DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013 is being examined under the AIA first inventor to file provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/20/2026 has been entered.
Status of Claims
The following is a Non-Final Office Action in response to Applicant’s amendments filed on 05/20/2026.
a. Claims 1, 2, 7-8 are amended
Overall, Claims 1-14 are pending and have been considered below.
Priority
The application claims priority to provisional application 63/359,114, filed on 07/07/2022. The priority is acknowledged.
Claim Objections
Claim 2 objected to because of the following informalities: Claim 2, recites "with an other slot", should read "with another slot". Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112 (f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112 (f). is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112 (f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112 (f). is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112 (f). except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112 (f). except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “slot configured to” in claim 1, claim 7.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112 (f). it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112 (f). applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112 (f).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1–14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As noted above, claims 1 and 7 each recite an element that invokes interpretation under 112(f), the “slot configured to receive.” Under this interpretation, applicant is required to disclose and clearly link the material, structure, or acts that correspond to the “slot configured to receive a private portable device.” Upon review the specification, the examiner is unable to identify disclosure of clearly linked corresponding structure for “receive a private portable device.” Accordingly, applicant has failed to show possession of the “slot configured to receive a private portable device.”
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 1-14 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 limitation “slot configured to receive a private portable device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Applicant's specification filed on 07/07/2023 devoid of any structures or how "slot" performs the function. The applicant's drawing filed on 07/07/2023 does not recite the structure for "slot" or how it functions. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 101
35 USC 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 1-14 are rejected under 35 USC 101 because the claimed invention is not directed to patent eligible subject matter. The claimed matter is directed to a judicial exception, i.e. an abstract idea, not integrated into a practical application, and without significantly more.
Per Step 1 of the multi-step eligibility analysis, claims 1-6, 13 are directed to a system, claims 7-12, 14 are directed to a computer implemented method.
Thus, on its face, each independent claim and the associated dependent claims are directed to a statutory category of invention.
Per Step 2A.1. The limitations of independent claim 1 (which is representative of Claim 7) shown in bold recite an abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below.
[A] A system configured to implement attributes that define a personality entity associated with a digital asset via a physical object, the system comprising:
[B] a physical object configured to exemplify an attribute, the attribute including at least one of a physical attribute or a behavioral attribute, wherein the physical object includes:
[C] a transmitter-receiver configured to communicate and receive information;
[D] a sensor configured to generate an output signal that convey use of the physical object by a user;
[E] a slot configured to receive a private portable device that stores a private key, wherein the private key provides access to a digital wallet that is associated with an address on a decentralized ledger, wherein the digital wallet indicates ownership of a digital asset that associated with the attribute; and
[F] one or more processors configured by machine-readable instructions to:
[G] determine the attribute associated with the digital asset;
[H] receive the output signal from the sensor;
[I] determine interaction information based on the output signal, wherein the interaction information includes one or more of vocal communication by the user with the physical object, physical touch by the user with the physical object a change in location of the physical object, or a change in position of the physical object;
[J] determine, based on the decentralized ledger and the address, a change in ownership of the digital asset, wherein the change in ownership is caused by one or both of acquisition of another digital asset associated with the attribute relinquishment of the digital asset;
[K] determine an adjustment to the attribute based on the interaction information and the change in ownership;
[L] effectuate the adjustment to the attribute;
[M] transmit the adjustment to the physical object via the transmitter- receiver such that the physical object implements the adjustment to the attribute;
[N] receive an indication that the private portable device decoupled from the slot; and
[O] initiate, responsive to the indication, a wrap smart contract that is configured to link an ownership right to the digital asset in the digital wallet into a packaged digital asset such that the ownership to the digital asset in the digital wallet at the time of the indication is required to be held by a same user, wherein the digital wallet indicates ownership of the packaged digital asset.
Claim 1 (which is representative of claim 7) recites: a system that implements attributes on physical object ([A]-[B]); stores private key to access wallet ([E]); determining attributes, interaction information, change in ownership ([G], [I]-[J]); determining an adjustment and transmitting the adjustment ([K]-[M]); receiving an indication, linking ownership of the asset ([N]-[O]) determining interaction information ([I]); determining changes in ownership ([J]); determining the adjustments of attributes ([K]); effectuate and transmit the adjustment to the physical object ([L]-[M]), which, based on the claim language and in view of the application disclosure, represents a process aimed at managing, adjusting, and transferring ownership rights of asset(s).
The overall combination, covers agreement in the form of sales activities or behaviors, business relationships (e-commerce) because the claim language recites recording asset’s interaction, linking ownership, and changing ownership of asset. The one of skill in the art can determine that assets are being traded. Additionally, the recited limitation above falls under Certain Methods of Organizing Human Activity, i.e., Commercial or Legal Interactions grouping of abstract ideas (see MPEP 2106.04(a)(2)).
Accordingly, it is reasonable to conclude that claim 1 (which is representative of claim 7) recites an abstract idea that represents a judicial exception.
Per Step 2A.2. The identified abstract idea is not integrated into a practical application because the additional elements in the independent claims only amount to instructions to apply the judicial exception to a computer, or are a general link to a technological environment (see MPEP 2106.05(f); MPEP 2106.05(h)). For example, the added elements “digital,” “processor,” “transmitter-receiver,” and “sensor,” “slot,” “private portable device,” “decentralized,” “user” recite computing elements at a high level of generality, which is equivalent to instructions to implement the abstract idea “by a computer” or “on a computer.” The additional elements do not preclude from carrying out the identified abstract idea of for managing, adjusting, and transferring ownership rights of asset(s). Therefore, those additional elements do not serve to integrate the identified abstract idea into practical application.
