DETAILED ACTION
This is in reference to communication received 25 November 2025. Claims 2 – 21 are pending for examination. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claims 2 – 4, 6 – 15, 17 – 19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Desai et al. US Publication 2015/0235255 in view of Tietzen et al US Publication 2021/0350403 and Sutton-Shearer et al. US Publication 2023/0053969.
Regarding claim 2, Desai teaches system and method for administering reward program based upon defined rules and issuing rewards based upon the satisfying of rules associated with the reward [Desai, 0004] comprising:
accessing a set of criteria specified by a merchant with respect to one or more users (Desai, determining, by the computer based system, that a first transaction is eligible for a first portion of a reward program and a second portion of the reward program, wherein the first transaction is from a plurality of transactions;) [Desai, 0004];
Desai does not teach providing an interface through which the merchant is enable to enter the set of criteria. However, Tietzen teaches system and method for providing interface to users like merchant to generate incentives (e.g., rewards) [Tietzen, Fig. 8-21 and associated disclosure]. Tietzen further teaches that the incentives are generated to the extent to which merchants are willing to provide benefits, incentives, and rewards to cardholders in the context of a loyalty program is enhanced if means are provided to enable merchants to verify the commercial benefit derived by the merchants, and means are provided to tailor the benefits to particular cardholders based on card holder preferences, spending habits, and the like [Tietzen, 0082].
Therefore, at the time of filing, it would have been obvious to one of ordinary skill in the art to modify Desai in view of Sutton-Shearer by adopting teachings of Tietzen to improve user experience by enabling users electronically enter their reward criteria for improving client loyalty.
Desai in view of Tietzen taches system and method for :
accessing a set of criteria specified by a merchant (e.g., merchant using their user-interface to provide their set of criteria for the rewards as taught by Tietzen) with respect to one or more users (Desai, determining, by the computer based system, that a first transaction is eligible for a first portion of a reward program and a second portion of the reward program, wherein the first transaction is from a plurality of transactions;) [Desai, 0004];
monitoring interactions between the merchant and the one or more users (Desai, monitoring, by the computer based system, a number of transactions associated with the transaction account over a first period of time;) [Desai, 0004];
automatically determining, based on the monitoring, that a first user of the one or more users has satisfied at least some of the criteria in the set of criteria specified by the merchant (Desai, determining, by the computer based system, a second reward of in response to the number of transactions associated with the transaction account over the first period of time exceeding a threshold, wherein the second reward is determined as a function of a total reward earned based on the amount of the transactions associated with the transaction account over the first period of time, and wherein the total reward includes the first reward.) [Desai, 0004];
Desai in view of Tietzen does not teach using blockchain contracts between merchants and customers. However, Sutton-Shearer teaches system and method that relates to a computer network (e.g., blockchain (or other DLT)-based platform) for digital media file management, including controlling the transfer of a first cryptographic token associated with a first digital media file under control of a first computer code module (e.g., a first smart contract), including electronically storing in a data structure in the network an association of the first digital media file with a set of associated files that comprise derivatives files of the first digital media file and associating individual ones of the derivative files with corresponding non-fungible cryptographic tokens (NFTs) [Sutton-Shearer, 0004].
Therefore, at the time of filing, it would have been obvious to one of ordinary skill in the art to modify Desai in view of Tietzen by adopting teachings of Sutton-Shearer and use blockchain with smart-contracts to manage assignment of the non-fungible cryptographic tokens to designted digital wallet addresses associated with corresponding owners of the non-fungible cryptographic tokens [Sutton-Shearer, 0005].
