Prosecution Insights
Last updated: April 19, 2026
Application No. 18/438,206

COMPUTER-READABLE RECORDING MEDIUM, SYSTEM AND CONTROL METHOD

Final Rejection §102§103
Filed
Feb 09, 2024
Examiner
WORKU, SARON MATTHEWOS
Art Unit
2408
Tech Center
2400 — Computer Networks
Assignee
Square Enix Co. Ltd.
OA Round
2 (Final)
67%
Grant Probability
Favorable
3-4
OA Rounds
2y 7m
To Grant
99%
With Interview

Examiner Intelligence

Grants 67% — above average
67%
Career Allow Rate
12 granted / 18 resolved
+8.7% vs TC avg
Strong +54% interview lift
Without
With
+53.6%
Interview Lift
resolved cases with interview
Typical timeline
2y 7m
Avg Prosecution
30 currently pending
Career history
48
Total Applications
across all art units

Statute-Specific Performance

§101
2.8%
-37.2% vs TC avg
§103
46.6%
+6.6% vs TC avg
§102
37.0%
-3.0% vs TC avg
§112
10.5%
-29.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 18 resolved cases

Office Action

§102 §103
Detailed Action This office action is in response to applicant’s submission filed on January 16, 2026. Claims 3 and 8 are canceled. Claims 1-2, 4-7, and 9 are pending and rejected. 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 . Response to Amendment This communication is in response to the amendment filed on January 16, 2026. The Examiner has acknowledged the amended claims 1, 6, and 7. Claims 3 and 8 are canceled. Claims 1-2, 4-7, and 9 are pending and rejected. Response to Arguments Applicant’s Arguments (Remarks) filed January 16, 2026 have been fully considered, but are not persuasive. Note that this action is made FINAL. See MPEP § 706.07(a). The applicant argues the prior art fails to teach the amendments. Examiner respectfully disagrees. The prior art teaches a system that produces information about assets for a display/inventory and reinforces that this information is shown to the user through a UI. They also show the one or more assets and how the user may directly control the number of assets (pieces of designated content) in the request as the user controls which assets are in or out. The texts also show that the quantity is increasable and/or decreasable as there is an opting in (increase) and opting out (decrease) mechanism, as well as explicitly showing adding or removing pieces as well (included/excluded). Each digital asset is treated as a unit in the inventory (opt-in/opt-out applies to assets individually/selection of one or more, one asset = one unit, more assets = multiple units). Examiner also notes that these texts teach a user interface in which digital assets, each constituting a unit, are displayed and selectively included or excluded by the user. This selection directly results in increasing or decreasing the quantity of content designated for processing, thereby satisfying the limitation that the quantity be increasable or decreasable in user-settable units. The user performs these adjustments directly within the interface, showing that such changes occur on the content moving screen. Note that this limitation was moved up from claims 3/8. See also 102 rejection below. Therefore, Examiner notes that the amended claim limitations are still taught by Koch. The amendments to claim 6 has resolved the claim objection. Claim Rejections - 35 USC § 102 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Claims 1 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 11138580 B1 to Koch. Regarding claim 1, Koch discloses: A non-transitory computer-readable recording medium having recorded thereon a program to be executed in a server apparatus in a system that includes a terminal apparatus and the server apparatus connected to the terminal apparatus through a communication network and that provides a service including one or more pieces of content (“Electronic storage 130 may comprise non-transitory storage media that electronically stores information. The electronic storage media of electronic storage 130 may include one or both of system storage that is provided integrally (i.e., substantially non-removable) with server(s) 102 and/or removable storage that is removably connectable to server(s) 102 via, for example, a port (e.g., a USB port, a firewire port, etc.) or a drive (e.g., a disk drive, etc.). Electronic storage 130 may include one or more of optically readable storage media (e.g., optical disks, etc.), magnetically readable storage media (e.g., magnetic tape, magnetic hard drive, floppy drive, etc.), electrical charge-based storage media (e.g., EEPROM, RAM, etc.), solid-state storage media (e.g., flash drive, etc.), and/or other electronically readable storage media. Electronic storage 130 may include one or more virtual storage resources (e.g., cloud storage, a virtual private network, and/or other virtual storage resources). Electronic storage 130 may store software algorithms, information determined by processor(s) 132, information received from server(s) 102, information received from client computing platform(s) 104, and/or other information that enables server(s) 102 to function as described herein” [Col. 16, lines 21-42] [Examiner notes that the client computing platform(s) 104 are interpreted as the terminal apparatus (server processes and stores content and terminal displays content and lets user interact). Information received from the client computing platform(s) 104 implies that there is a network connecting the server and the terminal so data can flow back and forth]; “Users of online gaming platforms exchanging digital in-game assets to other users through a centralized exchange server (such as the online gaming platform itself) is known” [Col. 1, lines 13-16] [Examiner added this text to show that a server (online gaming platform) can provide a service including pieces of content to the terminal]), wherein the terminal apparatus and/or the server apparatus are/is capable of communicating with a distributed ledger network (“In some implementations, components of system 100 may be configured to communicate with one or more of online gaming platform(s) 105, decentralized ledger server(s) 111, external payment application server 115, client computing platform(s) 104, users 123, and/or other components” [Col. 