more addresses on the decentralized ledger. (see abstract; para. 57-61);
generating a composite image (object avatar image) representing the entities (pure metaverse asset and a real-world physical object), wherein the composite image includes a visual symbol (an image for human visual recognition) that summarizes the entities (pure metaverse asset and a real-world physical object) and reflects an affinity of the user toward the entities. (see para. 33, 54 and 55);
responsive to generating the composite image (object avatar image):
storing the composite image (object avatar image) in electronic storage (as an image file). (see para. 45-47); and
minting (creating) a composite digital asset (duality asset) correlated with the composite image (object avatar image) by creating the composite digital asset (duality asset), defining ownership of the composite digital asset (through a sale), defining a correlation with the composite image (object avatar image), and defining an appearance of the visual symbol (via an image for human visual recognition). (see para. 33, 54 and 55); and
export[ing] the composite image to cause display of the composite image on a computing platform. (see para. 147).
Lipton does not explicitly teach a method comprising recording the composite digital asset at a first address on the decentralized ledger, although Lipton does disclose a method comprising recording the digital asset on the decentralized ledger (see abstract), and modifying information pertaining to the digital asset on the decentralized ledger. (see para. 43).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Lipton by incorporating the ability to record composite digital assets on the decentralized ledger, as suggested by Lipton, thereby keeping information pertaining to the digital assets up-to-date and accurate.
Lipton does not explicitly teach a method wherein the one or more addresses correspond with a digital wallet are associated with a user.
Newberg discloses a method wherein: one or more addresses correspond with a digital wallet are associated with a user. (see para. 32, 33 and 36).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lipton by incorporating a wallet address, as disclosed by Newberg, to verify “the requests to access, generate, modify, transfer, delete [the digital assets] originate from an authorized user.” (see Newberg, para. 42).
Regarding Claim 9, Lipton discloses a method wherein the entities include one or more of a digital tool (e.g., super sneakers, super socks, Gucci bag or Gucci hat), wherein individual ones of the entities are associated with values to entity identity parameters (Gucci, trademark logo or brand) parameters. (see fig. 3A-3B; para. 40, 57-61 and 110-111).
Regarding Claim 10, Lipton discloses a method wherein the visual symbol is determined based on the values to the one or more entity identity parameters (Gucci, trademark logo or brand). (see para. 131).
Regarding Claim 13, Lipton discloses a method further comprising storing, in the electronic storage (database, cloud, memory or distributed ledgers), wherein the determining the entities includes accessing the electronic storage (database, cloud, memory or distributed ledgers). (see para. 2, 43, 312 and 323).
Regarding Claim 14, Lipton does not explicitly teach a method wherein the accessing the information and determining the entities are performed periodically, and analyzing the correlated entities is performed periodically.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Lipton and Newberg by duplicating claim elements contained in Lipton (e.g., the first iteration of determining and analyzing) to create additional claim elements (e.g., a second iteration of determining and analyzing) wherein each additional claim element would serve the same function as the original claim element. In the combination each element, original element and additional element, would merely have performed the same function as it did previously, and one of ordinary skill in the art at the effective filing date of the invention would have recognized that the results of the combination were predictable. see MPEP §2144.04 (VI)(B).
Regarding Claims 1-3, 6 and 7, such claims recite substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
Regarding Claim 15, Lipton discloses a method comprising:
accessing information stored on a decentralized ledger, the information pertaining to a set of digital assets (tokens, i.e., digital assets stored as tokens) recorded at one or more addresses on the decentralized ledger, wherein the digital assets are correlated with entities (physical objects of value, metaverse assets, person/organization creator of said asset, or metaverse). (see abstract; para. 32-33, 45-50 and 57-61);
determining, based on the information, the entities (physical objects of value, metaverse assets, person/organization creator of said asset, or metaverse). (see para. 32-33); and
determining that the user owns the entities (physical objects of value or metaverse assets) by virtue of then digital assets (tokens) being recorded at one or more addresses on the decentralized ledger. (see abstract; para. 57-61); and
determining a composite image (object avatar image), wherein the composite image includes a visual symbol (an image for human visual recognition) that summarizes the entities (pure metaverse asset and a real-world physical object). (see para. 33, 54 and 55).