Desai in view of Tietzen and Sutton-Shearer teaches system and method further comprising:
automatically executing, based on the determining, a blockchain contract stored on a blockchain, wherein the blockchain contract defines a transaction between the merchant and the first user and comprises a self-executing computer script written in a specified computer programming language, wherein the self-executing computer script is generated based on a programmable grammar-based syntax that includes a set of fields comprising a digital certificate field and a shareable field, the digital certificate field specifying one or more entities, the shareable field including shareable data and one or more conditions (Sutton-Shearer, A smart contract is a collection of code (its functions) and data (its state) that resides at a specific address on the blockchain, e.g., Ethereum blockchain. Smart contracts, once deployed, are not controlled by a user. Instead they are deployed to the blockchain network, e.g., Ethereum network, and run as programmed. User accounts can then interact with a smart contract by submitting transactions that execute a function defined on the smart contract. Smart contracts can be programmed to define rules and automatically enforce them via the code. In one manner smart contracts automate workflows by triggering actions when one or a set of conditions is met.) [Sutton-Shearer, 0023];
automatically generating a non-fungible token (NFT) based on the automatically executing the blockchain contract, wherein the NFT comprises one or more attributes that are defined by at least one of the digital certificate field or the shareable field of the programmable grammar-based syntax (Sutton-Shearer, The system 100 may create a first token representing ownership of the original (via an electronic registry) 102. The system may create a set of NFTs 103, each NFT representing ownership of one of the derivative files (via an electronic registry).) [Sutton-Shearer, 0016];
providing the NFT to at least one of the merchant or the first user (Sutton-Shearer, The registry may associated the first token with a wallet address of the owner of the original file) [Sutton-Shearer, 0016]; and
recording the automatically executed blockchain contract to the blockchain (Sutton-Shearer, The registry may assign or associate individual ones of the NFTs with a wallet address of the owner of an instance of the derivative file 102. The first computer code module (referred to as a first smart contract) 104 may be configured to limit transferability of the first token to an) [Sutton-Shearer, 0016]; and
sharing the shareable data in the NFT with the one or more entities specified by the digital certificate field when the one or more conditions are met in the subsequent use of the NFT (Sutton-Shearer, NFTs associated with the derivative files may be configured to represent not just ownership of the derivative file but also a right to participate in an offering to acquire ownership of the original file. Through the second computer code modules (e.g., a second smart contracts) 105 and/or the first computer code module 104, any offering of the transfer of the token associated with the first token 108 would be communicated to the NFT holders via an electronic message and in some cases, the first and/or second smart contracts would be configured to only permit the NFT token holders to participate in the process of the offering (sale, auction or other process) and limit the transfer of the first token to one of the NFT holders 110. Upon acquisition of the token associated with the original file, the token is transferred to the wallet of the acquirer 112.) [Sutton-Shearer, 0019].
Regarding claim 3, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer taches system and method for :
providing an interface through which the merchant is enable to enter the set of criteria (Tietzen teaches providing interface to users like merchant to generate incentives (e.g., rewards)) [Tietzen, Fig. 8-21 and associated disclosure];
receiving, via the interface, one or more obligations of the merchant when the one or more users have satisfied the one or more criteria in the set of criteria (Tietzen, incentives are generated to the extent to which merchants are willing to provide benefits, incentives, and rewards to cardholders in the context of a loyalty program is enhanced if means are provided to enable merchants to verify the commercial benefit derived by the merchants, and means are provided to tailor the benefits to particular cardholders based on card holder preferences, spending habits, and the like) [Tietzen, 0082];
automatically generating the blockchain contract based on the one or more criteria in the set of criteria and the one or more obligations (Sutton-Shearer, The system 100 may create a first token representing ownership of the original (via an electronic registry) 102. The system may create a set of NFTs 103, each NFT representing ownership of one of the derivative files (via an electronic registry).) [Sutton-Shearer, 0016]; and
storing the automatically generated blockchain contract on the blockchain (Sutton-Shearer, electronically storing in a data structure in the network an association of the first digital media file with a set of associated files that comprise derivatives files of the first digital media file and associating individual ones of the derivative files with corresponding non-fungible cryptographic tokens (NFTs)) [Sutton-Shearer, 0004].
Regarding claim 4, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer teaches system and method further comprising:
updating the shareable field at least in part by adding or changing the one or more entities that have access to the shareable fild or smart contracts that can access the shareable field (Sutton-Shearer, Upon acquisition of the token associated with the original file, the token is transferred to the wallet of the acquirer 112.) [Sutton-Shearer, 0019].