5, lines 44-47] [Examiner interprets the decentralized ledger server to be to be the distributed ledger network because it is a node that stores, verifies, and distributes ledger data, so communicating with it effectively lets the terminal or server access the whole network]), ownership of the content is recordable in the distributed ledger network (“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” [Col. 1, lines 41-43]), the content is stored in a storage device of the server apparatus or recorded on a distributed ledger included in the distributed ledger network (“Electronic storage 130 may store software algorithms, information determined by processor(s) 132, information received from server(s) 102, information received from client computing platform(s) 104, and/or other information that enables server(s) 102 to function as described herein” [Col. 16, lines 37-42] [Examiner notes that this information can include the content (digital assets)]), and the program, when executed, causes the server apparatus to perform: acquiring information about the content recorded on the distributed ledger in the distributed ledger network (“The online gaming platform may be configured to access the blockchain to obtain asset information about one or more of the digital assets such that the recorded rights of the one or more digital assets reflect ownership by the first user” [Col. 1, lines 55-59); acquiring information about the content stored in the storage device of the server apparatus (“Electronic storage 130 may store software algorithms, information determined by processor(s) 132, information received from server(s) 102, information received from client computing platform(s) 104, and/or other information that enables server(s) 102 to function as described herein” [Col. 16, lines 37-42] [Examiner notes that this text explicitly shows that the server apparatus has its own storage device (electronic storage 130, where the "content" resides, and that the server can acquire/use that information when executing the program]); outputting information for displaying on-chain information and off-chain information of the content designated from a user on a content moving screen (“By way of non-limiting example, FIG. 4 depicts a user interface 400, as may be presented to individual users through particular user interfaces 125 to facilitate the exchange of digital assets (and/or information about digital assets) between users. Available digital assets for exchange (for a particular user) may be presented as an inventory 41, including a list of virtual items (from 1 to 5), associated item information (from 1 to 5), and graphical user interface elements (here, action buttons) that enable an individual user to toggle visibility, such as, for example an action button 42 that would, upon activation by the individual user, make virtual item 1 visible to other users (through an inventory request as described elsewhere in this disclosure). In some implementations, the associated virtual item information (here, item information 1 to 5) may include item-specific information. For example, store interface 400 may be presented to user 11 (in FIG. 3), such that activation of action button 42 causes an information to be shared with user 12, similar to sharing 34 (FIG. 3)” [Col. 12, lines 28-46]; “By way of non-limiting example, FIG. 5B illustrates a blockchain 111 c that includes the same blocks as blockchain 111 b of FIG. 5A, plus additional blocks (block 3, block 4, block 5) that have been appended to the blockchain. Block 3 may be connected to block 2 (as indicated by a link 50 c), block 4 may be connected to block 3 (as indicated by a link 50 d), and block 5 may be connected to block 4 (as indicated by a link 50 e). In block 3, another asset (labeled Ax, having associated metadata 44) of type “X” is assigned to user q (Uq). At least the identifier (here, “#002”) and the certificate of authenticity in metadata 44 will be different than the identifier and the certificate of authenticity in metadata 42 of FIG. 5A. Block 4 includes two transactions (indicated by a capital “T”): a first transaction from user i to user n. For example, the transaction may represent a purchase of a first virtual item by user n. Additionally, block 4 includes a second transaction from user q to the same smart contract as depicted in block 0. For example, the second transaction may represent user q offering to exchange a particular digital asset of the given type “X” for a particular benefit. At some point, user p may provide the particular benefit and the ownership of the particular digital asset may be subsequently recorded as and/or otherwise assigned to user p. Block 5 includes this transaction (indicated by a capital “T”), representing a non-temporary transfer of ownership of the particular digital asset of the given type “X” from old owner user q to new owner user p. For example, the transaction in block 5 may occur after user p provides the particular benefit in exchange for ownership of the particular digital asset” [Col. 14, line 61-Col. 15, line 23] [Examiner is using text 1 to show how the inventory 41 can list virtual items (off-chain content stored on the server) and associated item information including metadata, stats, images, etc. (also off-chain) can be displayed and how the action buttons allow the user to select/designate a content item (dynamic content moving screen is the inventory interface itself). The second text has blocks 3-5 to show ownership assignments, transaction history, certificates of authenticity and metadata which are all recorded on-chain in the blockchain. This on-chain information can be displayed alongside the off-chain information since any information the server has, including the on-chain information, can be output by the server to the terminal because the server's role is to serve and display content]); and outputting information for displaying a quantity of pieces of the designated content to be moved such that the quantity is increasable or decreasable in one or more predetermined units settable by the user, the one or more predetermined units increasable or decreasable by the user and changeable on