DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgements
The instant application is a continuation-in-part of application 18/351,849, which claims benefit to provisional application 62/776,699, filed 12/07/2018. Examiner notes that the subject matter being claimed in the instant application is not supported in the provisional application or any of the subsequent applications preceding the instant application. Therefore, the current effective filing date of the claimed subject matter is 02/16/2024.
The reply filed 02/04/2026 is acknowledged. Claims 1, 6, and 10 have been amended. Claims 11-20 were previously withdrawn. Claims 1-20 are pending, claims 1-10 are presented for examination.
Response to Arguments
Applicant’s amendments to claim 10, filed 02/04/2026, have overcome the claim objection and 35 U.S.C. 112(b) rejection of claim 10 previously set forth in the Non-Final Rejection 10/07/2025. Therefore, the claim objection and 35 U.S.C. 112(b) rejection of claim 10 have been withdrawn.
Applicant's arguments filed 02/04/2026 have been fully considered but they are not persuasive.
Applicant’s remarks directed to Mann et al. WO 2023/233393 for failing to teach the “storefront” and “drop-ship” distribution model are not persuasive. Nieto et al. U.S. 2023/0110817 was used to teach these elements, which were elements of claim 6 that have now been incorporated into claim 1.
Applicant’s remarks directed to Mann for failing to teach the “granting…authorization to produce” limitation are not persuasive. The claim limitations do not claim any particular elements that specify how the granting is performed. A user can be authorized to physically produce physical items based on authentication of ownership. In other words, a user can be allocated permission to produce physical items based on authenticating their ownership. Mann discloses on pg. 12, lines 21-23 – “The smart contracts may be therefore configured to first verify ownership of the digital assets by the users and distribute the production instruction to the users based on the ownership verification,” pg. 18, lines 29-30 – “the production instructions created by the contract generator 230 may include an authorization and/or a “GO” command instructing the production system(s) 216 to produce the physical item,” pg. 19, lines 32-34 – “distribution of the production instructions for producing the physical item corresponding to the digital asset is subject to successful authentication and verification of the unique key provided by the user 212 to prove his ownership of the digital asset.” Therefore, authorization for production is based on authentication. Furthermore, Mann discloses on pg. 20, lines 9-10 – “the smart contract 240 may further define a maximal number of copies of the physical item to be produced by the production system(s) 216.” The act of defining a maximal number of copies to be produced along with distributing the production instructions are analogous to “granting the user authorization to produce up to a predetermined number of physical units of the article of footwear or apparel represented by the cryptographic digital asset.” In the case of Mann, authenticating leads to authorizing. Furthermore, since the claimed invention has not specifically claimed how the authorization is granted, it is reasonable that Mann’s teachings of going forward with production based on authenticating the user, i.e. giving permission based on the user being the owner, reads on the current claim language.
Applicant’s remarks directed to Nieto for not teaching a B2B2C model where the manufacturer ships to “a customer of the user” is not persuasive. As the remarks have noted, Nieto discloses in [0063] – “a virtual storefront where users…can buy, trade, or sell digital assets with other users.” Therefore, Nieto discloses “an e-commerce storefront operated by the user.” Furthermore, Nieto discloses in [0161] – “ship the custom physical product directly to the customer (i.e., bypassing a physical store),” which is exactly what the claimed invention is claiming, “shipping the ordered physical units to the customer of the user.” The claimed invention is not claiming a “Business-to-Business-to-Consumer” (B2B2C) distribution structure. At most, the claimed invention is actively claiming a fulfilling an order by shipping the ordered physical units to a customer. There is no claim limitation directed to B2B, or business-to-business. Dropshipping is a known business model in the art wherein the ordered products are shipped directly to the consumer from a manufacturer, as supported by Applicant’s remarks, filed 02/04/2026, see pg. 7, last paragraph, which is exactly what Nieto discloses in [0161].
Applicant’s remarks directed to Jenkins “Inventory Allocation Defined: Methods & Best Practices” are not persuasive since Jenkins was not used to teach the now incorporated limitations of Claim 6.
Claim Objections
Claim 1 is objected to because of the following informalities: “the customer” should be “a customer.” Appropriate correction is required.
Claim 6 is objected to because of the following informalities: “a customer” should be “the customer.” Appropriate correction is required.