Regarding claim 6, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer teaches system and method further comprising associating the automatically executed blockchain contract with a unique identifier of the merchant (Desai, A record associated with the transaction may, in addition, contain details such as location, merchant name or identifier, transaction amount, transaction date, account number, account security pin or code, account expiry date, and the like for the transaction) [Desai, 0069].
Regarding claim 7, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer teaches system and method further comprising assigning, based on the automatically executed blockchain contract, one or more tokens to the first user, the one or more tokens comprising the NFT (Sutton-Shearer, The system 100 may create a first token representing ownership of the original (via an electronic registry) 102. The system may create a set of NFTs 103, each NFT representing ownership of one of the derivative files (via an electronic registry).) [Sutton-Shearer, 0016].
Regarding claim 8, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer teaches system and method further comprising transferring the one or more tokens to a digital wallet of the first user (Sutton-Shearer, Upon acquisition of the token associated with the original file, the token is transferred to the wallet of the acquirer 112.) [Sutton-Shearer, 0019].
Regarding claim 9, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer teaches system and method, wherein at least one of the one or more tokens contains:
a Boolean value representing a status of a redeemable award of the merchant; or an integer value representing an amount of loyalty points associated with the first user (Desai, The first portion may be configured to provide a first reward (e.g., an award of loyalty points, a rebate amount, a reward currency, a loyalty currency, and/ or the like) for each transaction ( e.g., purchase made) using a transaction account based on an amount of the transaction) [Desai, 0031].
Regarding claim 10, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer teaches system and method, wherein:
the one or more tokens comprise a plurality of tokens (Sutton-Shearer, The system 100 may create a first token representing ownership of the original (via an electronic registry) 102. The system may create a set of NFTs 103, each NFT representing ownership of one of the derivative files (via an electronic registry).) [Sutton-Shearer, 0016]; and
the plurality of tokens are associated with a plurality of reward categories specified by the merchant, the plurality of reward categories comprising: a promotional badge, a cryptocurrency, or a loyalty point (Desai, The first portion may be configured to provide a first reward (e.g., an award of loyalty points, a rebate amount, a reward currency, a loyalty currency, and/ or the like) for each transaction ( e.g., purchase made) using a transaction account based on an amount of the transaction.) [Desai, 0031].
Regarding claim 11, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer teaches system and method, wherein additional data, once added to the shareable field, is shared with the one or more entities specified by the digital certificate field (Sutton-Shearer, NFTs are programmable. ERC-721 provides a mapping of unique identifiers (each of which represents a single asset) to (wallet) addresses, which represent the owner of that identifier. ERC-721 also provides a permissioned way to transfer these assets, using the transterFrom method.) [Sutton-Shearer, 0022].
Regarding claim 12, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer teaches system and method, wherein the monitoring comprises monitoring, via an application programming interface (API), a plurality of transactions between the merchant and the one or more users (Desai, network is enabled to identify, track, count, and/or otherwise monitor transaction information and/or information indicative of a transaction that is passed between POS 110 and/or payment processor 140 by network 120.) [Desai, 0024].
Regarding claim 13, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer teaches system and method, wherein the accessing, the monitoring, the determining, the automatically executing, the automatically generating, the providing, or the recording is performed by one or more hardware processors of a service provider that is different from the merchant (Sutton-Shearer, Smart contracts, once deployed, are not controlled by a user. Instead they are deployed to the blockchain network, e.g., Ethereum network, and run as programmed. User accounts can then interact with a smart contract by submitting transactions that execute a function defined on the smart contract. Smart contracts can be programmed to define rules and automatically enforce them via the code. In one manner smart contracts automate workflows by triggering actions when one or a set of conditions is met.) [Sutton-Shearer, 0023].