Lipton does not teach a method wherein the one or more addresses correspond with a digital wallet associated with a user; determining adjustments to a composite image; or responsive to the determining the adjustments to the composite image, updating the composite image in accordance with the adjustments to generate an updated composite image.
Newberg discloses a method wherein the one or more addresses correspond with a digital wallet associated with a user. (see para. 32, 33 and 36).
Newberg discloses a method comprising:
determining adjustments (changes) to a composite image (appearance of the digital asset). (see para. 19); and
responsive to the determining the adjustments (changes) to the composite image (appearance of the digital asset), updating (changing) the composite image (appearance of the digital asset) in accordance with the adjustments (changes) to generate an updated composite image (post-change appearance of the digital asset). (see para. 19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lipton by incorporating a wallet address, as disclosed by Newberg, thereby using a wallet address as a user identifier, as disclosed by Newberg. (see para. 32-33).
Regarding Claims 16-18 and 20-22, such claims recite substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
7. Response to Arguments
Applicant’s arguments filed 8/13/2026 have been fully considered but they are not persuasive.
Claim Interpretation
Applicant argues that the previously asserted claim interpretation was unwarranted. See Arguments, p. 9.
Specifically, Applicant argues:
The "to cause display" clause is not intended use. The clause characterizes the recited export: it recites exportation in a manner that causes the image to be displayed on a computing platform. Claim 8 affirmatively recites "exporting the ... composite image," and claim 1 recites one or more processors configured to "export the composite image." The display is tethered to the recited export, and cannot be severed from it. A functional result that flows from a positively recited act is limiting; it is not a purpose untethered from any recited act that the Office may disregard. [MPEP § 2111.04]. See Arguments, p. 9.
The Examiner respectfully disagrees.
The claims, as written, recite a method comprising exporting (i.e., outputting) the composite image. The claims, as written, do not recite a method comprising displaying the composite image. While exporting may be performed with the intention to eventually display the composite image, the claim, as written, does not require interpretation that the composite image is displayed.
§101 Rejection
Step 2A Prong One
Applicant argues that the claimed invention does not recite a judicial exception and, as such, satisfies Step 2A Prong One of the §101 Guidelines. See Arguments, pp. 9-18.
Specifically, the Applicant argues:
For example, the Office Action splits the single, unitary term "decentralized ledger" in two-retaining "ledger" while removing "decentralized." [Office Action, p. 4]. The Office Action further splits the single, unitary term "composite digital asset" in two- retaining "composite...asset" while removing "digital." [Office Action, p. 5]. The Office Action further replaces the term "first address" with an entirely new term "first [location]." [Id.]. The Office Action has left the claim with prose that is simply not recited. Dividing claim terms, substituting terms for entirely new ones, and treating what remains as covering the alleged abstract idea confirms that the extracted claim prose was assembled by mechanical excision rather than by identifying any coherent concept actually set forth or described in the claim. In short, an abstract idea cannot be identified with the requisite clarity and specificity from prose that the Office Action itself has invented by excision. See Arguments, p. 13.
The Examiner respectfully disagrees.
The “excised” elements are the additional elements (i.e., computer elements), elements recited in addition to the abstract idea. Additional elements (i.e., computer elements) are to be examined under Step 2A Prong Two not Step 2A Prong One. See MPEP §2106.05(f)(2).
The claimed invention recites utilizing additional elements (i.e., computer elements) to implement the abstract idea. The ledger is a distributed ledger, a computerized ledger rather than a paper ledger. The composite asset is a composite digital asset, a digital asset rather than a paper asset (e.g., paper currency). The location in the ledger is an address in a distributed ledger, rather than a location within a paper ledger.
These additional elements are examined under Step 2A Prong Two to determine whether the identified claim limitations have integrated the abstract idea into a practical application in accordance with MPEP §2106.04(d).
