DETAILED ACTION
Introduction
This Office action is responsive to the communications filed January 20, 2026. Claims 1, 7, 17, and 78 were amended. Claims 1-7, 12, 17, 54, 55, 61, 65, 78-79, and 104-108 are pending.
Response to Arguments
1. Applicant has amended the claims, thereby the objection to the claims has been withdrawn.
2. Applicant has amended the claims, thereby overcoming the 35 USC 112 rejection.
3. Claims 104-108 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on August 20, 2025.
4. As per the 35 USC 101 rejection, Applicant asserts the following:
the claims are not directed to an abstract idea;
the claims are not merely displaying or transmitting information; it is changing the state of a distributed computing system; and
the claims recite significantly more through a non-conventional ordered combination of elements that results in minting a cryptographic token on a blockchain.
However, the Examiner respectfully disagrees. The claims are directed to a broadcasting a transaction across a plurality of blockchain node, which is the abstract idea of transmitting information over a network. See MPEP 2106.05(c). As per changing the state, the transformation is not of an article or substance. Further, the additional elements are performing basic/conventional computer functions such as displaying, receiving, populating a GUI. buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)
5. As per the 35 USC 103 rejection, Applicant asserts that Sulibhavi does not disclose or suggest an application platform or a “create NFT” GUI as required by claim 1.
However, the Examiner respectfully disagrees. Sulibhavi discloses the application platform at paragraph [0044] and “create NFT” is illustrated in Fig. 15 (“Create NFT”).
6. Applicant submits that Sulibhavi does not disclose “establishing at least one default NFT field value” of claim 1.
However, the Examiner respectfully disagrees. Fig. 13 (“Values read from blockchain” and “Values”).
7. As per the other augments, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
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.
Claim 7 is 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.
Particularly, the claim recites “NFT name value,” which is not described in the specification.
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 1-7, 12, 17, 54-55, 61, 65, 78, and 79 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-7, 12, 17, 54, 55, 61, 65, 78, and 79 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
For example, claim 1 recites an abstract idea of transmitting information over a network. The claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The certain methods of organizing human activity abstract idea grouping is defined as concepts related to fundamental economic principles or practices, commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. See MPEP § 2106.04(a)(2), subsection II. The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity” grouping of abstract ideas as they relate to transmitting information over a network. More specifically, the following the bolded claim elements recite additional elements while the other claim elements recite the abstract idea. according to MPEP 2106.04(a).
(Original) A computer method for making a non-fungible token (NFT), comprising:
with a computing device operatively coupled to a computer network, a blockchain node, and a network storage node, driving, via an application program interface (API) and an application platform, an electronic display of a user device to present a "create NFT" graphical user interface (GUI) including at least two controls, wherein the user has a corresponding user account associated with the application platform;
displaying, in the "create NFT" GUI, a "file designation" control;
receiving, from the user via the "file designation" control, a designation of a payload file for attachment to an NFT;
establishing at least one default NFT field value;
displaying, in the "create NFT" GUI, a "create NFT" control;
from the user via the "create NFT" control, receiving a "create NFT" command;
with the computing device, storing the designated payload file on the network storage node;
populating a plurality of token data fields including at least one payload file storage address and the at least one default NFT field value into a set of NFT fields for a token- making blockchain transaction; and
broadcasting the token-making blockchain transaction across a plurality of blockchain nodes via the blockchain node to create the NFT disposed in a designated digital wallet associated with the user account.
Independent claim 78 recites similar language.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional element(s) of the claim(s) such as the NFT, computing device, computer network, blockchain node, network storage node, API, application platform, electronic display, user device and GUI are merely used as tools to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, these additional elements perform the steps or functions of transmitting information over a network.. Viewed as a whole, the use of NFT, computing device, computer network, blockchain node, network storage node, API, application platform, electronic display, user device and GUI as tools to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer or computer networks performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional element(s) of the NFT, computing device, computer network, blockchain node, network storage node, API, application platform, electronic display, user device and GUI to perform the steps amounts to no more than using generic hardware or software to automate and/or implement the abstract idea of transmitting information over a network. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of transmitting information over a network. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
The dependent claims further describe the abstract idea such as displaying an “NFT CREATED” GUI , populating the plurality of token data fields, and driving the electronic display to display the GUI including an “NFT name” control.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
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 1-7 and 78 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2023/0188600 to Sulibhavi et al. (“Sulibhavi”) in view of U.S. Publication No. 2024/0185223 to McGarity et al. (“McGarity”).
