DETAILED ACTION
This is a FINAL office action on the merits. The U.S. Patent and Trademark Office (the Office) has received claims 1–20 in application number 18467661.
Claims 1, 2, 6, 9, 10–12, 16, 19, and 20 are currently amended.
No claims have been added or canceled.
Claims 1–20 are pending and have been examined on the merits.
Response to Amendment
The office mailed a non-final office action on 6/4/2025 setting a shortened statutory period of 3 months. Applicant filed a bona fide attempt at a proper reply on 11/4/2025 along with the fee for extension of time. The office sent a Notice of Non-Compliant Amendment (NONA) on 11/12/25 stating that the reply on 11/4/2025 is non-compliant because a complete listing of all claims is not present, specifically "claim 9 is missing." The NONA set a two-month period for applicant to reply. On 12/10/2025 applicant filed an IDS with a number of NPL and FOR references, accompanied by a letter regarding the IDS and a form regarding entity size assertion and fee. The 12/10/2025 submission did not address the issue identified in the NONA.
However, on 1/8/2026 applicant filed another communication asserting that the omission of claim 9 in the 11/4/2025 submission was a Patent Center error. A close inspection of documents submitted on 11/4/2025 shows a discrepancy between the submitted documents and the auxiliary PDF of the application. Specifically, the amended text of claim 9 is shown on the second page of the CLM.NE on 11/4/2025, but without the claim number (“9.”). The AUX.PDF of the application shows the same text with the claim number. Applicant’s submission on 1/8/2026 appears to be identical to the auxiliary PDF filed 11/4/2025.
At this time, the claims are considered to have been amended by the filing on 11/4/2025 which is consistent with the amendment filed 1/8/2026. This action pertains to examination of those amended claims.
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1–20 are rejected under 35 U.S.C. 103 as being unpatentable over Doney (US 2020/0334752 A1, “Doney 2020”) in view of Doney (US 2019/0164151 A1, “Doney 2019”) in view of Jakobsson (US 20230385815 A1).
Regarding claims 1 and 11. Doney 2020 teaches:
(claim 1) A method for modifying token ownership rights, comprising: and (claim 11) A non-transitory computer-readable medium storing instructions that, when executed by a processor, are configured to cause the processor to perform operations for modifying token ownership rights, the operations comprising: [An apparatus, computer-readable medium, and computer-implemented method for configuring computing systems to facilitate decentralized asset management for individual assets and composite assets such as funds. (Doney 2020, Abstract)]
determining that a set of one or more ownership rights over a first token should undergo a transfer to an entity, wherein [0041 “Asset Registry 104 implements the novel interfaces described herein that facilitate functions for asset management…include asset valuation functions 202, ownership transfer functions 204 and data management functions 206…permit the creation of composite tokens, that is, tokens that contain or are linked to other tokens…”; 0042; 0048; 0079]
the first token is associated with a second token [0041 “The functions can include asset valuation functions 202, ownership transfer functions 204…permit the creation of composite tokens, that is, tokens that contain or are linked to other tokens…”; 0043];
the transfer is determined based on:
a policy associated with the second token [0030 “…each created token will have a unique wallet address (as shown in FIG. 2) linked to the token by its identifier and may implement properties and functions of an assigned asset class…the policy will only allow the owner of the token to execute actions via the wallet contract…”; 0034; 0045; 0055], and
an input to the policy [0030; 0045 “…The IAssetWallet exposes its wallet address via the GetWallet function of the attached code. This address can be used as an origin or destination for transactions in the same way as any wallet on the distributed ledger.”; 0052]; and
the entity is identified in the input to the policy [0045 “…This address can be used as an origin or destination for transactions in the same way as any wallet on the distributed ledger”; 0050; 0051].
Doney 2020 does not expressly disclose, but Doney 2019 teaches:
verifying that the transfer complies with a set of one or more pre-determined protocols of a blockchain, […] when the transfer is verified to comply with the set of one or more pre-determined protocols, recording the transfer, on the blockchain. [FIG. 6 illustrates an architecture of PEP 610 for DLTs implementing smart contracts, that is, decentralized applications (dApps) that run via distributed nodes. Blockchain enhanced PEP 610 supports the most popular Ethereum token standards (ERC20, ERC621, ERC721, etc.) and can be extended to support any token protocol on any blockchain. Through a smart contract executed by PEP 610, token issuers may instantly issue tokens with compliance controls built in as well as tokens that do not contain distribution controls. (Doney 2019 at 0054]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the DLT used in Doney 2020 to take advantage of popular DLTs like Ethereum as taught by Doney 2019 to both provide widespread compatibility initially as well as utilize a blockchain protocol that can be extended in various way to support additional functionality, as stated by Doney 2019 above. Furthermore, because the inventive entity in Doney 2020 and Doney 2019 is the same, it is reasonable to conclude that one of skill in the art (such as Doney and Yermakov) would have been able to combine the features of the two references while expecting predictable results.