Applicant further argues:
Moreover, taking the identified claim prose together as a whole only underscores the problem. The compilation runs to roughly 200 words and comprises multiple distinct operations - accessing, determining entities, determining ownership, generating a composite image, storing, minting, and recording - which the Office Action itself set apart with separate bullet points. [Office Action, pp. 4-5]. The Office Action's own use of discrete bullets is a tacit acknowledgment that these are separate steps, not a single unitary concept. A block of that length and multiplicity cannot, on its face, be "parsed for a single clear definitive meaning," and it plainly is not the idea the Office Action ultimately asserts - "generate a composite asset based upon a collection of assets." [Office Action, p. 5]. See Arguments, p. 14.
The Examiner respectfully disagrees.
An abstract idea can comprise multiple distinct operations, especially when the multiple distinct operations are in furtherance of the abstract idea.
An abstract idea does not have a word limit.
Applicant further argues:
Nor has the Office Action explained what is allegedly "fundamental" or what is allegedly an "economic practice." The "fundamental economic practices or principles" sub-grouping is limited to concepts "relating to the economy and commerce," such as hedging, insurance, and mitigating risk. [MPEP § 2106.04(a)(2) II A]. The Office Action never explains how "generat[ing] a composite asset based upon a collection of assets" relates to the economy or commerce, and it identifies no economic or commercial activity of any kind - no transaction, no consideration, no risk, no market. See Arguments, p. 17.
The Examiner respectfully disagrees.
The claimed invention is generating (i.e., minting) a composite asset based upon a collection of assets. Under the broadest reasonable interpretation, an asset is a financial asset. Generating a composite financial asset from a collection of financial assets is a fundamental economic practice. For example, creating a mutual fund (i.e., a composite asset) from a collection of equities (i.e., a collection assets) is a fundamental economic practice.
Additionally, the specification recites:
Various types and/or combinations of correlated entities are envisioned within the scope of this disclosure, including but not limited to physical article, virtual objects, content, rights, memberships, grants, etc. The use of the singular “entity” or “correlated entity” is not intended to be limiting, as multiple different objects, content, rights, memberships, grants, etc. may be correlated to a single digital asset. By way of non-limiting example, a correlated entity may be a physical article (e.g., artwork, a ticket to an event), a subscription to certain media content, content and so forth. The content may include an image, a video, a graphic image file, a signature of notoriety, a sound bite of an audio file, text, the audio file, and/or other content stored on the decentralized ledger and/or other electronic storage. In some implementations, the correlated entity may refer to any physical articles, virtual objects, content, rights, memberships, grants, etc. object related to art and entertainment for which a user may use, own, sell, trade, loan, destroy, and/or otherwise effectuate a change of ownership, access, or control (including exchanges through challenges). See para. 20.
The specification recites that the assets pertain to the economy and commerce, as the assets can be sold, traded and loaned.
Applicant further argues:
Instead, the entire economic characterization rests on the single word "asset." But "asset" never appears in the claims standing alone; it appears only with qualifiers that place it squarely in a technological context - "digital asset" and "composite digital asset," each "correlated with a composite image" and "recorded ... on [a] decentralized ledger." Indeed, as shown above, the Office Action arrived at its bare "asset" characterization only by stripping the qualifier "digital" from "composite digital asset." [Office Action, p. 5]. Having removed the very words that define the term, the Office Action recasts a technological, ledger-recorded data construct as a financial instrument. That characterization finds no support in the claims or in the Specification. See Arguments, p. 17.
The Examiner respectfully disagrees.
The “technological context” in the instant case does not alter the analysis of whether the claimed invention recites an abstract idea.
MPEP §2106.04(d) pertains to Step 2A Prong Two but Examiner feels that it would be instructive to reiterate it here.
MPEP §2106.04(d) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f).
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
While the Applicant emphasizes the “technological context” that the generated composite asset is a composite digital asset that appears to be merely linking the use of a judicial exception of generating a composite asset to a particular technological environment (i.e., on a computer).
Step 2B Prong Two
Applicant argues that the claimed invention recites a practical application and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments, pp. 18-23.
Specifically, Applicant argues:
Applicant identified that concept as computer-based image generation which creates (or "modifies," as in claim 15) composite images that reflect user affinity toward entities they own ("Applicant's asserted concept"). [December 2025 Response, pp. 12-13]. The arguments further demonstrated that at least paragraphs 4, 5, 17-19, 34, and 35 of the Specification as filed establish this concept as the "focus" of the claims. [Id.].