As per claim 1, Sulibhavi discloses with a computing device operatively coupled to a computer network, a blockchain node, and a network storage node, driving, via an application program interface (API) and an application platform, an electronic display of a user device to present a "create NFT" graphical user interface (GUI) including at least two controls, wherein the user has a corresponding user account associated with the application platform (paragraphs [0040], [0100], Fig. 1);
displaying, in the "create NFT" GUI, a "file designation" control; receiving, from the user via the "file designation" control, a designation of a payload file for attachment to an NFT; establishing at least one default NFT field value; displaying, in the "create NFT" GUI, a "create NFT" control; from the user via the "create NFT" control, receiving a "create NFT" command; with the computing device, storing the designated payload file on the network storage node;
populating a plurality of token data fields including at least one payload file storage address and the at least one default NFT field value into a set of NFT fields for a token-making blockchain transaction and broadcasting the token-making blockchain transaction across a plurality of blockchain nodes via the blockchain node to create the NFT disposed in a designated digital wallet associated with the user account (Fig. 13-15).
Fig. 13-15 illustrates the token field being filled with data and a submit button for the user to submit the data, which suggest that the fields are being populated and the transaction broadcasted. Therefore, these steps are old and well known in the art.
Additionally, McGarity discloses populating a plurality of token data fields including at least one payload file storage address and the at least one default NFT field value into a set of NFT fields for a token-making blockchain transaction (paragraph [0059]) and broadcasting the token-making blockchain transaction across a plurality of blockchain nodes via the blockchain node to create the NFT disposed in a designated digital wallet associated with the user account (paragraphs [0030], [0033], and [0060]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Sulibhavi to include the features of McGarity. Hence, 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, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per claim 2, Sulibhavi discloses displaying an "NFT CREATED" GUI when the token-making blockchain transaction is complete (Fig. 15).
As per claim 3, Sulibhavi discloses only commands received directly from the user consist essentially of the designation of the payload file for attachment to the NFT and actuation of the "create NFT" command (Fig. 15).
As per claim 4, Sulibhavi in view of McGarity disclose wherein populating the plurality of token data fields including the at least one file storage address into the set of fields for the token-making blockchain transaction includes storing the payload file at a content identifier (CID) in a content-identified data storage network (Sulibhavi at paragraphs [0167] and [0168]; McGarity at paragraphs [0021]-[0023]).
As per claim 5, Sulibhavi discloses wherein the content-identified data storage network comprises interplanetary file system (IPFS) (paragraph [0160]).
As per claim 6, Sulibhavi in combination with McGarity discloses wherein setting at least one data field for the NFT to a default value includes setting respective default values to a plurality of data fields (Sulibhavi – Fig. 5B ; McGarity at paragraphs [0006], [0018]).
As per claim 7, Sulibhavi discloses causing, using the computing device, the electronic display to visually present, as part of the “create NFT” GUI, a control titeled “NFT name”; wherein a default NFT name value of the "NFT name" control is pre-populated in the "NFT name" control; and wherein the default NFT name value is a function of user account information (Fig. 15 and paragraph [0174]).
Claim 78 is rejected on the same rationale as claim 1 above.
Claims 12 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sulibhavi and McGarity as applied to claim 1 above, and further in view of U.S. Publication No. 2021/0097508 to Papanikolas (“Papanikolas”).