However, the combination of Doney 2020 in view of Doney 2019 does not expressly disclose wherein a given protocol of the set of one or more pre-determined protocols requires that a part of the input to the policy is digitally signed by a current owner of the second token.
NOTE: The recited phrase “wherein a given protocol of the set of one or more pre-determined protocols requires that a part of the input to the policy is digitally signed by a current owner of the second token” does not positively recite a method step. Additionally, the “verifying” step is not changed based on what the protocol requires because verifying that the protocol complies with a predetermined blockchain protocol can be performed notwithstanding what that protocol specifically requires or not. Accordingly, this phrase does not distinguish the claim from the prior art. The examiner is introducing the Jakobsson reference merely to support compact prosecution.
Nontheless, Jakobsson—which like the present invention is directed to controlling access to and exchange of tokens on a blockchain—teaches:
wherein a given protocol of the set of one or more pre-determined protocols requires that a part of the input to the policy is digitally signed by a current owner of the second token. [the indication in the metadata field may indicate that the wallet owning the applicable root token has the right to generate the digital signature conditional on validating that a given token should be transferred away from a given DAG associated with the root token (Jakobsson 0254); The incrementBalance( ) function 2920 may then examine the transaction 2910, determine its validity by comparing the structure of the transaction with accepted blockchain protocols and verifying it has been correctly digitally signed using a digital signing algorithm as specified by accepted blockchain protocols, and act on the transaction 2910. In the example of FIG. 29A, the NFT smart contract 2900 may include a data structure 2930 storing information regarding NFTs the NFT smart contract 2900 instantiates. The data structure 2930 may be understood by a human reader to represent a table including columns corresponding to token identifiers 2930a, associated owners 2930b, and balances 2930c. (Jakobsson 0318)]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the hierarchical token management and exchange process implemented in a predetermined blockchain protocol as disclosed by the combination of Doney 2020 in view of Doney 2019 to incorporate signature requirements for the protocol as taught by Jakobsson. Like the above combination, Jakobsson operates with a root token and wallet that are signed (i.e., as inputs to the policy on that wallet) to enable use of that wallet in transactions with other wallets on the blockchain. One of skill would have been motivated to incorporate a feature like this into the particular protocol used because it provides additional assurances about the parties in the transaction which is critical to the blockchain environment where the parties are otherwise anonymous and authority is decentralized.
Regarding claims 2 and 12. The combination of Doney 2020 in view of Doney 2019 in view of Jakobsson teaches the invention in claims 1 and 11 above.
Doney 2020 further teaches wherein at least one of the first token and the second token is a non-fungible token (NFT) [0088].
The Examiner notes, “wherein…is a non-fungible token (NFT)” only describe characteristics of the first and/or second token, which is stored data, and these characteristics are not processed or used to carry out any functionality that specifically relies on these particular characteristics. Therefore, these limitations recite non-functional descriptive material and do not serve to differentiate the claims from the prior art. When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from prior art in terms of patentability. It has been held that where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. [T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate (In re Ngai 367 F.3d 1336, 1339, 70 USPQ2d 1862 (Fed. Cir. 2004); Ex parte Nehls 88 USPQ2d 1883, 1888-1889 (BPAI 2008); In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP § 2111.05; Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)).
Regarding claims 3 and 13. The combination of Doney 2020 in view of Doney 2019 in view of Jakobsson teaches the invention in claims 1 and 11 above. Doney 2020 further teaches
the first token is associated with a first token smart contract [0028 – 0031]; and
the input to the policy comprises a smart contract address of the first token smart contract [0045; 0051].
The Examiner notes, “the input to the policy comprises a smart contract address…” only describe characteristics of the input policy, which is stored data, and these characteristics are not processed or used to carry out any functionality that specifically relies on these particular characteristics. Therefore, these limitations recite non-functional descriptive material and do not serve to differentiate the claims from the prior art. When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from prior art in terms of patentability. It has been held that where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. [T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate (In re Ngai 367 F.3d 1336, 1339, 70 USPQ2d 1862 (Fed. Cir. 2004); Ex parte Nehls 88 USPQ2d 1883, 1888-1889 (BPAI 2008); In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP § 2111.05; Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)).