The Office Action acknowledged this position but did not answer its substance.
The Office Action's only arguably responsive statement is that "recitation of a composite image generation operation does not negate the fact that the claimed invention also recites a fundamental economic practice." [Office Action, p. 11]. That statement addresses a different question - whether the claims "recite" an abstract idea. As applied to Applicant's asserted concept, it does no more than restate the characterization Applicant challenged. The Office Action does not engage the "directed to" / "focus of the claimed advance" analysis, does not address the Specification paragraphs Applicant cited, and does not distinguish or even acknowledge Enfish, Affinity Labs, or Elec. Power Group. Restating a position is not answering the substance of a traverse. [See MPEP § 707.07(f) ("Where the applicant traverses any rejection, the examiner should, if he or she repeats the rejection, take note of the applicant's argument and answer the substance of it.") (emphasis added)]. See Arguments, p. 18.
The Examiner respectfully disagrees.
MPEP §2106.04(a) recites:
Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above. The groupings of abstract ideas, and their relationship to the body of judicial precedent, are further discussed in MPEP § 2106.04(a)(2).
The proper standard under Step 2A Prong One of the §101 Guidelines is whether the claims recite an abstract idea. The claims recite an abstract idea, specifically the claims recite, at least, a fundamental economic practice.
In the previous Office Action, the Examiner was merely stating that, even if, the claimed invention was "directed to" image generation or the "focus of the claimed advance" was image generation, that does not alter analysis of the claimed invention under Step 2A Prong One. Regardless of “the focus,” the claimed invention still recites an abstract idea.
Admittedly, “the focus” does impact analysis of the claimed invention under Step 2A Prong Two.
As a preliminary matter, Examiner asserts that “generat[ing] a composite image representing the entities owned by the user, wherein the composite image includes a visual symbol that summarizes the entities and reflects an affinity of the user toward the entities” is part of the abstract idea.
If you generate a composite asset, the creator denotes the existence of the composite asset with a composite image. For example, if a person (e.g., a banker) creates a composite asset (e.g., asset A) based upon a collection of assets (e.g., assets B and C), the person denotes the composite asset with a composite image (e.g., the letter A). The composite image (e.g., the letter A) is a visual symbol (i.e., capable of being read) that summarizes the entities and reflects an affinity of the user toward the entities.
Examiner notes that the method claim (Claim 8) does not even recite that the image is generated by a computer.
Regardless, let us assume that image generation is an additional element, an additional element beyond the judicial exception, and analyze that additional element under MPEP §2106.04(d).
MPEP §2106.04(d) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f).
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Examiner asserts that the additional element of image generation amounts to merely (1) including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, or alternatively, (2) merely links the use of a judicial exception to a particular technological environment or field of use.
Applicant argues that the claimed invention recites a practical application, specifically “an improvement in the functioning of a computer, or an improvement to other technology or technical field,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments, pp. 22-23.
The Examiner respectfully disagrees.
MPEP §2106.05(a) recites:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. – emphasis added.
The specification does not provide any evidence that there is a technical problem (i.e., a technology-based problem) to be solved.
For example, Applicant argues “producing a composite image that consolidates digital assets recorded at multiple, disparate addresses on the decentralized ledger into a single, correlated composite digital asset recorded back at the user's own wallet address, without resort to a centralized registry or intermediary that would undermine the decentralized architecture.” See Arguments, p. 22. But the specification does not provide any evidence that there was a technology-based problem that prevented existing and conventional technology from performing the claimed process (i.e., consolidating information recorded at multiple addresses on a decentralized ledger).
The specification does not provide any evidence that the claimed invention results in an improvement to the functioning of a computer, or an improvement to conventional technology or technological processes. For example, the specification does not provide any evidence that the functionality of a computer or conventional technology has been improved, or their technological capabilities have been expanded beyond their existing capabilities.