The additional elements in the independent claims, shown not bolded above, recite: a transmitter-receiver configured to communicate and receive information ([C]), a sensor configured to generate output signals … by a user ([D]), one or more processors configured by machine-readable instructions to ([F]), receive the output signal from the sensor ([H]), digital ([A], [E], [G], [J], [O]), slot ([E], [N]), private portable device ([E], [N]), decentralized ([E], [J]), user ([D], [I], [O]). When considered individually, they amount to nothing more than reception, transmission and/or general computation (i.e., not specific enough computation) of claim elements that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea.
Therefore, the additional elements of claim 1 (which is representative of claim 7) do not integrate the identified abstract idea into a practical application and the claims remain a judicial exception.
Per Step 2B. Claim 1 (which is representative of claim 7) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Therefore, when considered as a whole and as an ordered combination, the additional elements in the claim amount to instructions to apply the abstract idea on a computer. Moreover, as noted above, there is nothing the computing and additional elements (limitations [A]-[J], [N]-[O]), that is significant or meaningful to the underlying abstract idea because the identified abstract idea of for managing, adjusting, and transferring ownership rights of asset(s) could have been reasonably performed when provided with the relevant data and/or information. Therefore, it is concluded that independent claim 1, (which is representative of claim 7) deemed ineligible.
Dependent Claims: Claims 2-6, 13, 8-12, 14 are analyzed for subject matter eligibility. However, these claims fails to recite patent eligible subject matter for following reasons:
Claim 2 (which is a representative of claim 8), shown in bold recites an abstract ideas as explained in MPEP 2106.04(a). The non-bolded claim elements recites additional elements addressed further below.
[A] wherein coupling of the private portable device with the slot of another physical object effectuates the attributes in the other physical object.
The claim further recites the abstract idea of managing, adjusting, and transferring ownership rights of asset(s). In other words, it recites limitation grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP 2106.05(f)).
Claim 3 (which is a representative of claim 9), shown in bold recites an abstract ideas as explained in MPEP 2106.04(a). The non-bolded claim elements recites additional elements addressed further below.
[A] wherein the set of sensor includes one or more of an audio input sensor, a pressure sensor, a location sensor, or and/or a light sensor.
The non-bolded additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP 2106.05(f)). Although the claim lists several types of sensors, the function performed by the sensors is gathering data for performance of the abstract idea. There are no specifics about how each type of sensor is particularly used in that data gathering process and therefore it provides only a general link to a technological environment and does not integrate the abstract idea into a practical application.
Claim 4 (which is a representative of claim 10), shown in bold recites an abstract ideas as explained in MPEP 2106.04(a). The non-bolded claim elements recites additional elements addressed further below.
[A] wherein the attribute includes one or more of an eye color, a voice, one more phrases, one or more movements, a skin or one or more sound effects.
The claim further recites the abstract idea of managing, adjusting, and transferring ownership rights of asset(s). In other words, it recites limitation grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP 2106.05(f)).
Claim 5 (which is a representative of claim 11), shown in bold recites an abstract ideas as explained in MPEP 2106.04(a). The non-bolded claim elements recites additional elements addressed further below.
[A] wherein the attribute is recorded in electronic storage, the electronic storage is separate from the decentralized ledger, and wherein the one or more processors are further configured by the machine-readable instructions to communicate with the electronic storage.
The claim further recites the abstract idea of adjusting and trading asset. In other words, it recites limitation grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP 2106.05(f)).
Claim 6 (which is a representative of claim 12), shown in bold recites an abstract ideas as explained in MPEP 2106.04(a). The non-bolded claim elements recites additional elements addressed further below.
[A] wherein the attribute is recorded in electronic storage, the electronic storage is the decentralized ledger such that the adjustment to the attribute is recorded on the decentralized ledger.
The claim further recites the abstract idea of storing attributes. In other words, it recites limitation grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP 2106.05(f)).
Claim 13 (which is a representative of claim 14), shown in bold recites an abstract ideas as explained in MPEP 2106.04(a). The non-bolded claim elements recites additional elements addressed further below.
[A] wherein the physical object comprises an action figure, a stuffed animal, a toy vehicle, or a portable computing device.
The claim further recites the abstract idea of managing, adjusting, and transferring ownership rights of asset(s). In other words, it recites limitation grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP 2106.05(f)). The nature of the physical object has no impact on the
When the dependent claims are considered as a whole, as an ordered combination, the claim elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense, i.e., a computer receives information from another computer, processes that information and then sends a response based on processing results. 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. The fact that the computing devices are facilitating the abstract concept is not enough to confer subject matter eligibility. Overall, the further elements do not confer subject matter eligibility to the invention since their individual and combined significance are not changing the nature of 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. (See MPEP 2106.05).
In sum, Claims 1-14 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 non-obviousness.
Claims 1-4, 6-10, 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Pulier (US 20220043557 A1), in view of Koch (US 20220215361 A1), in further view of Jessamine (US 20190066063 A1), in further view of Burton (US 20210023468 A1)
Regarding Claims 1, 7. Pulier discloses:
A system configured to implement attributes that define a personality entity associated with a digital asset … the system comprising: [see at least (0027) third party system to determine the current attributes of a virtual object, and the method of making changes to these virtual objects such that their new state can be understood by other interpreters.]