Regarding claim 14, Desai teaches system and method for administering reward program based upon defined rules and issuing rewards based upon the satisfying of rules associated with the reward [Desai, 0004] comprising:
a non-transitory memory (Desai, computer based system comprises a processor and a non-transitory, tangible memory) [Desai, claim 1]; and
one or more hardware processors coupled to the non-transitory memory and configured to read instructions from the non-transitory memory to cause the system to perform operations (Desai, a non-transitory memory configured to communicate with the processor, the non-transitory memory having instructions stored thereon that when executed by the processor cause the computer based system to perform operations) [Desai, claim 21] comprising:
receiving, via an interface accessible by an entity, a specification for one or more first conditions that are satisfiable by one or more actions of one or more users and one or more obligations of the entity with respect to the one or more users upon a satisfaction of the one or more first conditions (Desai, determining, by the computer based system, that a first transaction is eligible for a first portion of a reward program and a second portion of the reward program, wherein the first transaction is from a plurality of transactions;) [Desai, 0004];
Desai does not teach using blockchain contracts between merchants and customers. However, Sutton-Shearer teaches system and method that relates to a computer network (e.g., blockchain (or other DLT)-based platform) for digital media file management, including controlling the transfer of a first cryptographic token associated with a first digital media file under control of a first computer code module (e.g., a first smart contract), including electronically storing in a data structure in the network an association of the first digital media file with a set of associated files that comprise derivatives files of the first digital media file and associating individual ones of the derivative files with corresponding non-fungible cryptographic tokens (NFTs) [Sutton-Shearer, 0004].
Therefore, at the time of filing, it would have been obvious to one of ordinary skill in the art to modify Desai by adopting teachings of Sutton-Shearer and use blockchain with smart-contracts to manage assignment of the non-fungible cryptographic tokens to designated digital wallet addresses associated with corresponding owners of the non-fungible cryptographic tokens [Sutton-Shearer, 0005].
Desai in view of Sutton-Shearer teaches system and method further comprising:
generating, based on the specification of the one or more conditions and the one or more obligations and further based on a programmable grammar-based syntax, one or more blockchain contracts between the entity and the one or more users, wherein the programmable grammar-based syntax comprises one or more fields including a digital certificate field and a shareable field, wherein the digital certificate field identifies one or more entities, and wherein the shareable field includes shareable data and one or more second conditions [Sutton-Shearer, The system 100 may create a first token representing ownership of the original (via an electronic registry) 102. The system may create a set of NFTs 103, each NFT representing ownership of one of the derivative files (via an electronic registry).) [Sutton-Shearer, 0016];
storing the one or more blockchain contracts on a blockchain (Sutton-Shearer, electronically storing in a data structure in the network an association of the first digital media file with a set of associated files that comprise derivatives files of the first digital media file and associating individual ones of the derivative files with corresponding non-fungible cryptographic tokens (NFTs)) [Sutton-Shearer, 0004];
monitoring one or more interactions between the entity and the one or more users (Desai, monitoring, by the computer based system, a number of transactions associated with the transaction account over a first period of time;) [Desai, 0004];
determining, based on the monitoring, that the one or more conditions have been satisfied by the one or more actions of a first user of the one or more users (Desai, determining, by the computer based system, a second reward of in response to the number of transactions associated with the transaction account over the first period of time exceeding a threshold, wherein the second reward is determined as a function of a total reward earned based on the amount of the transactions associated with the transaction account over the first period of time, and wherein the total reward includes the first reward.) [Desai, 0004];
automatically executing, based on the determining, a first blockchain contract of the one or more blockchain contracts that involve the entity and the first user (Sutton-Shearer, A smart contract is a collection of code (its functions) and data (its state) that resides at a specific address on the blockchain, e.g., Ethereum blockchain. Smart contracts, once deployed, are not controlled by a user. Instead they are deployed to the blockchain network, e.g., Ethereum network, and run as programmed. User accounts can then interact with a smart contract by submitting transactions that execute a function defined on the smart contract. Smart contracts can be programmed to define rules and automatically enforce them via the code. In one manner smart contracts automate workflows by triggering actions when one or a set of conditions is met.) [Sutton-Shearer, 0023];
generating a non-fungible token (NFT) based on the first blockchain contract, the NFT having one or more attributes that are specified by at least one of the digital certificate field or the shareable field of the programmable grammar-based syntax (Sutton-Shearer, The system 100 may create a first token representing ownership of the original (via an electronic registry) 102. The system may create a set of NFTs 103, each NFT representing ownership of one of the derivative files (via an electronic registry).) [Sutton-Shearer, 0016]; and
providing the NFT to at least one of the entity or the first user (Sutton-Shearer, The registry may associated the first token with a wallet address of the owner of the original file) [Sutton-Shearer, 0016], wherein the NFT is usable at least in part by sharing the shareable data with the one or more entities specified by the digital certificate field based on a satisfaction of the one or more second conditions (Sutton-Shearer, Upon acquisition of the token associated with the original file, the token is transferred to the wallet of the acquirer 112.) [Sutton-Shearer, 0019].