As to the indirect improvements to the technology (e.g., reducing the burden on any single set of servers – See Arguments, p. 23) based upon performance of the claimed invention, any software can be argued to improve a computer. It can always be argued that the software runs the process more efficiently thereby reducing the demands placed upon the computer system.
In the claimed invention, the computer has not been improved. The non-technological process that the software is performing may have been improved but, according to Alice, improving the process without any technological innovation is not statutory. To be “directed to a patent-eligible improvement to computer functionality,” the claim “must be directed to an improvement to the functionality of the computer or network platform itself.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) (citing Enfish, 822 F.3d at 1336-39).
The computer still operates according to its known and standard capabilities. A reduction of load on the computer does not bring about an improvement to the computer, it merely offers resources to other processes that are running on the computer.
Examiner asserts that the claimed invention is analogous to the invention in Electric Power Group LLC v. Alstom SA (Fed. Cir. 2016) stated:
The claims here are unlike the claims in Enfish. There, we relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas” (in Alice, as in so many other § 101 cases, the abstract ideas being the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices). Enfish, 822 F.3d at 1335-36; see Alice, 134 S. Ct. at 2358-59. That distinction, the Supreme Court recognized, has common-sense force even if it may present line-drawing challenges because of the programmable nature of ordinary existing computers. In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36; see Bascom, 2016 U.S. App. LEXIS 11687, 2016 WL 3514158, at *5; cf. Alice, 134 S. Ct. at 2360 (noting basic storage function of generic computer). The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. see Electric Power Group LLC v. Alstom SA, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) – emphasis added.
The claimed invention is not an improvement to computer technology or computer functionality. Rather, the claimed invention is applying a computer’s existing capabilities to implement a particular abstract idea. As in Electric Power Group, the focus of the claimed invention is not on an improvement in computers as tools but on improving an abstract idea (i.e., generating a composite asset) that uses computers as tools.
Step 2B
Applicant argues that the additional elements amount to “significantly more” than the abstract idea as the additional elements are not “well-understood, routine, conventional activity previously known to the industry” and, as such, satisfies Step 2B of the §101 Guidelines. See Arguments, pp. 23-25.
The Examiner respectfully disagrees.
First, claim limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a compute, (ii) simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, (iii) adding insignificant extra-solution activity to the judicial exception, or (iv) generally linking the use of the judicial exception to a particular technological environment or field of use. See MPEP §2106.05(I)(A).
Examiner asserts that the additional claim element(s) amount to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer not (ii) simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. As such, no analysis under Berkheimer is necessary, as Berkheimer analysis pertains to whether appended activities constitute “well-understood, routine, conventional activities previously known to the industry.”
§103 Rejection
Applicant argues that the previously asserted prior art (Lipton and Newberg) fails to teach or suggest the claimed invention. See Arguments, pp. 25-33.
Specifically, Applicant argues:
In response to arguments from the December 2025 Response that Lipton's object avatar image is created by a brand owner or manufacturer rather than by the user who owns the entities, the Office Action responds here that "[t]he brand owner or manufacturer is the user (i.e., the owner of the entities)." [Office Action, p. 13]. However, the Office Action's equation of the brand owner or manufacturer with the claimed "user" is foreclosed by Lipton itself. [Office Action, p. 13].
Lipton expressly distinguishes among a "user," a "brand owner," and a "manufacturer." Figure 1 depicts "USER 104" and "BRAND OWNER 114" as distinct entities. [Lipton, FIG. 1]. Lipton defines a user avatar as "a graphical digital representation of a human user" [Lipton 39], while separately defining a "brand owner" as "a legal entity who owns the trademark and brand for real-world assets" and a "manufacturer" as "a legal entity that manufactures physical goods" [Lipton 41]. Lipton distinguishes the "asset issuer" - which "makes singularity assets and duality assets available to buyers," and which "a brand owner can be" - from those buyers [Lipton ¶ 37], and confirms that the object avatar's creator is not its owner: a buyer "can obtain a copy of the object avatar image file directly from the brand owner or manufacturer that originally created the object avatar image" [Lipton ¶ 63; see also ¶ 40]. The interpretation of "user" on which the rejection depends thus appears nowhere in Lipton and contradicts Lipton's express definitions. See Arguments, pp. 26-27.