… exemplify an attribute, the attribute including at least one of a physical attribute or a behavioral attribute … [see at least (0038) Virtual object platform 130 can include tools and programs that can be used by the providers to create the virtual objects by establishing characteristics, evolutionary rules, software code, and attributes of the virtual objects.]
wherein the private key provides access to a digital wallet that is associated with an address on a decentralized ledger, wherein the digital wallet indicates ownership of a digital asset that associated with the attribute; and [see at least (0045) Once created, the virtual objects can be distributed to users, such as by being added to a user's digital account, which may be referred to as a digital wallet or garage) (reads on: virtual object being the digital asset and digital wallet stores the ownership information of the digital object]
determine, based on the decentralized ledger and the address, a change in ownership of the digital asset, wherein the change in ownership is caused by one or both of acquisition of another digital asset associated with the attribute relinquishment of the digital asset; [see at least Fig. 7, (0092) By selecting any one of the cards, the application will allow the user to transfer ownership to another user (e.g., using an interface such as the one shown in 11F). The ownership transfer is recorded and tracked.]
determine an adjustment to the attribute based on the interaction information and the change in ownership; [see at least Figs. 5-6, (0065) When determination operation 530 determines that a modification is authorized, determination operation 530 branches to modification operation 540 to modify the state of the virtual object. The modified state information is recorded with the blockchain system with recordation operation 550.]
effectuate the adjustment to the attribute; [See at least (0066) access operation 610, the application can retrieve one or more of the virtual objects from platform 130 and present them to the user. During request operation 620, the application receives a request form the user, via the application, for a real world push of one of the virtual objects, such as a request to redeem a virtual object for a real-world item (i.e., money or goods) or a service.]
transmit the adjustment to … implements the adjustment to the attribute; [see at least (0034) virtual object platform 130 or other portable electronic devices by transmitting and receiving wireless signals using licensed, semi-licensed or unlicensed spectrum over communications network 120. (0091) the owner may use the consumer application to generate a real world push which can be accessed by a business application that will validate and update ownership via the block chain system (reads on: transmitting the real world push of the object)]
… wherein the digital wallet indicates ownership of the packaged digital asset. [see at least (0045) Once created, the virtual objects can be distributed to users, such as by being added to a user's digital account, which may be referred to as a digital wallet or garage) (reads on: virtual object being the digital asset and digital wallet stores the ownership information of the digital object)]
Pulier discloses managing digital asset, however, Pulier does not disclose:
a physical object configured to exemplify … wherein the physical object includes: a transmitter-receiver configured to communicate and receive information;
a sensor configured to generate an output signal that convey use of the physical object by a user;
a hardware coupler configured to couple the … with a private portable device that stores a private key,
one or more processors configured by machine-readable instructions to: determine the attribute associated with the digital asset;
receive the output signal from the sensor;
determine interaction information based on the output signal, wherein the interaction information includes one or more of vocal communication by the user with the physical object, physical touch by the user with the physical object a change in location of the physical object, or a change in position of the physical object
receive an indication that the private portable device decoupled from the hardware coupler; and
initiate, responsive to the indication, a wrap smart contract that is configured to link an ownership right to the digital asset in the digital wallet into a packaged digital asset such that the ownership to the digital asset in the digital wallet at the time of the indication is required to be held by a same user…
Nonetheless, Koch discloses decentralized ledger ownership and smart contract discloses ledger storing data:
one or more processors configured by machine-readable instructions to: determine the attribute associated with the digital asset; [(0003) The decentralized ledger server may include one or more processors configured by machine-readable instructions. The decentralized ledger server may be configured to record, on the blockchain, rights pertaining to digital assets. The recorded rights may reflect ownership of a first digital asset by the first user. (reads on: the ledger stores ownership information about the asset)]
initiate, responsive to the indication, a wrap smart contract that is configured to link an ownership right to the digital asset in the digital wallet into a packaged digital asset such that the ownership to the digital asset in the digital wallet at the time of the indication is required to be held by a same user… [see at least (0039) record component 134 may be configured to obtain asset-specific rights (e.g., ownership rights, distribution rights, and/or other rights) for particular digital assets. In some implementations, record component 134 may be configured to access blockchain 111 a to obtain the asset-specific rights (that are recorded on blockchain 111 a, e.g., in one or more smart contracts). (0046) The distributed computing platform and/or the virtual machine may form a runtime environment for smart contracts and/or other executable code. In some implementations, the distributed computing platform may include electronic storage configured to store part or all of blockchain 111 a. The smart contracts may be stored on blockchain 111 a. (0049) blockchain 111 a may register transactions that modify ownership (and/or other rights) pertaining to digital assets. A smart contract may implement a (type of) digital asset.]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Pulier to include the features of Koch. A person with the ordinary skill in the art would have been motivated to combine Pulier’s digital object system with the teachings of decentralized ledger and smart contract ownership transfer in Koch to provide a verifiable mechanism for recording, determining and transferring ownership rights of digital assets. Pulier discloses asset being stored in a wallet. Koch teaches blockchain based technique for tracking asset. Accordingly, the claimed subject matter is obvious over Pulier/Koch.
The combination of Pulier in view of Koch discloses managing and transferring ownership rights of digital asset. However, the above combination of Pulier, Koch does not expressly disclose:
a physical object configured to exemplify … wherein the physical object includes: a transmitter-receiver configured to communicate and receive information;
a sensor configured to generate an output signal that convey use of the physical object by a user;
a hardware coupler configured to couple the … with a private portable device that stores a private key,
receive the output signal from the sensor;
determine interaction information based on the output signal, wherein the interaction information includes one or more of vocal communication by the user with the physical object, physical touch by the user with the physical object a change in location of the physical object, or a change in position of the physical object
receive an indication that the private portable device decoupled from the hardware coupler; and
However, Jessamine discloses:
hardware coupler configured to couple the individual … with a private portable device that stores a private key, wherein the private key provides access to a digital wallet that is associated with an address on a decentralized ledger … [(0397) The encrypted content 651 is encrypted using a public-private key pair generated and supplied by identity server 206, which is specific to the device on which the SID is created (such as user device 202)]
receive an indication that the private portable device decoupled from the hardware coupler; and [see at least (0202) if the mobile computing device is removed from proximity to “A”, then the mobile computing, device may no longer be authenticated to “A”, Similarly, if the mobile computing device is no longer within range of the “A” to use one of the above referenced transport mediums, the mobile computing device may no longer be authenticated to “A”.]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Pulier, in view of Koch to include the features of Jessamine. A person with the ordinary skill in the art would have been motivated to combine Pulier in view of Koch’s system for tracking asset with cryptographic keys of Jessamine to provide secure access to the digital wallet. Pulier, in view of Wager discloses asset being stored in a wallet. Jessamine teaches generating cryptographic keys. Accordingly, the claimed subject matter is obvious over Pulier, Koch/Jessamine.
