DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/16/2025 has been entered.
Status of Claims
Office Action is in response to the Applicant's amendments and remarks filed12/16/2025. Claims 1, 5, 9-10 were amended. Claims 1-18 are presently pending and presented for examination.
Response to Remarks/Arguments
In regards to rejection under 35 U.S.C. § 112(b): Applicant’s arguments, filed 12/16/2025, with respect to claim 5 have been fully considered and are persuasive, the 35 U.S.C. § 112(b) rejection has been withdrawn.
In regards to rejection under 35 U.S.C. § 101: Applicant’s arguments, filed 12/16/2025, with respect to claims 1-18 have been fully considered and are not persuasive.
In regards to Applicant’s arguments that “Applicant respectfully submits that Claim 1 -- even before the current amendments -- does not recite a method of organizing human activities that comprise transactions. Rather, Claim 1 recites a system which operates on a digital platform and which comprises tokens that embody transactions on a digital platform:… In Applicant's Specification, at paragraph [0009] various applications of tokens are also provided. Furthermore, Claim 1 does not merely recites the technological "token" virtual objects, it also specifically recites that each transaction embodied in each recited token is "conducted and recorded on the digital platform by operation of a smart contract associated with the token." As disclosed in Applicant's Specification, at paragraph [0012], and as one of ordinary skill in the art would appreciate, a "smart contract" refers to self- executing software that may be provided by any suitable programming language. Thus, contrary to the Examiner's contention, Claim 1 is in fact directed to a system comprising computer elements "tokens' and "smart contracts" associated with each token which interact to effectuate transactions on a digital platform. Specifically, as explained in paragraph [0013] of Applicant's Specification, smart contracts provide precision and efficiency, so that the transactions resulting from the smart contracts' operations are expected to have such a high integrity that ensuing disputes in property rights are believed extremely rare. In other words, Claim 1 recites a system on a digital platform that represents significant improvement in functionality in the technical field involving the virtual objects of tokens and smart contracts on a digital platform. Such improvement would result, as further explained in Applicant's Specification at paragraph [0013], acceptability and desirability of the digital platform, leading to greater usage, circulation and even financial value in the tokens… Thus, the Examiner fails to recognize that Claim 1 is directed to an improvement to computer functionality in the technical field involving the virtual objects of tokens and smart contracts on a digital platform. Rather, the Examiner applies a cursory determination to conclude that the claims is being directed to an abstract method of organizing human activity… Applicant respectfully submits that Claim 1 and its dependent Claims are patent ligible for the same reasons the ARP held the claims in Ex Parte Desjardins patent eligible. As in the claims of Ex Parte Desjardins and as demonstrated above, Claim 1 and its dependent Claims 2-4 and 6-18 are each directed to an improvement to computer functionality, rather than the Examiner's alleged abstract idea - i.e., mathematical algorithm in Ex Parte Desjardins, and human activity in the present claims. As in Ex Parte Desjardins, and as discussed above. Applicant's Specification provides ample support for the improvement in the functionality carried out by the recited computer elements - i.e., functionality in the technology or technical field of virtual objects on a digital platform, such as "tokens" and "smart contracts" in the case of Claims 1 and dependent Claims 2-4 and 6- 18. Thus, the subject matter of these claims is integrated into the practical application of transactions involving enforceable rights in the technology or technical field of virtual objects of tokens and smart contracts on a digital platform. Applicant respectfully submits that the Examiner is in error, as his analysis is restricted to the functioning of the computer. Contrary to case law, as articulated in Ex Parte Desjardins, at pages 6-7, the Examiner did not consider the contribution by the subject matter of Claim 1 to the technology or technical field involving the virtual objects of tokens and smart contracts on a digital platform. Indeed, the Advance Notice of Change states that longstanding Federal Circuit precedent requires eligibility to be analyzed with respect to improvement to "other technology or technical field," not simply improvement to the functionality of the computer… Consistent with this approach, the USPTO announces changes to MPEP § 2106.05(f) to explain that Ex Parte Desjardins finds eligibility in claims that address a technical problem and reflect various improvements in system performance in a technical fiel”, (see remarks , pg. 5-12).