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1-10 fall into at least one of the four categories of statutory subject matter. The eligibility analysis proceeds to Step 2A.1.
Step 2A.1:
The limitations of independent claim 1 have been denoted with letters by the Examiner for easy reference. The judicial exceptions recited in claim 1 are identified in bold below:
A computer-implemented method for enabling holders of cryptographic digital assets that digitally represent articles of footwear or apparel to produce limited quantities of a physical rendition of the digitally represented articles of footwear or apparel, the method comprising:
receiving, by a computer system, data indicating a user has acquired a cryptographic digital asset representing an article of footwear or apparel;
responsive to receiving the data, granting the user authorization to produce up to a predetermined number of physical units of the article of footwear or apparel represented by the cryptographic digital asset;
receiving, by the computer system via an electronic order portal, a purchase order from the user to produce a specified quantity, up to the predetermined number, of the physical units according to the authorization, wherein receiving the purchase order comprises receiving an order for one or more of the physical units of the article of footwear or apparel through an e-commerce storefront operated by the user; and
fulfilling, by the computer system, the purchase order to provide the specified quantity of physical units to the user, wherein fulfilling the purchase order comprises shipping the ordered physical units to the customer of the user.
Under the broadest, most reasonable interpretation, A-E recite limitations that are reasonably categorized under certain methods of organizing human activity. Specifically, the bolded limitations can be grouped as commercial or legal interactions. Granting the user authorization to produce physical units of a digital asset and fulfilling a purchase order are analogous to business interactions and/or sales activities.
Claim 1 recites at least one abstract idea. The eligibility analysis proceeds to Step 2A.2.
Step 2A.2:
The judicial exception is not integrated into a practical application. In particular, claim 1 recites the additional element(s) not in bold above.
The additional elements have all been recited at a high-level of generality such that they amount to no more than generic computing components. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, the claims amount to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. These additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 1 does not recite additional elements that integrate the judicial exception into a practical application. The eligibility analysis proceeds to Step 2B.
Step 2B:
The additional elements, both individually and as an ordered combination, do not amount to significantly more than the judicial exception because the outcome of the considerations at Step 2B will be the same when considerations from Step 2A.2 are re-evaluated. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Claim 1 is not patent eligible.
Dependent Claims
Dependent claims 2-5 do not recite any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claim from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent claims 6-7 recite “website,” “web application or application programming interface,” “an internet-based,” and “a digital marketplace platform” as additional elements. However, they have all been recited at a high-level of generality such that they amount to no more than generic computing components. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, the claims amount to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. These additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claims 8-10 introduces an additional abstract idea: mental process. Analyzing factors and aggregated data, and adjusting generative algorithms can be reasonably grouped under mental process – concepts performed by the human mind or by a human using a pen and paper. Claim 9 provides further context on what the digital asset factors include, but does not recite any new additional elements. Therefore, claims 8-10 recites abstract ideas that can be reasonably categorized under multiple groupings without reciting any new additional elements. When the additional elements are considered individually and as an ordered combination with the abstract idea, the claims amount to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. These additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea(s) into a patent eligible application such that the abstract idea amounts to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, claims 1-10 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Mann et al. WO 2023/233393 (herein as “Mann”) in view of Nieto et al. U.S. 2023/0110817 (herein as “Nieto”).
Re Claim 1, a computer-implemented method for enabling holders of cryptographic digital assets that digitally represent articles of footwear or apparel pg. 14, lines 27-28 to produce limited quantities of a physical rendition of the digitally represented articles of footwear or apparel pg. 6, lines 17-18, the method comprising:
receiving, by a computer system, data indicating a user has acquired a cryptographic digital asset representing an article of footwear or apparel Fig. 1, 102 – “receive a request from a user to produce a physical item corresponding to a digital asset owned by the user”;
responsive to receiving the data, granting the user authorization to produce up to a
predetermined number of physical units of the article of footwear or apparel represented by the cryptographic digital asset (pg. 12, lines 21-23 – “The smart contracts may be therefore configured to first verify ownership of the digital assets by the users and distribute the production instruction to the users based on the ownership verification,” Fig. 1, 106 – transmit the unique key to the user, pg. 17, lines 23-24 – “the unique key may provide…proof of ownership of the digital asset by the user 212,” pg. 20, lines 9-10 – “the smart contract 140 may further define a maximal number of copies of the physical item to be produced,” thereby granting the user authorization to produce physical unit(s) because they now possess proof that they own the digital asset);
receiving, by the computer system via an electronic order portal Fig. 2, 200, pg. 15, lines 7-9 – “The contracts generation system 200 may communicate…with the client devices 210 used by one or more of the…users 212,” a purchase order from the user to produce a specified quantity, up to the predetermined number, of the physical unit according to the authorization (Fig. 3, 302 – “receive a request from a user to provide production instructions for producing a physical item, the request comprising a unique key,” i.e. according to the authorization) […]; and
Under the broadest, most reasonable interpretation, “a specified quantity” can be a quantity of 1. Therefore, the user requesting to produce a physical item is analogous to an order to produce a specified quantity of 1.