The combination of Pulier in view of Koch, in further view of Jessamine discloses managing digital asset with secure key access. However, the above combination of Pulier, Koch, Jessamine does not expressly disclose:
a physical object configured to exemplify … wherein the physical object includes: a transmitter-receiver configured to communicate and receive information;
a sensor configured to generate an output signal that convey use of the physical object by a user;
receive the output signal from the sensor;
determine interaction information based on the output signal, wherein the interaction information includes one or more of vocal communication by the user with the physical object, physical touch by the user with the physical object a change in location of the physical object, or a change in position of the physical object
However Burton discloses:
a physical object configured to exemplify … wherein the physical object includes: a transmitter-receiver configured to communicate and receive information; [(0029) In some embodiments, the utilization of both the light emitter/transmitter, the light receiver/detector and the wireless communication transceiver allows for different tasks to be performed by light emitter/transmitter and receiver/detector as compared to the wireless communication transceiver.]
a sensor configured to generate an output signal that convey use of the physical object by a user; [(0059) a toy robotic device may first initialize its assemblies and/or components, e.g., accelerometers, gyroscopes, sensors, and/or one or more processors (along with other components). In some embodiments, the toy robotic device may look or search for infrared signals utilizing its infrared sensors or receivers.]
determine interaction information based on the output signal, wherein the interaction information includes one or more of vocal communication by the user with the physical object, physical touch by the user with the physical object a change in location of the physical object, or a change in position of the physical object; [(0039) the one or more gyroscopes and/or accelerometers 130 may be combined to allow tracking of movement of the toy robotic device and/or may also be utilized to identify a position or location of the toy robotic device. (reads on: location of the physical object)]
receive the output signal from the sensor; [(0078) the other toy robotic devices may determine a direction 630 of the received or sensed infrared signal is received from or came from based on which infrared receivers or sensors on the toy robotic device detected and/or received the transmitted digital infrared signal.]
… the physical object via the transmitter- receiver such that the physical object implements the … attribute; [see least (0039) the toy robotic device may comprise one or more gyroscopes and/or one or more accelerometers 130 to monitor and/or measurement acceleration and/or direction of the toy robot device 100.]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Pulier, in view of Koch, in further view of Jessamine to include the features of Burton. A person with the ordinary skill in the art would have been motivated to combine Pulier, in view of Koch, in further view of Jessamine’s system for tracking digital asset with the sensors in Burton to provide mechanism for adjusting attributes associated with digital asset based on user interaction. Pulier, in view of Koch, in further view of Jessamine discloses asset being stored in a wallet. Burton teaches physical object with physical attribute. Accordingly, the claimed subject matter is obvious over Pulier, Wager, Jessamine/Burton.
Regarding Claims 2, 8. Pulier, Koch, Jessamine, Burton discloses the limitations of Claims 1, 7. Pulier further discloses:
effectuates exemplification of the attributes associated with the packaged digital asset. [(0038) Virtual object platform 130 can include tools and programs that can be used by the providers to create the virtual objects by establishing characteristics, evolutionary rules, software code, and attributes of the virtual objects.]
However the above combination of Pulier, in view of Koch, in further view of Jessamine in view of Burton does not disclose (in italics) wherein coupling of the private portable device with the hardware coupler of another physical object effectuates exemplification of the attributes associated with the packaged digital asset. In other words, the above combination teaches the result of what is effectuated but not the trigger that leads to that result.
Nonetheless, Burton further discloses:
wherein coupling of the private portable device with the hardware coupler of another physical object [(0039) the toy robotic device may comprise one or more gyroscopes and/or one or more accelerometers 130 to monitor and/or measurement acceleration and/or direction of the toy robot device 100.]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Pulier, in view of Koch, in further view of Jessamine, in further view of Burton to include the additional features of Burton. A person with the ordinary skill in the art would have been motivated to combine Pulier, in view of Koch, in further view of Jessamine’s system for tracking digital asset with the sensors in Burton to provide mechanism for adjusting attributes associated with digital asset based on user interaction. Pulier, in view of Koch, in further view of Jessamine discloses asset being stored in a wallet. Burton further teaches physical object with physical attribute.
Regarding Claims 3, 9. Pulier, Koch, Jessamine, Burton discloses the limitations of Claims 1, 7. Burton further discloses:
wherein the set of sensor includes one or more of an audio input sensor, a pressure sensor, a location sensor, or a light sensor. [see at least (0029) the utilization of both the light emitter/transmitter, the light receiver/detector and the wireless communication transceiver allows for different tasks to be performed by light emitter/transmitter and receiver/detector as compared to the wireless communication transceiver (reads on: light sensor). (0039) the utilization of both the light emitter/transmitter, the light receiver/detector and the wireless communication transceiver allows for different tasks to be performed by light emitter/transmitter and receiver/detector as compared to the wireless communication transceiver (reads on: location sensor).]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Pulier, in view of Koch, in further view of Jessamine, in further view of Burton to include the additional features of Burton. A person with the ordinary skill in the art would have been motivated to combine Pulier, in view of Koch, in further view of Jessamine’s system for tracking digital asset with the sensors in Burton to provide mechanism for adjusting attributes associated with digital asset based on user interaction. Pulier, in view of Koch, in further view of Jessamine discloses asset being stored in a wallet. Burton further teaches physical object with physical attribute.