the content moving screen (“Inventory component 112 may be configured to receive requests for information, including but not limited to (particular types of) inventory requests for information regarding particular digital assets and/or user-specific inventories. For example, a particular inventory request may request information regarding one or more digital assets in a particular user inventory of a particular user... In some implementations, a user may select to opt-in one or more digital assets from the user's inventory with regard to inventory requests. In some implementations, a user may select to opt-out one or more digital assets from the user's inventory with regard to inventory requests” [Col. 8, lines 55-67]; “Input component 122 may be configured to receive user input from users. In some implementations, user input may be received through user interfaces 125. In some implementations, user input may provide entry and/or selection of one or more digital assets to be included by inventory component 112. In some implementations, user input may provide entry and/or selection of one or more digital assets to be excluded by inventory component 112” [Col. 11, lines 19-26] [Examiner notes that these 2 texts together align with the limitations of the claims. The texts shows that the system produces information about assets for a display/inventory and reinforces that this information is shown to the user through a UI. They also show the one or more assets and how the user may directly control the number of assets (pieces of designated content) in the request as the user controls which assets are in or out. The texts also show that the quantity is increasable and/or decreasable as there is an opting in (increase) and opting out (decrease) mechanism, as well as explicitly showing adding or removing pieces as well (included/excluded). Each digital asset is treated as a unit in the inventory (opt-in/opt-out applies to assets individually/selection of one or more, one asset = one unit, more assets = multiple units). Examiner also notes that these texts teach a user interface in which digital assets, each constituting a unit, are displayed and selectively included or excluded by the user. This selection directly results in increasing or decreasing the quantity of content designated for processing, thereby satisfying the limitation that the quantity be increasable or decreasable in user-settable units. The user performs these adjustments directly within the interface, showing that such changes occur on the content moving screen)]. Claim 6 recites substantially the same limitation as claim 1, in the form of a system for implementing the corresponding non-transitory computer-readable recording medium, therefore it is rejected under the same rationale. Regarding claim 5, Koch discloses: the program recorded on the non-transitory computer-readable recording medium according to claim 1 is installed (Electronic storage 130 may comprise non-transitory storage media that electronically stores information. The electronic storage media of electronic storage 130 may include one or both of system storage that is provided integrally (i.e., substantially non-removable) with server(s) 102 and/or removable storage that is removably connectable to server(s) 102 via, for example, a port (e.g., a USB port, a firewire port, etc.) or a drive (e.g., a disk drive, etc.). Electronic storage 130 may include one or more of optically readable storage media (e.g., optical disks, etc.), magnetically readable storage media (e.g., magnetic tape, magnetic hard drive, floppy drive, etc.), electrical charge-based storage media (e.g., EEPROM, RAM, etc.), solid-state storage media (e.g., flash drive, etc.), and/or other electronically readable storage media. Electronic storage 130 may include one or more virtual storage resources (e.g., cloud storage, a virtual private network, and/or other virtual storage resources). Electronic storage 130 may store software algorithms, information determined by processor(s) 132, information received from server(s) 102, information received from client computing platform(s) 104, and/or other information that enables server(s) 102 to function as described herein” [Col. 16, lines 21-42]). 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. Claims 2, 4, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over US 11138580 B1 to Koch in view of JP 7063512 B1 to Ryuta. Regarding claim 2, Koch discloses all limitations of claim 1. Koch does not explicitly disclose: wherein the program, when executed, further causes the server apparatus to perform: acquiring a quantity of pieces of the designated content to be moved, the quantity of pieces received by the terminal apparatus, and moving processing that issues a non-fungible token (NFT) for the acquired quantity of pieces of the designated content to be moved and deletes the acquired quantity of pieces of the designated content from the storage device of the server apparatus, in a case of moving the designated content from the server apparatus to the distributed ledger network, and/or deletes the NFT of the acquired quantity of pieces of the designated content to be moved and registers the acquired quantity of pieces of the designated content in the storage device of the server apparatus, in a case of moving the designated content from the distributed ledger network to the server apparatus. However, Ryuta discloses: wherein the program, when executed, further causes the server apparatus to perform: acquiring a quantity of pieces of the designated content to be moved, the quantity of pieces received by the terminal apparatus, and moving processing that issues a non-fungible token (NFT) for the acquired quantity of pieces of the designated content to be moved and deletes the acquired quantity of pieces of the designated content from the storage device of the server apparatus, in a case of moving the designated content from the server apparatus to the distributed ledger network, and/or deletes the NFT of the acquired quantity of pieces of the designated content to be moved and registers the acquired quantity of pieces of the designated content in the storage