Regarding claims 4 and 14. The combination of Doney 2020 in view of Doney 2019 in view of Jakobsson teaches the invention in claims 1 and 11 above. Doney 2020 further teaches,
wherein the policy is implemented in a smart contract associated with the second token [0030; 0034; 0045; 0050; 0052; 0055].
The Examiner notes, “wherein the policy is implemented…” is not positively recited and does not have patentable weight (see MPEP 2111.04; In re Wilder, 166 USPQ 545 (C.C.P.A. 1970).
Regarding claims 5 and 15. The combination of Doney 2020 in view of Doney 2019 in view of Jakobsson teaches the invention in claims 1 and 11 above. Doney 2020 further teaches
wherein the first token corresponds to a sum of cryptocurrency [0030; 0047; 0088; 0114].
Regarding claims 6 and 16. The combination of Doney 2020 in view of Doney 2019 in view of Jakobsson teaches the invention in claims 1 and 11 above. Doney 2020 further teaches
wherein the set of one or more ownership rights is associated with at least one of a wallet address, a smart contract address, or a public key [0030; 0041; 0043; 0045; 0050; 0055].
Regarding claims 7 and 17. The combination of Doney 2020 in view of Doney 2019 in view of Jakobsson teaches the invention in claims 1 and 11 above. Doney 2020 further teaches
wherein the set of one or more ownership rights of the second token over the first token are listed in a record [0041 – 0042; 0045; 0066; 0075; 0090]; and
the record is a data structure [0027; 0028; 0041 – 0043; 0050; 0051].
The Examiner notes, “the set of one or more ownership rights of the second token…are listed in a record” is not positively recited and does not have patentable weight (see MPEP 2111.04; In re Wilder, 166 USPQ 545 (C.C.P.A. 1970).
Regarding claims 8 and 18. The combination of Doney 2020 in view of Doney 2019 in view of Jakobsson teaches the invention in claims 7 and 17 above. Jakobsson further teaches:
wherein the data structures takes a form selected from the group consisting of an array, a JavaScript Object Notation object, a mapping, and a dictionary. [Token Mapping Data Structure 1810 shown in Smart Contract 1800 in the unnumbered figure between Figs. 17 and 19 (Drawing Sheet 21 of 58) shows a mapping of token ID numbers to owner keys; see also 0205 to 0217]
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the hierarchical token management and exchange process implemented in a predetermined blockchain protocol taught by the above combination of Doney 2020 in view of Doney 2019 in view of Jakobsson, to include a data structure that stores a mapping of the tokens to their current owner(s), as further taught by Jakobsson. One of skill in the art would have been motivated to keep track of the token owners through some kind of bookkeeping or data structure to maintain an accurate ownership ledger because in the blockchain environment the tokens are assets that have value, and people generally want to keep track of items of value.
Regarding claims 9 and 19. The combination of Doney 2020 in view of Doney 2019 in view of Jakobsson teaches the invention in claims 1 and 11 above. Jakobsson further teaches:
wherein verifying that the transfer complies with the given protocol further requires that the policy is digitally signed using a digital signing algorithm specified by the given protocol. [the indication in the metadata field may indicate that the wallet owning the applicable root token has the right to generate the digital signature conditional on validating that a given token should be transferred away from a given DAG associated with the root token (Jakobsson 0254); The incrementBalance( ) function 2920 may then examine the transaction 2910, determine its validity by comparing the structure of the transaction with accepted blockchain protocols and verifying it has been correctly digitally signed using a digital signing algorithm as specified by accepted blockchain protocols, and act on the transaction 2910. In the example of FIG. 29A, the NFT smart contract 2900 may include a data structure 2930 storing information regarding NFTs the NFT smart contract 2900 instantiates. The data structure 2930 may be understood by a human reader to represent a table including columns corresponding to token identifiers 2930a, associated owners 2930b, and balances 2930c. (Jakobsson 0318)]
The motivation for combining this feature of Jakobsson with the above combination of Doney 2020 in view of Doney 2019 in view of Jakobsson is the same as provided with respect to claims 1 and 11 above.
NOTE: The recited phrase “wherein verifying that the transfer complies with the given protocol further requires that the policy is digitally signed using a digital signing algorithm specified by the given protocol” does not positively recite a method step. Additionally, the “verifying” step is not changed based on what the protocol requires because verifying that the protocol complies with a particular policy or characteristic can be performed notwithstanding what that protocol specifically requires or not. Accordingly, this phrase does not distinguish the claim from the prior art. Regardless, the limitation is being addressed above for purposes of compact prosecution.