Regarding Claims 4, 10. Pulier, Koch, Jessamine, Burton discloses the limitations of Claims 1, 7. Pulier further discloses:
wherein the attribute includes one or more of an eye color, a voice, one more phrases, one or more movements, a skin color, or one or more sound effects. [(0049) States module 225 within platform 130 maintains the state of the virtual objects. Examples of states can include ownership, aesthetic or visual properties (e.g., color, patterns, etc.), audio properties (e.g., sounds]
Regarding Claims 6, 12. Pulier, Koch, Jessamine, Burton discloses the limitations of Claims 1, 7. Pulier further discloses:
wherein the electronic storage is the decentralized ledger such that the adjustment to the attributes are recorded on the decentralized ledger. [(0065) When determination operation 530 determines that a modification is authorized, determination operation 530 branches to modification operation 540 to modify the state of the virtual object. The modified state information is recorded with the blockchain system with recordation operation 550.]
Regarding Claims 13, 14. Pulier, Wager, Jessamine, Burton discloses the limitations of Claims 1, 7. Burton further discloses:
wherein the physical object comprises an action figure, a stuffed animal, a toy vehicle, or a portable computing device. [see at least Fig. 1, (0028) robotic toy device that is able to efficiently communicate with other robotic toy devices, track other robotic devices position and/or engage in actions and operations (such as game play) with other toy robotic devices.]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Pulier, in view of Koch, in further view of Jessamine, in further view of Burton to include the additional features of Burton. A person with the ordinary skill in the art would have been motivated to combine Pulier, in view of Koch, in further view of Jessamine’s system for tracking digital asset with the sensors in Burton to provide mechanism for adjusting attributes associated with digital asset based on user interaction. Pulier, in view of Koch, in further view of Jessamine discloses asset being stored in a wallet. Burton further teaches physical object with physical attribute.
Claims 5, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Pulier, in view of Koch, in further view of Jessamine, in further view of Burton, as applied to claims [1, 7] above, further view of Cella (US 20220366494 A1).
Regarding Claims 5, 11. Pulier, Koch, Jessamine, Burton discloses the limitations of Claims 1, 7. Pulier further discloses:
… wherein the one or more processors are further configured by the machine-readable instructions to communicate with the electronic storage. [(0065) When determination operation 530 determines that a modification is authorized, determination operation 530 branches to modification operation 540 to modify the state of the virtual object. The modified state information is recorded with the blockchain system with recordation operation 550.]
The combination of Pulier, in view of Koch, in further view of Jessamine, in further view of Burton discloses managing asset. However, the above combination of Pulier, Wager, Jessamine, Burton does not expressly disclose:
wherein the electronic storage is separate from the decentralized ledger…
However, Cella discloses:
wherein the electronic storage is separate from the decentralized ledger… [see at least (0020) the term “distributed” may refer to multiple computing platforms located in multiple separate and distinct geographical locations operating together to provide particular functionality, such as, e.g., in the case of a particular distributed database. (0022) Asset component 108 may be configured to electronically store information in electronic storage 130. In some implementations, stored information may include information regarding one or more types of digital assets.]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Pulier, Koch, Jessamine, Burton to include the features of Cella. Pulier, Koch, Jessamine, Burton discloses asset being stored in a wallet. Cella teaches separate distributed ledger. Because Pulier, Koch, Jessamine, Burton as well as Cella are in the field of managing assets and the sperate ledger of Cella would be used the asset of Pulier, Koch, Jessamine, Wager to securely store the asset. Accordingly, the claimed subject matter is obvious over Pulier, Wager, Jessamine, Bruton/Cella.
Response to Amendments/Arguments
With respect to Applicant’s Remarks as to the claim interpretation 35 USC § 112(f).
Applicant submits: “The Office Action alleges the term "hardware coupler configured to" in claims 1 and 7 is interpreted under § 112(f) for allegedly using "a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier." [Office Action, p. 4]. Applicant disagrees - this term should not be interpreted as such at least because this feature would have been understood by a person having ordinary skill in the art at the time of filing as reciting sufficient structure. Nevertheless, solely to expedite prosecution, this term is deleted from the claims. The claims now recite "a slot." No new matter is added. At least for these reasons, the § 112(f) interpretation is moot.”
Examiner Responds: : Examiner has fully considered, but doesn’t find Applicant’s argument persuasive. Applicant can overcome the 35 USC 112(f) by amending or showing sufficient structure. Although applicant amended claims 1, 2, 7, 8 to recites “slot”; however, the applicant’s specification does not clearly link the corresponding structure of a “slot” sufficient for performing the claimed function of “receive a private portable device.” Thus, the claim interpretation of 35 USC 112(f) has been updated and maintained.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 101.