Examiner respectfully disagrees, the current claims are not statutory because they are directed towards an abstract idea without significantly more. The claims recite method for embodying transactions for real property or currency, which is a method of managing interactions between people, which falls into the methods of organizing human activity grouping, as the one can utilize a database to receive and collect data and recognize property rights for an entity recorded in the database. The computing elements such as “system, digital platform, smart contract, digital real property, token of claim 1” are recited at a high level of generality and are generically recited computer elements. The generically recited computer elements amount to simply implementing the abstract idea on a computer. The combination of these additional elements are additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use. Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. With respect to Applicant’s argument regarding Ex Parte Desjardins and improvements in filed claims, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).Therefore, elements being analyzed for significantly more are mere generic computer components being implemented to implement the abstract idea on a computer.
Response to Prior Art Arguments
Applicant's prior art arguments filed 12/16/2025 are moot in light of the newly cited In.
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites method for embodying transactions for real property or currency.
Step 2A – Prong 1
Independent Claims 1 as a whole recite a method of organizing human activity. The limitations from exemplary Claim 1 reciting “comprising transactions involving an enforceable right, wherein each transaction is conducted and recorded by operation, and wherein the enforceable right involved in each is either a tangible right appurtenant to a real property, made appurtenant to the real property, or a right derived from the enforceable right involved in another one of the tokens” is a method of managing interactions between people, which falls into the certain methods of organizing human activity grouping. The mere recitation of a generic computer (system, digital platform, smart contract, digital real property, token of claim 1) does not take the claim out of the methods of organizing human activity grouping. Thus, the claim recites an abstract idea.
Step 2A - Prong 2: Claims 1-18 and their underlining limitations, steps, features and terms, are further inspected by the Examiner under the current examining guidelines, and found, both individually and as a whole, not to include additional elements that are sufficient to integrate the abstract idea into a practical application. The limitations are directed to limitations referenced in MPEP 2106.05 that are not enough to integrate the abstract idea into a practical application. Limitations that are not enough include, as a non-limiting or non-exclusive examples, such as: (i) adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions, (ii) insignificant extra solution activity, and/or (iii) generally linking the use of the judicial exception to a particular technological environment or field of use.
This judicial exception is not integrated into a practical application because the claim recites the additional elements of (system, digital platform, smart contract, digital real property, token of claim 1). The system, digital platform, smart contract, digital real property, token of claim 1, are recited at a high level of generality and are generically recited computer elements. The generically recited computer elements amount to simply implementing the abstract idea on a computer. The combination of these additional elements are additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use. Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above, the additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use. Thus, even when viewed as an ordered combination, nothing in the claims add significantly more (i.e. an inventive concept) to the abstract idea. The claims are ineligible.
Dependent claims 2-18 are also directed to same grouping of methods of organizing human activity. The additional elements of the system in claims 2-18; digital platform in claims 3-4, 8; smart contract in claims 9-10, 14 and 17; digital real property in claims 3 and 9; token of claim 6-7, 9, 11, 14-15; public ledger in claims 4; computer network in claims 4; digital ledger in claims 5; blockchain in claims 5; virtual experience in claims 7-8; virtual object in claims 3; computer program in claims 8, are additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use. Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating
obviousness or nonobviousness.
Claim 1, 3-5, 9-11 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Hansen et al (US Patent Application Publication No. 20240046281 - hereinafter Hansen) in view of Dana et al (US Patent Application Publication No. 20230385968 - hereinafter Dana) in view of In et al (US Patent Application Publication No. 20240403875 - hereinafter In).
Re. claim 1, Hansen teaches:
A system operating on a digital platform comprising
wherein each transaction is conducted and recorded on the digital platform by operation of a smart contract, and [Hansen; ¶18 shows storing of transactions and other aspects via a smart contract such as “PTP system provides smart contracts for each type of participant (e.g., farmers) for receiving transactions, validating transactions, and recording the transactions relating to the type of the participant in the distributed ledger. For example, a seed bank operator may record transactions representing seeds available for sale, sale of seeds to farmers, and so on”].
Hansen doesn’t teach, Dana teaches:
a plurality of tokens embodying transactions on the digital platform involving an enforceable right, [Dana; ¶34 provides plurality of tokens for virtual rights].
wherein the enforceable right involved in each token is either a tangible right appurtenant to a real property, a digital real property right created on the digital platform and made appurtenant to the real property, or a right derived from the enforceable right involved in another one of the tokens. [Dana; ¶15, ¶23, ¶25 and ¶35-¶37 shows enforceable virtual rights associated with real properties].