Regarding claim 15, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer teaches system and method, wherein the operations further comprise transferring, after the automatically executing, one or more blockchain tokens to a digital wallet of the first user (Sutton-Shearer, Upon acquisition of the token associated with the original file, the token is transferred to the wallet of the acquirer 112.) [Sutton-Shearer, 0019].
Regarding claim 17, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer teaches system and method, wherein the operations further comprise providing a plurality of customized interfaces for a plurality of merchants, respectively, wherein the entity is one merchant of the plurality of merchants, and wherein the interface through which the specification is received is one of the customized interfaces (Tietzen teaches providing interface to users like merchant to generate incentives (e.g., rewards)) [Tietzen, Fig. 8-21 and associated disclosure].
Regarding claim 18, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer teaches system and method, wherein the one or more blockchain contracts are stored on the blockchain in association with a unique identifier of the entity (Sutton-Shearer, A smart contract is a collection of code (its functions) and data (its state) that resides at a specific address on the blockchain, e.g., Ethereum blockchain. Smart contracts, once deployed, are not controlled by a user. Instead they are deployed to the blockchain network, e.g., Ethereum network, and run as programmed. User accounts can then interact with a smart contract by submitting transactions that execute a function defined on the smart contract. Smart contracts can be programmed to define rules and automatically enforce them via the code. In one manner smart contracts automate workflows by triggering actions when one or a set of conditions is met.) [Sutton-Shearer, 0023].
Regarding claim 19, Desai teaches system and method for administering reward program based upon defined rules and issuing rewards based upon the satisfying of rules associated with the reward [Desai, 0004] comprising:
a non-transitory machine-readable medium having stored thereon machine-readable instructions executable to cause a machine to perform operations (Desai, a non-transitory memory configured to communicate with the processor, the non-transitory memory having instructions stored thereon that when executed by the processor cause the computer based system to perform operations) [Desai, claim 21] comprising:
receiving, from a merchant, a set of customer reward criteria and a set of merchant obligations when the set of customer reward criteria is met by one or more customers of the merchant (Desai, determining, by the computer based system, that a first transaction is eligible for a first portion of a reward program and a second portion of the reward program, wherein the first transaction is from a plurality of transactions;) [Desai, 0004];
Desai does not teach providing an interface through which the merchant is enable to enter the set of criteria. However, Tietzen teaches system and method for providing interface to users like merchant to generate incentives (e.g., rewards) [Tietzen, Fig. 8-21 and associated disclosure]. Tietzen further teaches that the incentives are generated to the extent to which merchants are willing to provide benefits, incentives, and rewards to cardholders in the context of a loyalty program is enhanced if means are provided to enable merchants to verify the commercial benefit derived by the merchants, and means are provided to tailor the benefits to particular cardholders based on card holder preferences, spending habits, and the like [Tietzen, 0082].
Therefore, at the time of filing, it would have been obvious to one of ordinary skill in the art to modify Desai in view of Sutton-Shearer by adopting teachings of Tietzen to improve user experience by enabling users electronically enter their reward criteria for improving client loyalty.