Applicant submits: “The Office Action alleges the claims are "directed to" an abstract idea, and that abstract idea is "enabling system for adjusting and trading asset." [Office Action, p. 7]. Thus, the Office Action is following the second of the "two ways" (copied above), by articulating a concept allegedly described by claim features. This position remains unchanged from the previous action. The Office Action relies on the grouping of "Certain Methods of Organizing Human Activity." [Office Action, p. 7]. In particular, the Office Action alleges "[t]he overall combination, covers agreement in the form of sales activities or behaviors, business relationships (e-commerce) because the claim language recites recording asset's interaction, linking ownership, and changing ownership of asset" and "[t]he one of skill in the art can determine that assets are being traded." [Office Action, p. 7]. Succinct Concept. This section of the September 2025 Response argued that the rejection is deficient because the identified concept is not semantically and/or grammatically correct, and thus could not serve as an identified exception alleged "recited" by the claims. [September 2025 Response, p. 14, subsection "a"]. Since the current Office Action continues to assert this same concept, these arguments are repeated and realleged as if presented verbatim herein. In response to these arguments, the Office Action provides 1) a blanket disagreement, 2) a characterization of what Applicant's arguments allegedly are and what they allegedly are not ("the applicant's argument is not directed towards the claim language, but it argues whether the abstract is grammatically correct"), and 3) an emphasis "that applicant is providing any explanation as to why the claim language does not recite an abstract idea." [Office Action, p. 33]. This supposed rebuttal is entirely non-responsive and procedurally deficient. Under MPEP § 2106.07(a), the burden is on the Office to provide a sufficiently "clear and specific" explanation as to why each claim is unpatentable. Applicant is not challenging the Office Action's grammar for the sake of linguistics; Applicant is challenging the Office Action failure to fulfill this legal duty. A concept that cannot be parsed for meaning, by definition, is not a "clear and specific" articulation of a judicial. exception. By failing to articulate a clear and specific target for traversal, the Office Action has failed to establish a prima facie case of ineligibility. Furthermore, the Office Action's purported responses fail to substantively answer Applicant's arguments. Merely disagreeing and providing a logically inconsistent statement (stating that Applicant is providing an explanation as to why the claim language does not recite an abstract idea?) constitutes a total failure of the Office Action's duty to provide a reasoned explanation. This is a clear violation of MPEP § 707.07(f), which mandates that the Office Action should "answer the substance" of presented arguments. Because the Office has ignored the substance of Applicant's traversal and failed to provide a clear and specific concept as the basis for the rejection, the § 101 rejection should be withdrawn. b. "Enabling System For Adjusting And Trading Asset" Is Overly Broad. This section of the September 2025 Response argued that the rejection is deficient because the identified concept is overly broad, and thus could not serve as an identified exception alleged "recited" by the claims. [September 2025 Response, pp. 14-15, subsection "b"]. Since the current Office Action continues to assert this same concept, these arguments are repeated and realleged as if presented verbatim herein. In response to these arguments, the Office Action provides 1) a blanket disagreement, 2) a characterization of what Applicant's arguments allegedly are and what they allegedly are not ("the applicant's argues the abstract idea is broad, however does not recite why the claim does not recite an abstract id"), and 3) an emphasis of the quoted phrase "relinquishment of asset" and parentheticals that state "trading away the asset" and "see claim 1 and 7." [Office Action, p. 34]. This supposed rebuttal is entirely non-responsive and procedurally deficient.”
Examiner responds: Examiner has fully considered applicant’s arguments, but the applicant’s arguments are not persuasive. Applicant first argues that the office action has not identified a clear abstract ide because the phrase “enabling system for adjusting and trading asset” is allegedly grammatically unclear and overly board. The examiner has re-assessed the claim eligibility, and has determine the claim 1, 7 as a whole recites the abstract idea of managing, adjusting, and transferring ownership rights of asset(s). These are derived from recited steps and function of determining an attribute associated with a digital asset, determining interaction information, determining change of ownership of the digital asset based on receiving or transferring of another digital asset, determining an adjustment to the attribute, transmitting the adjustment, and initiating a smart contract to link an ownership right to a packaged digital asset. These limitations describe commercial or legal interactions involving ownership, transfer and control of asset. Therefore, the claims recite an abstract idea failing within the “certain methods of organizing human activity” grouping.
Applicant submits: “This section of the September 2025 Response argued that the claims are directed to a concept different from what the Office Action has identified, as supported by the Specification as filed. [September 2025 Response, p. 15, subsection "c"]. These arguments are repeated and realleged as if presented verbatim herein. Applicant's asserted concept is "sensor-enabled toys and a system to manage attributes exemplified by the toys." This is a specific, accurate, and non-overgeneralized concept described by the amended claims. Applicant's asserted concept is supported by the disclosure and reflected in the claims. In response, the Office Action provides 1) a blanket disagreement, 2) a mischaracterization of Applicant's citations to the Specification, 3) a brief statement of supposed reasons why the claims do not amount to an improvement. [Office Action, p. 35]. The Office Action's dismissal of Applicant's asserted concept by stating that the supporting passages in the Specification as filed "recites the claim language" is logically and legally flawed. First, claims are always interpreted in light of the specification, and the cited paragraphs certainly include more language that an exact recitation of the claim language. [MPEP § 2106 II]. Second, a challenge as to the contents of the Specification is not a rebuttal or counter argument to Applicant's assertion that the claims are directed to Applicant's asserted concept. The Office Action refusal to acknowledge Applicant's asserted concept, let alone provide a reasoned counter-argument, renders the § 101 rejection unsustainable. d. If The Examiner Disagrees With Applicant's Asserted Concept, Explicit Reasons Of Why It Is Not The Concept Described By The Claims Should Be Provided. If, for whatever reason, the Examiner disagrees that Applicant's asserted concept is the concept described by the claims, the Office Action must give explicit reasons as to why the Office Action believes Applicant's asserted concept is not the concept described by the claims. These explicit reasons must be given separately from any assertions of a different concept identified in the Office Action and argued to be a concept described by the claims.”
Examiner response: Applicant argues that the claims should be characterized as directed to “sensor-enabled toys and a system to manage attributes exemplified by the toys.” Examiner does not find this argument persuasive because the independent claims are not limited to toys. The claims more broadly recite a “physical object” and functional components used to collect interaction information and manage a digital asset. Additionally, applicant’s specification on [0003] discloses, “Plush toys, action figures, dolls, and/or other objects that exemplify physical and/or behavioral attributes may be in possession of individuals for a period of time. During the period of time, the individuals may interact with the objects such as talk to them, play with them, travel with them, and/or other interactions that may contribute to wear and tear of the objects.” Based on the applicant’s specification, and under broadest reasonable interpretation, the description of physical objects are not limited to plush toys, action figures, dolls, and/or other objects that exemplify physical and/or behavioral attributes. This can include tools, workout equipment, recreational equipment, or digital devices/wearable devices (i.e., devices capable of exemplifying physical and/or behavioral attribute).” Thus, under broadest reasonable interpretation the claim language still recites managing and transferring ownership rights in a digital asset based on interaction information and a smart contract. The physical object as recited in the claim is used merely as a source of data in which the asset-management concept is implemented.