The Examiner respectfully disagrees.
As a preliminary matter, Lipton does not provide “express definitions” for the terms - user, brand owner or manufacturer. Lipton utilizes the terms in context. Lipton provides examples.
Examiner notes that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. See MPEP §2123(II), citing In re Susi, 169 USPQ 423, 426 (CCPA 1971).
Regardless, the claims, as written, recite that the user owns the entities.
As noted by the Applicant, Lipton discloses a brand owner. By definition, a brand owner owns the brands (i.e., the entities). As such, the brand owner is the user.
As noted by the Applicant, Lipton discloses a buyer obtaining a copy of the object avatar image (i.e., digital asset) from the brand owner. If a buyer is buying a copy of the object avatar image (i.e. digital asset) from the brand owner, the brand owner owns the object avatar image (i.e., digital asset) prior to it being sold. As such, the brand owner is the user.
Even if Applicant’s assertions were correct, which the Examiner refutes, and Lipton splits the functions of the claimed invention among different parties (i.e, the user, the brand owner and the manufacturer), t would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Lipton by integrating component claim elements (i.e., the user, the brand owner and the manufacturer) contained in Lipton into one integrated claim element (i.e., the user) wherein each component claim element continues to serve the same function. In the integration, each component claim element, would merely have performed the same function as it did previously, and one of ordinary skill in the art at the effective filing date of the invention would have recognized that the results of the integration were predictable. see MPEP §2144.04 (VI)(B).
Applicant further argues:
As previously argued, Lipton's object avatar image is created by a brand owner or manufacturer and does not represent entities owned by a user. The Office Action does not cure this deficiency; its response - that the brand owner or manufacturer "is" the user - merely doubles down on the very construction Lipton forecloses. [Office Action, p. 13]. The Office Action further asserts that a brand owner "is the owner of the virtual object (i.e., entity) until they sell the virtual object (i.e., entity) to another user." [Office Action, p. 13]. However, that theory describes two successive parties: the issuing brand owner and the subsequent buyer. A single "user" who both owns the entities and whose affinity the composite image reflects is not described. See Arguments, p. 27 – emphasis added.
The Examiner respectfully disagrees.
Lipton recites:
In some examples, a venue avatar is a graphical digital representation of a contained space (in 2-dimensions or 3-dimensions) used within a metaverse. A venue avatar controller is a person or entity controlling a venue avatar within a metaverse. In some examples, an event-avatar is a graphical digital representation of a time-bound event or happening in the metaverse. In some examples, a branded event-avatar is an event-avatar that is associated with a given brand, brand owner, and venue. In some examples, personal object avatars include object avatars created by a user and which may not bear a formal brand or trademark. In some examples, a branded object avatar includes an object avatar that is created by a brand owner (or manufacturer or other entity) who issued an asset (e.g., a singularity or duality asset) bound to that avatar graphical digital representation. A branded object avatar sometimes can be associated with one or more registered trademarks or other intellectual property of a brand owner. In some examples, a metaverse branded asset includes a metaverse asset that is issued by a brand owner and is associated with the brand value of that brand owner. In the metaverse, the branded asset can be represented by a branded object avatar bearing the graphical symbols (e.g., a trademark logo) of the brand. A given metaverse branded asset is cryptographically bound to the asset instance. In some examples, a branded venue avatar includes a venue avatar that is created by a venue owner as a business legal entity. The venue owner controls who can access (e.g., enter) the contained space within a metaverse. See para. 40 – emphasis.
Lipton discloses a method wherein the brand owner (i.e., the user) owns one or more trademarks (i.e., entities). (see para. 40).
If the composite image is a branded object avatar, then the composite image reflects the affinity (i.e., the relationship) of the user (i.e., brand owner) to the entities (i.e., the brands).
Examiner notes that the claim, as written, is directed toward the message to be conveyed or the meaning to be perceived by a human reader independent of the functions performed by the intended computer system.