fulfilling, by the computer system, the purchase order to provide the specified quantity of physical units to the user (Fig. 3, 308 and 312 – “provide the production instructions” and “produce the physical item”) […].
However, Mann does not expressly disclose
wherein receiving the purchase order comprises receiving an order for one or more of the physical units of the article of footwear or apparel through an e-commerce storefront operated by the user; and
wherein fulfilling the purchase order comprises shipping the ordered physical units to the customer of the user.
Nieto discloses a digital asset system that interconnects the processing of digital assets and related physical products within an enterprise network. Specifically, Nieto discloses
wherein receiving the purchase order comprises receiving an order for one or more of the physical units of the article of footwear or apparel through an e-commerce storefront operated by the user [0037] – “Back end layer 110 may also be implemented with a processor…for receiving user requests for…purchasing physical products,” “the retail systems may be...online…that sells footwear,” [0063] – “user profiles may be implemented as a virtual storefront where users…can buy, trade, or sell digital assets with other users. Digital assets include not only the virtual representation of a physical product—such as a virtual shoe and a physical shoe…”; and
wherein fulfilling the purchase order comprises shipping the ordered physical units to the customer of the user [0161] – “ship the custom physical product directly to the customer (i.e., bypassing a physical store).”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Mann’s method of producing physical items based on ownership of a corresponding digital asset with the teachings of an online storefront that sells and provides the digital assets and corresponding physical products and shipping to the customer in Nieto. One would be motivated to make the combination to increase the value of digital assets beyond being merely a virtual symbol such that it is beneficial to companies to further increase user engagement and loyalty Nieto, [0004], and to improve overall customer satisfaction by shipping directly to the customer.
Re Claim 2, Mann in view of Nieto teach the computer implemented method of claim 1, and Mann in view of Nieto further teach further comprising linking the physical units to the cryptographic digital asset by storing, printing, or embedding an identifier on each of the physical units, and wherein the identifier uniquely references the cryptographic digital asset Mann, pg. 21, lines 28-29.
Re Claim 3, Mann in view of Nieto teach the method of claim 1, and Mann in view of Nieto further teach wherein fulfilling the purchase order comprises:
extracting, by the computer system, digital data or design files associated with the cryptographic digital asset acquired by the user (Mann, pg. 18, lines 8-9 – “contract generator 230 may obtain production instructions for producing the physical item corresponding to the digital asset owned by the user 212,” lines 10-13 – “the production instructions may be adapted for producing the physical item…according to one or more attributes, parameters, and/or characteristics of the physical item…a type of a design printed…” i.e. digital data or design files);
producing, by manufacturing systems responsive to the extracted data or design files, the specified quantity of physical units Mann, pg. 27, lines 16-18; and
shipping the produced physical units of footwear or apparel to the user or to a customer of the user (Mann, pg. 27, lines 18-19 – “provide it (produced T-shirt) to the user 212A who may use the physical item…happily wear the T-shirt,” thereby suggesting the produced physical item, e.g. T-shirt, must be shipped to the user since the user now possesses the physical item).
Re Claim 5, Mann in view of Nieto teach the method of claim 1, however, Mann does not expressly disclose further comprising:
granting, by the computer system, the user with exclusive resale rights to sell the physical units of the article of footwear or apparel for a defined period or market.