Applicant submits: “The Claims Are Applied With And/or Use One Or More Particular Machines. This section of the September 2025 Response argued that the rejection should be withdrawn because the recited "physical object" is a particular machine that imposes meaningful limits, and briefly outlined the factors to be analyzed under this consideration. [September 2025 Response, p. 16, subsection "2"]. The Office Action does not challenge the restatement of the legal test, and is repeated and realleged as if presented verbatim herein. In response to Applicant's specific factor-by-factor analysis (which followed via separate subsections), the Office Action provides only a blanket disagreement followed by a lengthy explanation of why the claimed invention allegedly does not improve the functioning of a computer or other technology. [Office Action, pp. 36-37]. This response is entirely non-responsive and procedurally deficient. Under MPEP § 2106.05(b), the "particular machine" factor is a distinct and independent pathway for showing that a claim integrates an abstract idea into a practical application. Instead of addressing whether the hardware configuration of the "physical object" (e.g., the specific interaction between the hardware coupler and the portable device for secure ledger authentication) imposes meaningful limits, the Office Action shifted to a completely separate improvement-related analysis.”
Examiner response: The applicant argues the recited physical object is a particular machine. However, as shown above, under broadest reasonable interpretation, “physical object” is not a “particular machine”. Additionally, the applicant argues “the Office Action provides only a blanket disagreement followed by a lengthy explanation of why the claimed invention allegedly does not improve the functioning of a computer or other technology.” However, the office does not require examiners to evaluate every 2A.2 consideration in determining eligibility but only those that are applicable to the underlying facts or claim.
Applicant submits: By diving into a generic "improvement" discussion and ignoring the "particular machine" factors, the Office Action has committed a clear violation of MPEP § 707.07(f). An examiner must "answer the substance" of the arguments presented. Changing the subject to a different legal test does not constitute a "response." The dismissal of the "particular machine" analysis reflects an improper foundation of the § 101 rejection. At least for this reason, the rejection should be withdrawn. a. The Physical Object Is Recited In The Claims With Particularity. This factor was argued on page 16, subsection "a" in the September 2025 Response, and is repeated and realleged as if presented verbatim herein. [September 2025 Response, p. 16, subsection "a"]. b. The Physical Object Is Integral In The Performance Of The Method Of Claim 7. This factor was argued on pages 16-17, subsection "b" in the September 2025 Response, and is repeated and realleged as if presented verbatim herein. [September 2025 Response, pp. 16-17, subsection "b"]. c. The Physical Object Imposes Meaningful Limits And Is Not Extra-Solution Activity Or A Field-Of-Use. This factor was argued on page 17, subsection "c" in the September 2025 Response, and is repeated and realleged as if presented verbatim herein. [September 2025 Response, p. 17, subsection "c"].
Examiner response: Applicant argues that “the "particular machine" factor is a distinct and independent pathway for showing that a claim integrates an abstract idea into a practical application”. However, the examiner respectfully disagree, as the claim does not show how the physical object or slot is integral to technological improvement. The physical object supplies the interaction information and receives adjustment, but the independent claims are directed to management, adjustment, and transfer of digital asset ownership. The slot merely facilitates coupling or decoupling of a private portable device. Such recitation does not impose a meaningful concept could be performed using relevant interaction and ownership data without any claimed improvement to the physical object or slot itself.
Applicant submits: “Step 2B Analysis. Applicant's right to argue grounds for traversal of the rejection based on Step 2B analysis are hereby preserved. Applicant's election not to provide substantive remarks under Step 2B in this paper should not be considered a waiver of any rights.”
Examiner response: Examiner has fully considered, but does not find Applicant’s argument persuasive. The additional elements do not amount to significantly more under Step 2B. The ordered combination of sensor, transmitter-receiver, slot, private portable device, processor, digital, decentralized ledger, and smart contract are used as tools to perform the abstract concept of managing adjusting, and transferring digital asset ownership. Additionally, based the responses above, the rejection under 35 USC § 101 is maintained.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 103.
Applicant submits: “A. Wager Is Non-Analogous. Wager is non-analogous and cannot be considered in an obviousness rejection. Wager satisfies neither test. 1. First Test - Wager Is Not From The Same Field Of Endeavor As The Claimed Invention … 2. Second Test - Wager Is Not Reasonably Pertinent To The Particular Problem(s) Faced By The Inventor(s) … B. Jessamine Is Non-Analogous. Jessamine is non-analogous and cannot be considered in an obviousness rejection. Jessamine satisfies neither test. 1. First Test - Jessamine Is Not From The Same Field Of Endeavor As The Claimed Invention. … 2. Second Test - Jessamine Is Not Reasonably Pertinent To The Particular Problem(s) Faced By The Inventor(s).”
Examiner response: Applicant's arguments filed 05/20/2026 have been fully considered but they are not persuasive. In response to applicant's argument that Wager is non-analogous art, the examiner has identified new reference (i.e., Koch (US20220215361A1)) that describes the claims more accurately. In response to applicant's argument that Jessamine is non-analogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Applicant argues the references cited in the office action are not in the same field of endeavor or problem faced by the inventor as the present invention. The examiner respectfully disagree with the applicant as the applicant narrows the characterization of the field of endeavor to interactive, sensor enabled toys and physical playthings. Additionally, the independent claim are not limited to a toys, as the claim recites system involving physical object, a digital asset with associated attributes etc. Thus, the relevant field reasonably includes system for managing digital assets, ownership right, wallets, ledgers. Under the field of endeavor, Jessamine is reasonably related to the claimed subject matter because they address digital asset ownerships, ledger-based ownership information, and transaction-related control. And, Jessamine further teaches regarding secure portable device access and cryptographic key or wallet related functionality are reasonably pertinent to the claimed private portable device and digital wallet access. Therefore, Jessamine qualify as analogous art.