Applicant further argues:
Lipton's object avatar does not correspond to the claimed composite image. Lipton's object avatar is a graphical facsimile of a single physical object, created by a brand owner or manufacturer as a product for sale. [Lipton ¶¶ 39, 40, 45, 46, 52]. It depicts one object; it does not summarize a collection of entities, and it does not reflect a user's affinity. See Arguments, p. 30.
The Examiner respectfully disagrees.
Lipton recites:
In some examples, a venue avatar is a graphical digital representation of a contained space (in 2-dimensions or 3-dimensions) used within a metaverse. A venue avatar controller is a person or entity controlling a venue avatar within a metaverse. In some examples, an event-avatar is a graphical digital representation of a time-bound event or happening in the metaverse. In some examples, a branded event-avatar is an event-avatar that is associated with a given brand, brand owner, and venue. In some examples, personal object avatars include object avatars created by a user and which may not bear a formal brand or trademark. In some examples, a branded object avatar includes an object avatar that is created by a brand owner (or manufacturer or other entity) who issued an asset (e.g., a singularity or duality asset) bound to that avatar graphical digital representation. A branded object avatar sometimes can be associated with one or more registered trademarks or other intellectual property of a brand owner. In some examples, a metaverse branded asset includes a metaverse asset that is issued by a brand owner and is associated with the brand value of that brand owner. In the metaverse, the branded asset can be represented by a branded object avatar bearing the graphical symbols (e.g., a trademark logo) of the brand. A given metaverse branded asset is cryptographically bound to the asset instance. In some examples, a branded venue avatar includes a venue avatar that is created by a venue owner as a business legal entity. The venue owner controls who can access (e.g., enter) the contained space within a metaverse. See para. 40 – emphasis.
Lipton discloses a method wherein the one object summarizes a collection of entities (i.e., trademarks) and reflects a user’s (i.e., brand owner’s) affinity (i.e., relationship or connection) to the entities (i.e., trademarks). (see para. 40).
Applicant further argues:
The Office Action's contrary reasoning misreads Lipton. A "duality asset" is not "two assets"; it is a single object that exists in two realms - a metaverse object avatar bound to its one real-world counterpart. [Lipton ¶¶ 36, 54]. Its object avatar therefore depicts a single object, not a summary of multiple entities. See Arguments, p. 30.
The Examiner respectfully disagrees.
Lipton discloses a method wherein a single composite object depicts two objects, a metaverse object and a real-world object.
Lipton recites:
FIG. 5 is a diagram illustrating a cross-metaverse double-spend scenario in which a duality-asset is sold twice in different metaverses according to some examples. In FIG. 5, a user 500 (e.g., a human user) owns a duality asset, consisting of the physical real-world asset 502 (e.g., a branded handbag) and its matching object avatar 504. The object avatar 504 is shown to exist in both a metaverse 506A and a metaverse 506B simultaneously (illustrated by lines the labeled “a” and labeled “b”, respectively, showing its use in connection with each of user avatar 510 and user avatar 512 in the respective metaverses), although both instances of the object avatar pertain to the same single physical real-world asset 502 (illustrated by lines the labeled “c” and labeled “d”, respectively). See para. 76.
Lipton discloses a method wherein a single composite object depicts two digital objects, a metaverse A object and a metaverse B object.
The Applicant further argues:
Applicant previously argued that Lipton's object avatar image "does not represent entities owned by a user" but instead "represents a real world object created by a brand or manufacture[r]." [December 2025 Response, p. 15]. The Office Action does not cure this deficiency. Its reliance on Lipton 131 shows only that a user may "wield" or "show off' the object avatars of assets the user already owns - not that a composite image is generated to summarize those entities or reflect the user's affinity. [Lipton 131]. The Office Action's remaining assertions - that any duality-asset image "summarizes the entities" and that "[o]wnership ... reflects an affinity" - merely re-label Lipton's single- object avatar with the claim's words, without support in Lipton. [Office Action, p. 13]. Indeed, Lipton's object avatar does not itself perform the claimed summarizing and affinity-reflecting function. See Arguments, p. 31.
The Examiner respectfully disagrees.
Examiner asserts that the Applicant is narrowly interpreting the broad claim language.