Nieto discloses a digital asset system that interconnects the processing of digital assets and related physical products within an enterprise network. Specifically, Nieto discloses
granting, by the computer system, the user with exclusive resale rights to sell the physical units of the article of footwear or apparel for a defined period or market [0135] – “if registration has completed, user device 240A may be provided access to digital asset subsystem 23 and allowed to perform granted operations,” [0089] – “Digital asset subsystem 235 may include components for managing and customizing digital assets,” “digital assets may be sold and resold by multiple users,” [0116] – “the digital asset may enter a trading period within the digital asset marketplace for a predetermined period of time.”
Digital assets correspond to physical products, therefore, reselling digital assets is analogous to reselling the physical products. Since a one-to-one relationship can exist between a digital asset and a physical product [0115], a user that owns the digital asset has the exclusive right to resell the digital asset. Therefore, a user has the exclusive right to resell the physical product to which the digital asset corresponds because they are the only one who owns the particular digital asset.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Mann’s method of producing physical items based on ownership of a corresponding digital asset with the teachings of allowing a user to resell digital asset(s)/physical product(s) in Nieto. One would be motivated to make the combination because it provides users with the flexibility of buying, selling, and/or trading their assets, thereby increasing the user’s loyalty to services or products offered by the companies Nieto, [0003-4], [0030].
Re Claim 6, Mann in view of Nieto teach the method of claim 1, however, Mann does not expressly disclose
wherein the e-commerce storefront is a website including a web application or application programming interface that receives the order from a customer of the user.
Nieto discloses a digital asset system that interconnects the processing of digital assets and related physical products within an enterprise network. Specifically, Nieto discloses
wherein the e-commerce storefront is a website including a web application or application programming interface that receives an order from a customer of the user [0038] – “provide access to and manage physical products in the physical inventory 112 that may [be] implemented as, for example, a website,” “provide access to and manage digital assets in the digital asset marketplace 114, which may also be implemented as, for example, a website,” “may provide a unified interface for connecting to both the physical inventory 112 and digital asset marketplace 114.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Mann’s method of producing physical items based on ownership of a corresponding digital asset with the teachings of an online storefront that is a website in Nieto. One would be motivated to make the combination to increase the value of digital assets beyond being merely a virtual symbol such that it is beneficial to companies to further increase user engagement and loyalty Nieto, [0004].
Re Claim 7, Mann in view of Nieto teach the method of claim 1, however, Mann does not expressly disclose further comprising:
enabling, by the computer system, secondary market trading of the physical units derived from the cryptographic digital asset by establishing an internet-based storefront for the user on a digital marketplace platform.
Nieto discloses a digital asset system that interconnects the processing of digital assets and related physical products within an enterprise network. Specifically, Nieto discloses
enabling, by the computer system, secondary market trading of the physical units derived from the cryptographic digital asset by establishing an internet-based storefront for the user on a digital marketplace platform [0030] – “provide a marketplace where digital assets may be purchases. Users may also buy, sell, or trade the digital assets,” “process the physical product that corresponds to the digital asset…including…shipping physical product to an owner(s) of the digital asset.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Mann’s method of producing physical items based on ownership of a corresponding digital asset with the teachings of an online storefront that sells and provides the digital assets and corresponding physical products in Nieto. One would be motivated to make the combination to increase the value of digital assets beyond being merely a virtual symbol such that it is beneficial to companies to further increase user engagement and loyalty Nieto, [0004].
Re Claim 8, Mann in view of Nieto teach the method of claim 1, however, Mann does not expressly disclose further comprising:
analyzing, by the computer system, one or more digital asset factors and/or one or more user factors to determine the predetermined number.
Nieto discloses a digital asset system that interconnects the processing of digital assets and related physical products within an enterprise network. Specifically, Nieto discloses
analyzing, by the computer system, one or more digital asset factors and/or one or more user factors to determine the predetermined number ([0073] – “The smart contract can specify that certain products or services (e.g. physical product) can be made available to a customer (i.e. a predetermined number) based on a certain condition when performed by the customer (i.e. user factors)”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Mann’s method of producing physical items based on ownership of a corresponding digital asset with the teachings of considering one or more user factors to determine access to certain products in Nieto. One would be motivated to make the combination to increase overall engagement with the products offered through a company’s various platforms Nieto, [0003].