It would have limitation(s) as taught by Dana in the system of Hansen, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Hansen doesn’t teach, In teaches:
wherein each transaction involving each token is conducted and recorded on the digital platform by operation of a smart contract associated with that token; [In; ¶14 shows transaction with a token and recorded in smart contract such as “receiving and storing, by a blockchain network, the original warranty in a smart contract block, issuing a token based on the smart contract block and generating an electronic wallet in which the token is stored; and receiving the warranty in which the signature has been entered and transmitting a transaction including the warranty in which the signature has been entered and a token trading request to the blockchain network”].
It would have limitation(s) as taught by In in the system of Hansen, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Re. claim 3, Hansen in view of Dana in view of In teaches system of claim 1.
Hansen teaches:
wherein the digital real property right comprises intellectual property rights related to a virtual object created on the digital platform and made appurtenant to the real property. [Hansen; ¶20 shows tokens are in form of a digital wallet for storing the tokens such as “the PTP system may allocate tokens to consumers who purchase grain products from sellers such as from a box store retailer, an e-commerce retailer, a restaurant, and so on. Each consumer may have a digital wallet for storing the tokens. A consumer may use the tokens to purchase grain products”].
Re. claim 4, Hansen in view of Dana in view of In teaches system of claim 1.
Hansen teaches:
wherein the digital platform comprises a public ledger on a computer network. [Hansen; ¶24].
Re. claim 5, Hansen in view of Dana in view of In teaches system of claim 4.
Hansen teaches:
wherein the digital ledger comprises a blockchain. [Hansen; ¶25].
Re. claim 9, Hansen in view of Dana in view of In teaches system of claim 1.
Hansen teaches:
wherein the tokens further comprise a license to a tangible right or a digital real property right enforced by a smart contract. [Hansen; ¶18 shows storing of transactions and other aspects via a smart contract such as “PTP system provides smart contracts for each type of participant (e.g., farmers) for receiving transactions, validating transactions, and recording the transactions relating to the type of the participant in the distributed ledger. For example, a seed bank operator may record transactions representing seeds available for sale, sale of seeds to farmers, and so on”].
Re. claim 10, Hansen in view of Dana in view of In teaches system of claim 9.
Hansen teaches:
wherein a smart contract handles extension, termination, assignment, transfer, or modification of the license. [Hansen; ¶18 shows storing of transactions and other aspects via a smart contract such as “PTP system provides smart contracts for each type of participant (e.g., farmers) for receiving transactions, validating transactions, and recording the transactions relating to the type of the participant in the distributed ledger. For example, a seed bank operator may record transactions representing seeds available for sale, sale of seeds to farmers, and so on”].
Re. claim 11, Hansen in view of Dana in view of In teaches system of claim 1.
Hansen teaches:
wherein the token further comprises a financial instrument. [Hansen; ¶20, ¶25 and ¶31].
Re. claim 14, Hansen in view of Dana in view of In teaches system of claim 1.
Hansen teaches:
wherein one or more of the smart contracts enforce an obligation that arose when one token is derived from another token. [Hansen; ¶24 shows smart contract picking up fraudulent transactions and not recording those transactions such as “if a mill operator attempts to record transactions for 10 tons of a certain grain but only purchased 5 tons of the grain, an analysis of the distributed ledger will identify this fraud. In addition, a mill operator smart contract may be used to identify seemingly fraudulent transactions and not record those transactions or send a notification to the operator of the distributed ledger of the fraudulent transaction. The operator of the distributed ledger may investigate and revoke the permission of the mill operator”].
Re. claim 15, Hansen in view of Dana in view of In teaches system of claim 14.
Hansen teaches:
when the obligation is not performed, the derived token is subject to one or more of: revocation, restriction, or suspension of one or more privileges. [Hansen; ¶24].
Re. claim 16, Hansen in view of Dana in view of In teaches system of claim 15.
Hansen teaches:
wherein the privileges comprise data access to an external resource. [Hansen; ¶24-25].