Under the broadest reasonable interpretation, summarizing means to express something concisely, usually by a reduction in size (e.g., a page of information can be summarized in a one sentence synopsis). If one composite image is generated to represent multiple entities, that image is, by definition, a summary. It is not generating two images, each representing one entity, it is generating one image representing two entities.
Under the broadest reasonable interpretation, an affinity is an expression of a relationship or connection with an item (e.g., I have an affinity for the color blue). If a user has a composite image pertaining to entities, that composite image reflects the user’s affinity (i.e., relationship or connection) to the entity via their ownership of an asset of said entity. If I own an image of X, I have an affinity for X.
Examiner once again notes that the claimed invention does not recite the computational steps performed by the system to generate the image. The claim, as written, recites what a human being would interpret from the generated image. Because “summarizes” and “reflects an affinity” are subjective assessments made by a human viewer, virtually any composite image could satisfy this limitation under the broadest reasonable interpretation.
Applicant further argues:
The Specification's own usage confirms that correlated entities are described in terms of "interests, preferences, and/or a personality of the individual users" [Specification as filed, ¶ 3], illustrating that affinity is addressed in the Specification in terms distinct from the bare fact of legal ownership recited in Lipton. The Office Action's equation of the two is accordingly unsupported, and Lipton does not teach or suggest a composite image that "reflects an affinity of the user toward the entities," as recited in claim. See Arguments, 31.
The Examiner respectfully disagrees.
Although the argued elements are found in the specification, they were not claimed explicitly in the disputed claim(s). Nor were the words that are used in the claims defined in the specification to require these limitations. A reading of the specification provides no evidence to indicate that these limitations must be imported into the claims to give meaning to disputed terms. Therefore, although the claims are interpreted utilizing the broadest reasonable interpretation, in light of the specification, limitations from the specification are not read into the claims. See MPEP §2111 and §2111.01.
Applicant further argues:
In the alternative, and without conceding the sufficiency of the mapping addressed above, Applicant submits that the Office Action has not articulated a sufficient rationale to combine Lipton and Newberg. An obviousness rejection must include "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." [KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007)]. Lipton is directed to consistency management for singularity and duality assets across metaverse realms involving brand owners, manufacturers, and depository entities. [Lipton, Abstract]. Newberg is directed to a single user's interaction with an augmented reality effect within one application, generating and modifying a digital asset tied to that user's identifier. [Newberg, Abstract]. The Office Action's stated rationale for combining the two, that a wallet address may be "used" as "a user identifier," does not explain why a person of ordinary skill in Lipton's decentralized, multi-realm asset ecosystem would look to Newberg's single-application augmented reality system for that teaching, nor does it identify any problem in Lipton that Newberg's teaching is said to solve. [Office Action, p. 8]. Applicant reserves the right to further address the sufficiency of the Office Action's combination rationale. See Arguments, p. 32.
The Examiner respectfully disagrees.
As a preliminary matter, MPEP §2141.01(a) recites:
A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention).
Examiner asserts that based upon common sense, the field(s) of the reference(s) and/or the problem the inventor was concerned about, that the cited prior art reference(s) would have been utilized by a skilled artisan in the art, as all prior art reference(s) relate to retrieving information from and storing information in a distributed ledger.
Additionally, Lipton discloses a system reading information pertaining to digital assets from addresses on a decentralized ledger. (see abstract). Lipton does not teach a system wherein the addresses correspond (i.e., are associated with) a digital wallet.
Newberg discloses a system reading and writing information pertaining to digital assets from and to a distributed ledger. (see fig. 4; para. 18 and 19).
Newberg discloses a system wherein the user identifier on the decentralized ledger (blockchain) corresponds with a digital wallet (see para. 43).
Newberg discloses utilizing user identifiers (e.g., wallet addresses) to verify that “the requests to access, generate, modify, transfer, delete, [the digital assets] originate from an authorized user.” See para. 42.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lipton by incorporating a wallet address, as disclosed by Newberg, to verify “the requests to access, generate, modify, transfer, delete [the digital assets] originate from an authorized user.” (see Newberg, para. 42).
8. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RYAN D. DONLON can be reached on (571)270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 September 8, 2026
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