Applicant submits: “C. The Office Action Fails To Articulate A Reasoned Explanation To Support The Conclusion Of Obviousness … particular recognized rationale. 1. The Office Action Lacks Articulated Reasoning With Some Rational Underpinning To Support The Legal Conclusion Of Obviousness … a. The Rejection Fails To Establish A Motivation To Combine The References … b. The Office Action is Generic and Conclusory … C. The Office Action is Logically Unclear … At least for these reasons, the rejection is deficient and should be withdrawn. 2. No Particular Rationale Is Provided.”
Examiner response: Applicant's arguments filed 05/20/2026 have been fully considered but they are not persuasive. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the Jessamine reference teaches secure portable device, and the Pulier teaches digital or virtual objects with attributes that may be modified. One of skill in the art would have been motivated to combine these teaching to provide a physical interactive object whose associated with digital asset attributes and ownership information can be securely accessed, updated, tracked, and transferred using known wallet, ledger technique. The combination uses each references for its known function and would have yielded predictable result. Applicant’s non-analogous art and lack of motivation argument do not overcome the rejection. Furthermore, the examine has updated the motivation statement for each secondary reference. Thus, the rejection under 35 USC § 103 is maintained.
Relevant Prior Art Not Relied Upon
The prior art made of record and not relied upon which, however, is considered pertinent to applicant's disclosure:
US 20210226951 A1 Goldstein; Peter Martin et al. AUTOMATED AUTHENTICATION AND AUTHORIZATION IN A COMMUNICATION SYSTEM - An application-operating organization may delegate a third-party server to serve as an automated contextual authentication responder and an authorization responder. The third-party server may manage a delegated section of the organization's namespace that includes the public identities of various devices controlled by the organization. The third-party server may also dynamically generate interaction control list that is tailored to a requesting device's context based on the interaction control policies set forth by the organization. The interaction control list may include information that determines the authorization of the requesting device to interact with another device. The third-party server may also automatically determine the role of a new device to which existing policies are inapplicable and provide guided workflow for the organization to set up new interaction control policies in governing the new device. The determination of the roles of devices may be based on an iterative process using external data sources.
US 20210289001 A1 Wilson; Ashley Duane et al. AUTOMATED AUTHENTICATION AND AUTHORIZATION IN A COMMUNICATION SYSTEM - An application-operating organization may delegate a third-party server to serve as an automated contextual authentication responder and an authorization responder. The third-party server may manage a delegated section of the organization's namespace that includes the public identities of various devices controlled by the organization. The third-party server may also dynamically generate interaction control list that is tailored to a requesting device's context based on the interaction control policies set forth by the organization. The interaction control list may include information that determines the authorization of the requesting device to interact with another device. The third-party server may also automatically determine the role of a new device to which existing policies are inapplicable and provide guided workflow for the organization to set up new interaction control policies in governing the new device. The determination of the roles of devices may be based on an iterative process using external data sources.
US 20220164423 A1 CALLEGARI; Umberto et al. METHOD AND APPARATUS FOR USER RECOGNITION - Computer recognition is performed to recognise whether a user interacting with a user device in an identified interval of time is the same user as a user that has interacted with the device at other times. First user behaviour data is derived by processing first data representative of a user interacting with the user device, generated by a plurality of different elements of the user device including a sensor. At least a first interval of time is identified relating to an interaction of a user with the user device. Second user behaviour data is derived by processing second data representative of a user interacting with the user device during at least the first interval of time. User verification data, based on the first user behaviour data and the second user behaviour data, is transmitted from the user device to an interaction verification system.
US 11487850 B1 Nieto; Andrea et al. Activation architecture for processing digital assets and related physical products - Systems and method disclosed herein provide a digital asset system that interconnects the processing of digital assets and related physical products within an enterprise network. Digital assets may be generated and updated based on a number of factors including the interactions with the digital asset within the enterprise network and the physical and commercial attributes of the related physical products. Digital assets may be dynamically updated on real-world conditions and utilized to facilitate cross-system interaction between users, manufacturing, and user engagement systems.
US20110021109 A1 Khanh M. Le Toy and companion avatar on portable electronic device - A toy and software application accessory extends the distinguishing play experience of a particular toy to a digital play experience on personal digital assistant, personal navigation device, or other electronic device like an iPod or iphone with an accelerometer, speaker, and a touch-sensitive display screen. The software application accessory creates a digital play experience or video game on the electronic device that presents avatars, dialog, and backgrounds that convincingly accessorize the physical toy. Wireless connectivity to a PC and the Internet allows the toy or the electronic device to download updates, modifications, and enhancements to its basic program. New personalities can be downloaded that change the toy play experience, and extend the play life of the toy by introducing new and creative play experiences. A personality accessory kit includes the new personalities, clothes, props, and other matching accessories.
US 20170024818 A1 Wager; Steve et al. Device, System, and Method for Transfer of Commodities - [0065] In the current example, as the total value exceeds the requested amount, the service entity 140 may generate first tokens to be assigned to the participating entity 115. Specifically, the first tokens may represent a value corresponding to the requested amount of the unallocated position of the commodity (i.e., 1,100 oz). The service entity 140 may also generate second tokens to be assigned to the owner of the remainder (i.e., 100 oz). In an exemplary embodiment, the owner of the remainder may be the clearing house 130 as the gold bars under the possession of the clearing house 130 was physically transferred to the service entity 140. However, it should be noted that the clearing house 130 being assigned the second tokens is only exemplary and any entity that ultimately has ownership to the remainder may be assigned the second tokens. In this manner, the service entity 140 may generate the first tokens representing the requested amount that is assigned to the participating entity 115 and the second tokens representing the remainder amount that is assigned to the clearing house 130.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MD S HYDER whose telephone number is (571)270-1820. The examiner can normally be reached Monday - Friday 8:30am - 6:00pm.
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, Patrick McAtee can be reached at (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.S.H./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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