Re Claim 9, Mann in view of Nieto teach the method of claim 8, and Mann in view of Nieto further teach wherein the one or more digital asset factors includes at least one of:
a rarity of an attribute possessed by the cryptographic digital asset Nieto, [0095]; or
a market demand for a collection of cryptographic digital assets to which the cryptographic digital asset belongs; and
wherein the one or more user factors includes at least one of:
the user's status within a membership or loyalty program;
the existence of a prior partnership or distribution agreement between the user and the manufacturer of the physical units;
a prior sales velocity or volume total of the user from a prior digital-to-physical distribution; or
a customer engagement level or audience reach of the user Nieto, [0074] – “Examples of these conditions including performing certain activities with the digital or physical products, such as posting about the physical product or reaching a milestone with respect to number of followers or posts.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Mann’s method of producing physical items based on ownership of a corresponding digital asset with the teachings of considering one or more user factors to determine access to certain products in Nieto. One would be motivated to make the combination to increase overall engagement with the products offered through a company’s various platforms Nieto, [0003].
Re Claim 10, Mann in view of Nieto teach the method of claim 1, however, Mann does not expressly disclose further comprising:
analyzing, by the computer system, aggregated data indicating attributes of cryptographic digital assets most frequently authorized for physical reproduction; and
adjusting, by the computer system responsive to the analysis, generative algorithms for creating future cryptographic digital assets or physical products to increase prevalence of the attributes most frequently authorized for physical reproduction.
Nieto discloses a digital asset system that interconnects the processing of digital assets and related physical products within an enterprise network. Specifically, Nieto discloses
analyzing, by the computer system, aggregated data indicating attributes of the cryptographic digital assets most frequently authorized for physical reproduction ([0092] – “digital asset subsystem 235 may provide a popularity remixing mode which results in selecting digital asset components based on popularity. The popularity of the digital asset component may be determined by a number of…purchases of the physical product,” determining the popularity of the digital asset component, i.e. attributes, based on number of purchases of physical product suggests an analysis of the data must occur); and
adjusting, by the computer system responsive to the analysis, generative algorithms for creating future cryptographic digital assets or physical products to increase prevalence of the attributes most frequently authorized for physical reproduction ([0093] – “new digital assets may be generated…using artificial intelligence (AI) such as machine learning algorithms that cross-references metrics associated with physical products to generate digital assets that are customized based on real-world sales and usage,” “Digital asset subsystem 235 may train a model based on the metrics to identify physical products and/or their specific components…based on popularity,” i.e. increase prevalence of the attributes most frequently authorized for physical reproduction).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Mann’s method of producing physical items based on ownership of a corresponding digital asset with the teachings of identifying particular attributes to create future digital assets/physical products in Nieto. One would be motivated to make the combination to increase customer loyalty to the services or products of the companies Nieto, [0003].
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Mann et al. WO 2023/233393 (herein as “Mann”) in view of Nieto et al. U.S. 2023/0110817 (herein as “Nieto”) as applied to claim 1 above, and further in view of Jenkins “Inventory Allocation Defined: Methods & Best Practices” (herein as “Jenkins”).
Re Claim 4, Mann in view of Nieto teach the method of claim 1, however, Mann in view of Nieto do not explicitly teach further comprising:
assigning, by the computer system, tiered manufacturing authorizations to different users according to distribution criteria, wherein users meeting higher sales volume criteria are granted higher production quantities.
Jenkins discloses the methods and best practices of inventory allocation. Specifically, Jenkins discloses
assigning, by the computer system, tiered manufacturing authorizations to different users according to distribution criteria, wherein users meeting higher sales volume criteria are granted higher production quantities (pg. 3, last paragraph – “In manufacturing, proper inventory allocation ensures that the right materials are in the right facilities for product production,” allocating inventory is analogous to assigning tiered manufacturing authorizations, pg. 5, 1. Pull allocation – “inventory is sent to where customer demand justifies it need[s] to be,” i.e. higher production quantities based on higher sales volume).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Mann in view of Nieto’s method of producing physical items based on ownership of a corresponding digital asset with the teachings of proper inventory allocation in Jenkins. One would be motivated to make this combination to improve ability to meet customer demand, reduce manufacturing delays, and minimize sales losses Jenkins, pg. 4.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Buerba et al. U.S. Patent 11,334,844 directed to electronic marketplace drop shipping. See at least at least Col. 5, lines 38-58.
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/CHRISTINE DANG/Examiner, Art Unit 3698