Regarding claims 10 and 20. The combination of Doney 2020 in view of Doney 2019 in view of Jakobsson teaches the invention in claims 1 and 11 above. Doney 2020 further teaches
wherein an ownership right of the set of one or more ownership rights authorizes the entity to provide, to a second entity, at least one of:
an ownership right over the first token [0041; 0042; 0048; 0079]; or
an access right, over the first token, that is selected from the group consisting of: viewing content associated with the first token, editing content associated with the first token, copying the first token, transferring the first token, deleting digital assets associated with the first token, and assigning at least one access right to a third entity [0011; 0043; 0047; 0048; 0053; 0063; 0110].
The Examiner notes, “wherein…authorizes the entity to provide…” is not positively recited and does not have patentable weight (see MPEP 2111.04; In re Wilder, 166 USPQ 545 (C.C.P.A. 1970).
Response to Remarks
Applicant's arguments filed January 8, 2026, have been fully considered but they are not persuasive.
On pages 7–8 applicant argues that “Applicant has amended claim 1 to incorporate limitations from the original claim 9. … Applicant submits that, regardless of whether He discloses blockchain verification processes, the reference does not disclose the specific use of digital signing in that context. Moreover, even if the semantic verification of He could be interpretable as including a general use of digital signatures.”
Notwithstanding applicant’s remarks, the examiner has identified that Doney 2019/0164151 A1 and Jakobsson US 2023/0385815 A1 (cited by applicant in the IDS filed 12/10/2025) in combination with the previously relied upon reference Doney US 2020/0334752 A1 render claims 1 and 11 obvious. The remarks above pertain only to the He reference which is no longer relied upon in the rejection, so the arguments are not persuasive.
On page 8 applicant argues that
As disclosed in the Specification, part of the novelty of this invention concerns how the "root tokens may be used to implement the functionality of meta-tokens." (Specification, paras. [0255], [0259]). For example, in some embodiments, where root tokens "may refer to the meta-tokens owned by non-token entities," meta-tokens may describe to those that are "owned" by token entities. (Specification, para. [0255]). While this is a non-exclusive implementation to illustrate the concept, Applicant submits that this provides an example of how the transfer of certain tokens may be affected by characteristics of other tokens.
The examiner has considered this characterization of the claimed invention but does not find it persuasive. While the claimed invention might encompass the specific details in the specification that are emphasized by applicant, the claims are broader that this part of the disclosure and do not require these specific features. In other words, the claims do not specifically refer to “root tokens” and “meta tokens” or differentiate between “token entities” and “non-token entities” like the specification. Therefore, the examiner concludes both that the claims are broader than the interpretation alleged by applicant and that the combination of references in the rejection reads on the broadest reasonable interpretation of the claims.
On page 9 the applicant argues that the claim interpretation in the previous action is incorrect. Specifically, the applicant takes issue with
The Office action also rejects claim 9 on the basis that the limitation "verifying ... digitally signed ... wherein the policy is digitally signed using a digital signing algorithm specified by the pre-determined protocol" is a section that "does not have patentable weight" by virtue of not being "positively recited." (Office action, pg. 8).
Applicant asserts that the claims have been amended “to positively recite the limitation that ‘verifying that the transfer complies with [a] given protocol further requires that the policy is digitally signed using a digital signing algorithm specified by the given protocol’ (clarifying that one of the protocols used for the verification both identifies and requires the use of a digital signing algorithm).
The examiner respectfully disagrees. The amended claims 9 and 19 do not positively recite a method step or software operation beyond the underlying “verifying” step recited in claims 1 and 11. Additionally, the actual step of verifying that the transfer complies with a protocol is agnostic about what the underlying protocol requires and the actions pursuant to that protocol are not required to be performed to determine if the protocol is compliant. To analogize, verifying whether a exercise regimen complies with a physical therapy program does not require doing any of the actual exercises. The same principle applies here. Nonetheless, the new grounds of rejection that relies on the Jakobsson reference cited on applicant’s IDS teaches the aspects of the blockchain protocol that are referenced in the verifying step, and thereby teaches the claimed invention. Accordingly, the remarks do not overcome the rejection in the present office action.
Conclusion
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on December 10, 2025, prompted the new ground(s) of rejection presented in this Office action. Additionally, Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 Patrick McAtee whose telephone number is (571)272-7575. The examiner can normally be reached Weekdays 8:30am - 4:30pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tariq Hafiz can be reached at (571) 272-5350. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Patrick McAtee
Supervisory Patent Examiner
Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698