device of the server apparatus, in a case of moving the designated content from the distributed ledger network to the server apparatus (“As shown in FIG. 7, the user US1 operates the user terminal 10-1 while the target application is being executed on the user terminal 10-1, and requests to issue a token associated with the image IM 10. Is sent to the server 30. The server 30 requests the distributed ledger system 50 to issue a token associated with the image IM 10 in response to the issuance request. Here, the server 30 may collect a fee for the user US1 and issue the token after the payment is completed. As a result, the cost associated with the issuance of the token can be reliably recovered. When the distributed ledger system 50 completes the issuance of the token associated with the image IM 10, the user US1 can acquire the token using the user terminal 10-1. On the other hand, the server 30 deletes the image IM 10 from the storage device 31 after issuing the token. This makes it possible to prevent the value of the image IM 10 from being diluted due to the image IM 10 coexisting on the server 30 separately from the token. The image IM10 is typically stored on an external server (eg, a server provided by an NFT trading platform) or embedded in a token. In any case, in order to view the image IM10, the information described in the token associated with the image IM10 is required. Thereby, the token associated with the image IM10 proves that the owner of the token is the owner of the image IM10” [0043] [Examiner notes that the image IM 10 would be interpreted as the designated content as that is the content that the system identifies to be moved. The server also deletes the designated content from the storage device after issuing the token (NFT), which is on the flow of describing moving IM 10 off the server and onto the blockchain]). Thus, it 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, to combine the method of Koch with the added structure of Ryuta in order to prevent the value of the image IM10 from being diluted due to coexistence of the image IM10 on the server 30 [Ryuta 0043]. Claim 7 recites substantially the same limitation as claims 1 and 2, in the form of a control method for implementing the corresponding non-transitory computer-readable recording medium, therefore it is rejected under the same rationale. Regarding claims 4 and 9, Koch discloses all limitations of claims 1/2. Koch does not explicitly disclose: wherein the program, when executed, further causes the server apparatus to perform outputting information for displaying the acquired information about the content such that the acquired information is designatable through a one-time operation. However, Ryuta discloses: wherein the program, when executed, further causes the server apparatus to perform outputting information for displaying the acquired information about the content such that the acquired information is designatable through a one-time operation (“As shown in FIG. 7, the user US1 operates the user terminal 10-1 while the target application is being executed on the user terminal 10-1, and requests to issue a token associated with the image IM 10. Is sent to the server 30. The server 30 requests the distributed ledger system 50 to issue a token associated with the image IM 10 in response to the issuance request. Here, the server 30 may collect a fee for the user US1 and issue the token after the payment is completed. As a result, the cost associated with the issuance of the token can be reliably recovered. When the distributed ledger system 50 completes the issuance of the token associated with the image IM 10, the user US1 can acquire the token using the user terminal 10-1. On the other hand, the server 30 deletes the image IM 10 from the storage device 31 after issuing the token. This makes it possible to prevent the value of the image IM 10 from being diluted due to the image IM 10 coexisting on the server 30 separately from the token. The image IM10 is typically stored on an external server (eg, a server provided by an NFT trading platform) or embedded in a token. In any case, in order to view the image IM10, the information described in the token associated with the image IM10 is required. Thereby, the token associated with the image IM10 proves that the owner of the token is the owner of the image IM10” [0043] [Examiner notes that this text shows that the user sees the content (IM 10) in the UI before taking action and the server has already "acquired" the content (stored on server 30) and is ready to act on it. The user is selecting which content to act on which corresponds to the "designatable" aspect of the limitation as the content can be chosen for processing. All actions (token issuance + deletion of original image) happen in response to a single user request which is the one-time operation]). Thus, it 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, to combine the method of Koch with the added structure of Ryuta in order for the usability of the service to be improved. 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 extension fee 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 date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARON MATTHEWOS WORKU whose telephone number is (703)756-1761. The examiner can normally be reached Monday - Friday, 9:30am - 6:30pm. 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, Linglan Edwards can be reached on 571-270-5440. 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. /SARON MATTHEWOS WORKU/Examiner, Art Unit 2408 /LINGLAN EDWARDS/Supervisory Patent Examiner, Art Unit 2408
Read full office action

Prosecution Timeline

Feb 09, 2024
Application Filed
Oct 09, 2025
Non-Final Rejection — §102, §103
Jan 16, 2026
Response Filed
Mar 18, 2026
Final Rejection — §102, §103 (current)

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Prosecution Projections

3-4
Expected OA Rounds
67%
Grant Probability
99%
With Interview (+53.6%)
2y 7m
Median Time to Grant
Moderate
PTA Risk
Based on 18 resolved cases by this examiner. Grant probability derived from career allow rate.

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