As per claim 12, Sulibhavi in view of McGarity disclose causing, using the computer device, the electronic display to display, as part of the "create NFT" GUI (Fig. 15 of Sulibhavi). Sulibhavi does not expressly disclose "Collection" control; wherein the "Collection" control is pre-populated with a default collection name; and wherein the default collection name is set as a function of account information. Papanikolas discloses the GUI including a "Collection" control; wherein the "Collection" control is pre-populated with a default collection name; and wherein the default collection name is set as a function of account information (Fig. 2 and Fig. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Papanikolas into the system of Sulibhavi in view of McGarity. Hence, 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, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per claim 17, Papanikolas discloses upon receiving entry of a collection name from the user via the "Collection" control , the collection name being different than an existing collection name corresponding to a digital wallet holding at least one NFT, the server computer executes the steps of: automatically creating a second designated digital wallet; associating the user-entered collection name with the second designated digital wallet; and causing, using the computing device, the electronic display to present, as part of the create NFT GUI the second designated digital wallet as the user-entered collection name in the "create NFT" GUI. (Fig. 3). Additionally, the examiner notes that it is obvious to try by one of ordinary skill to perform the steps for an additional wallet (i.e. “second designated digital wallet”).
Claims 54 and 55 are rejected under 35 U.S.C. 103 as being unpatentable over Sulibhavi in view of McGarity as applied to claim 1 above, and further in view of WO 2020/025141 to Pomassl et al. (“Pomassl”).
As per claim 54, Sulibhavi in view of McGarity disclose the method of claim 1. The references do not expressly disclose automatically creating the designated digital wallet associated with the user account. Pomassl discloses automatically creating a designated digital wallet associated with a user account (p. 93 at paragraph two -the wallet generator may generate the respective wallets automatically).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Pomassl into the system of Sulibhavi in view of McGarity. Hence, 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, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per claim 55, Pomassl discloses creating the designated digital wallet associated with the user account includes creating a hierarchical deterministic wallet (see claim 36 of Pomassl).
Claim 61 is rejected under 35 U.S.C. 103 as being unpatentable over Sulibhavi in view of McGarity as applied to claim 1 above, and further in view of U.S. Patent No. 12,412,162 to Pospieszalski (“Pospieszalski”)
Sulibhavi in view of McGarity disclose the method of claim 1. The references do not expressly disclose executing a simple ledger protocol (SLP) type 1 genesis transaction to make an SLP type 1 NFT. Pospieszalski discloses the SLP (col. 18, ll. 10-17).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Pospieszalski into the system of Sulibhavi in view of McGarity. Hence, 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, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 65 is rejected under 35 U.S.C. 103 as being unpatentable over Sulibhavi in view of McGarity as applied to claim 1 above, and further in view of U.S. Publication No. 2022/0101316 to Cramer.
Sulibhavi in view of McGarity disclose the method of claim 1. The references do not expressly disclose details regarding UTXO. McGarity discloses broadcasting the token-making blockchain transaction across a plurality of blockchain nodes via the blockchain node to create the NFT includes executing a "make NFT" transaction on an unspent transaction output (UTXO) public blockchain (paragraph [0039]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Cramer into the system of Sulibhavi in view of McGarity. Hence, 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, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 79 is rejected under 35 U.S.C. 103 as being unpatentable over Sulibhavi in view of McGarity as applied to claim 1 above, and further in view of Shirai
Sulibhavi in view of McGarity disclose the method claim 1. Sulibhavi in view of McGarity does not expressly disclose adjusting a size of the payload file to create an icon image having a predetermined size for displaying on an “NFT card.” Shirai discloses adjusting a size of the payload file to create an icon image having a predetermined size (Fig. 13 image to Fig 14 is an adjustment). Functional recitation(s) using the word "for" and “to create” have been considered but does not patentable distinguish the claims from the prior art because they fail to add any steps are thereby regarded as intend use language. A recitation of the intended use of the claimed invention must result in additional steps. See Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1375-76, 58 USPQ2d 1508, 1513 (Fed. Cir. 2001) (Where the language in a method claim states only a purpose and intended result, the expression does not result in a manipulative difference in the steps of the claim.)
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 JALATEE WORJLOH whose telephone number is (571)272-6714. The examiner can normally be reached Monday-Friday 6:00am-2:00pm.
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/Jalatee Worjloh/Primary Examiner, Art Unit 3697
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