Desai in view of Tietzen taches system and method for :
receiving, from a merchant via an interface [Tietzen, 0472], a set of customer reward criteria and a set of merchant obligations when the set of customer reward criteria is met by one or more customers of the merchant (Tietzen, incentives are generated to the extent to which merchants are willing to provide benefits, incentives, and rewards to cardholders in the context of a loyalty program is enhanced if means are provided to enable merchants to verify the commercial benefit derived by the merchants, and means are provided to tailor the benefits to particular cardholders based on card holder preferences, spending habits, and the like) [Tietzen, 0082];
Desai in view of Tietzen does not teach using blockchain contracts between merchants and customers. However, Sutton-Shearer teaches system and method that relates to a computer network (e.g., blockchain (or other DLT)-based platform) for digital media file management, including controlling the transfer of a first cryptographic token associated with a first digital media file under control of a first computer code module (e.g., a first smart contract), including electronically storing in a data structure in the network an association of the first digital media file with a set of associated files that comprise derivatives files of the first digital media file and associating individual ones of the derivative files with corresponding non-fungible cryptographic tokens (NFTs) [Sutton-Shearer, 0004].
Therefore, at the time of filing, it would have been obvious to one of ordinary skill in the art to modify Tietzen by adopting teachings of Sutton-Shearer and use blockchain with smart-contracts to manage assignment of the non-fungible cryptographic tokens to designted digital wallet addresses associated with corresponding owners of the non-fungible cryptographic tokens [Sutton-Shearer, 0005].
Tietzen in view of Sutton-Shearer teaches system and method further comprising:
generating, based on the set of customer reward criteria and the set of merchant obligations, one or more blockchain contracts between the merchant and the one or more customers of the merchant [Tietzen, 0082], wherein the one or more blockchain contracts are generated in accordance with a programmable grammar-based syntax that comprises a set of fields including a digital certificate field and a shareable field, the digital certificate field specifying one or more entities, the shareable field including shareable data and one or more conditions [Sutton-Shearer, The system 100 may create a first token representing ownership of the original (via an electronic registry) 102. The system may create a set of NFTs 103, each NFT representing ownership of one of the derivative files (via an electronic registry).) [Sutton-Shearer, 0016];
storing the one or more blockchain contracts on a blockchain (Sutton-Shearer, electronically storing in a data structure in the network an association of the first digital media file with a set of associated files that comprise derivatives files of the first digital media file and associating individual ones of the derivative files with corresponding non-fungible cryptographic tokens (NFTs)) [Sutton-Shearer, 0004];
determining, based on one or more interactions between the merchant and the one or more customers of the merchant, that the set of customer reward criteria has been satisfied by a first customer of the one or more customers of the merchant (Sutton-Shearer, Smart contracts can be programmed to define rules and automatically enforce them via the code. In one manner smart contracts automate workflows by triggering actions when one or a set of conditions is met.) [Sutton-Shearer, 0023] (wherein rules reward eligibility criteria are defined by merchant [Tietzen, 0082]);
automatically executing, based on the determining, a first blockchain contract of the one or more blockchain contracts, wherein the first blockchain contract comprises one or more digital tokens, and wherein one or more attributes of at least one of the digital tokens are defined by at least one of the digital certificate field or the shareable field of the programmable grammar-based syntax (Sutton-Shearer, A smart contract is a collection of code (its functions) and data (its state) that resides at a specific address on the blockchain, e.g., Ethereum blockchain. Smart contracts, once deployed, are not controlled by a user. Instead they are deployed to the blockchain network, e.g., Ethereum network, and run as programmed. User accounts can then interact with a smart contract by submitting transactions that execute a function defined on the smart contract. Smart contracts can be programmed to define rules and automatically enforce them via the code. In one manner smart contracts automate workflows by triggering actions when one or a set of conditions is met.) [Sutton-Shearer, 0023]; and
transferring, according to the first blockchain contract, one or more digital tokens to a digital wallet of the first customer, wherein the one or more digital tokens is subsequently usable at least in part by sharing the shareable data with the one or more entities specified by the digital certificate field based on the one or more conditions having been met (Sutton-Shearer, Upon acquisition of the token associated with the original file, the token is transferred to the wallet of the acquirer 112.) [Sutton-Shearer, 0019].