Re. claim 17, Hansen in view of Dana in view of In teaches system of claim 14.
Hansen teaches:
wherein the smart contracts police changes in any relevant encumbrance on the real property, so as to trigger a default condition should a violation be detected. [Hansen; ¶24 identifies fraudulent activity such as “if a mill operator attempts to record transactions for 10 tons of a certain grain but only purchased 5 tons of the grain, an analysis of the distributed ledger will identify this fraud. In addition, a mill operator smart contract may be used to identify seemingly fraudulent transactions and not record those transactions or send a notification to the operator of the distributed ledger of the fraudulent transaction. The operator of the distributed ledger may investigate and revoke the permission of the mill operator”].
Re. claim 18, Hansen in view of Dana in view of In teaches system of claim 14.
Hansen teaches:
wherein the obligation pertains to rewards to be awarded under a loyalty program. [Hansen; ¶20 shows discounts such as “if a consumer receives a token for the purchase of a pound or other unit of measure (e.g., kilogram for grain or barrel for whiskey), the consumer may pay for a pound of the grain using 10 tokens or may receive a 50% discount using five tokens. The PTP system may provide a retailer application (e.g., executing on a point-of-sale terminal) that interact with the consumer application to receive consumer information and record consumer sale transaction that also allocates tokens to the consumer”].
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hansen in view of Dana in view of In in view of Howie et al (US Patent Application Publication No. 20200175623 - hereinafter Howie).
Re. claim 2, Hansen in view of Dana in view of In teaches the system of Claim 1.
Hansen doesn’t teach, Howie teaches:
wherein the tangible right comprises one or more of: fee simple, life tenancy, leasehold, joint tenancy, tenants-in-common, right of survivorship, and combinations thereof. [Howie; ¶87 shows fee simple such as “a fee simple absolute transaction will have a specific protocol in place such that it is impossible to write a parcel's genesis block for a sales transaction and transfer of ownership if there is a conflicting fee simple absolute geocoded centroid address that already exists on the blockchain with a different owner not involved with the transaction”].
It would have limitation(s) as taught by Howie in the system of Hansen, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hansen in view of Dana in view of In in view of Khan et al (US Patent Application Publication No. 2020131419 - hereinafter Khan).
Re. claim 6, Hansen in view of Dana in view of In teaches the system of Claim 1.
Hansen doesn’t teach, Khan teaches:
wherein the tokens comprise both fungible and non- fungible tokens. [Khan; ¶49 and ¶74].
It would have limitation(s) as taught by Khan in the system of Hansen, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Re. claim 7, Hansen in view of Dana in view of In teaches the system of Claim 1.
Hansen doesn’t teach, Khan teaches:
\wherein the tokens further comprise embodiment of a virtual experience. [Khan; Abstract and ¶45-¶46].
It would have limitation(s) as taught by Khan in the system of Hansen, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Re. claim 8, Hansen in view of Dana in view of In in view of Khan teaches the system of Claim 7.
Hansen doesn’t teach, Khan teaches:
wherein the virtual experience is delivered by execution of a computer program running on the digital platform. [Khan; Abstract and ¶45-¶46].
It would have limitation(s) as taught by Khan in the system of Hansen, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hansen in view of Dana in view of In in view of Khan et al (US Patent Application Publication No. 2020131419 - hereinafter Khan).
Re. claim 12, Hansen in view of Dana in view of In teaches the system of Claim 11.
Hansen doesn’t teach, Sliwka teaches:
wherein the financial instrument comprises an insurance policy. [Sliwka; ¶414 shows token with insurance].
It would have limitation(s) as taught by Sliwka in the system of Hansen, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Re. claim 13, Hansen in view of Dana in view of In in view of Sliwka teaches the system of Claim 12.
Hansen doesn’t teach, Sliwka teaches:
wherein the financial instrument comprises a collateralized debt instrument. [Sliwka; ¶414 such as “the safekeeper may be required to stake an amount of currency/tokenized tokens equal or proportionate to the appraised value of the collateral item as a safeguard in case the item is lost or damaged during safekeeping (or may provide proof of insurance)”].
It would have limitation(s) as taught by Sliwka in the system of Hansen, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Conclusion
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/IBRAHIM N EL-BATHY/Primary Examiner, Art Unit 3628