Regarding claim 21, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer teaches system and method, wherein the operations further comprise storing a unique identifier of the merchant in the blockchain along with the one or more blockchain contracts (Sutton-Shearer, electronically storing in a data structure in the network an association of the first digital media file with a set of associated files that comprise derivatives files of the first digital media file and associating individual ones of the derivative files with corresponding non-fungible cryptographic tokens (NFTs)) [Sutton-Shearer, 0004].
Claims 5, 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Desai et al. US Publication 2015/0235255 in view of Tietzen et al US Publication 2021/0350403, Sutton-Shearer et al. US Publication 2023/0053969 and Mind Matters published article “Can Digital Signatures Protect NFTs in Digital Marketplaces?” hereinafter referred to as Mind-Matters.
Regarding claim 5, as combined and under the same rationale as above, as combined and under the same rationale as above, Desai in view of Tietzen and Sutton-Shearer does not teach NFT signed using private key or a public key. However, Mind-Matters teaches Digital signatures on a blockchain work in the same way. The blockchain functions as a digital marketplace in which ownership of digital items is transferred from one party (usually called “Alice”) to another party (usually called “Bob”) by Alice applying a digital signature to it and designating Bob as the recipient (assign and sign: Alice is the assignator, Bob the assignee). In a blockchain-based digital marketplace, Alice, Bob, and any other commercial agents each use a public/private cryptographic key. The public key serves as the address to which digital items are assigned, the private key as the way to sign these digital items, authorizing their transfer from one party (or address) to another [Mind-Matters, page 3, 4].
Therefore, at the time of filing, it would have been obvious to one of ordinary skill in the art to modify Desai in view of Tietzen and Sutton-Shearer by adopting teachings of Mind-Matters to easily transfer ownership of assets in digital marketplace.
Desai in view of Tietzen, Sutton-Shearer and Mind-Matters teaches system and method, wherein the NFT is signed by a private key or a public key that is associated with an owner of the NFT (Mind-Matters, Digital signatures on a blockchain work in the same way. The blockchain functions as a digital marketplace in which ownership of digital items is transferred from one party (usually called “Alice”) to another party (usually called “Bob”) by Alice applying a digital signature to it and designating Bob as the recipient (assign and sign: Alice is the assignator, Bob the assignee). In a blockchain-based digital marketplace, Alice, Bob, and any other commercial agents each use a public/private cryptographic key. The public key serves as the address to which digital items are assigned, the private key as the way to sign these digital items, authorizing their transfer from one party (or address) to another) [Mind-Matters, page 3, 4].
Regarding claim 16, as combined and under the same rationale as above, Desai in view of Tietzen, Sutton-Shearer and Mind-Matters teaches system and method, wherein NFT is signed by a private key or a public key that is associated with an owner of the NFT [as responded to above, Mind-Matters, page 3, 4].
Regarding claim 20, as combined and under the same rationale as above, Desai in view of Tietzen, Sutton-Shearer and Mind-Matters teaches system and method, wherein the at least one of the digital tokens is signed by a private key or a public key [as responded to above, Mind-Matters, page 3, 4].
Response to Arguments
Applicant’s arguments with respect to claims 2 – 21 have been considered but are moot because applicant’s arguments are directed to amended invention. While performing an updated search, a new prior art was found and cited in this office action. Therefore, applicant‘s are moot under new grounds of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Levi et al. published article “An Introduction to Smart Contracts and Their Potential and Inherent Limitations”.
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 Naresh Vig whose telephone number is (571)272-6810. The examiner can normally be reached Mon-Fri 06:30a - 04:00p.
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/NARESH VIG/Primary Examiner, Art Unit 3622
February 16, 2026