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 .
This Office Action is in response to the Applicant’s Amendment December 1, 2025. Claims 1-15 are pending and under examination in this case. Claims 1-5, 8-9, and 11-15 are currently amended.
Response to Arguments
Applicant's arguments filed December 1, 2025, have been fully considered but they are not persuasive.
Applicant argues, regarding claims 1 and 15, as currently amended, that claims recite statutory subject matter.
More specifically, Applicant argues, regarding claims 1 and 15, as currently amended, that the claims do not recite organizing human activity, and therefore do not recite an abstract idea.
Examiner respectfully disagrees.
In the instant case, the claims recite facilitating the issuance of assets associated with tangible items which is an abstract idea. More specifically the claims, in their current version, recite a locking process for a non-fungible token when the communication apparatus receives a delivery request, registering transaction data, updating a database to indicate a prohibition of a delivery, which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test, classified under “fundamental economic principles or practices”, specifically “mitigating risk” as part of a transaction (See MPEP 2106, specifically 2106.04(a)) because — for example, in this case, the claims involve a series of steps such that an same item is not sold to the wrong buyer. Accordingly, the claim recites an abstract idea (See MPEP 2106, specifically 2106.04(a)).
Applicant further argues that the claims, in their current version, recite integrating the abstract idea into practical application.
Examiner respectfully disagrees.
The additional claim elements are not indicative of integration into a practical application, because the claims do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), 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).
Applicant argues, regarding claims 1 and 15, as currently amended, that nothing in the cited references teaches, discloses, or suggests “control the non-fungible token to be non-transferable by locking the non-fungible token in a digital wallet in response to the communication apparatus receiving the delivery request”.
Examiner respectfully disagrees.
Attention is directed to Azdoud at par 95 “ transfer lock may be initiated in response to a specific stage of the service consumption (e.g., booking for redemption is made, services redeemed, etc.)” also par 111 “The transfer lock, which was placed at the time of booking guarantees the token is still owned by the client in the same wallet.”
Applicant argues, regarding claims 1 and 15, as currently amended, that nothing in the cited references teaches, discloses, or suggests “register transaction data”.
Examiner respectfully disagrees.
Attention is directed to Voorhees at par 23 “the ledger is updated according to a set of consensus rules applied by the participants in a network of the blockchain. The ledger updaters could be miners in the case of a proof-of-work based chain, but other types of ledger validation also exist such as various proof-of-stake and voting protocols. The principles disclosed herein apply whether the blockchain validators are running programs that implement the token behavior and characteristics described herein or whether the spending and encumbering of UTXOs is the basis for the token behavior”; also par 20-22 and 43.
Applicant argues, regarding claims 1 and 15, as currently amended, that nothing in the cited references teaches, discloses, or suggests “update a state database to indicate a turn-on of a flag corresponding to a prohibition of transfer of the non-fungible token in response to registering the transaction data”.
Examiner respectfully disagrees.
Attention is directed to Azdoud at, e.g. par 205 “flag or state can be updated by the NFT owner using a smart contract function“, also par 81-89 indicating switching or updating a flag.
It would be obvious to one of ordinary skill in the art, to combine Voorhees with the process of Azdoud, in order to obtain better inventory control. Note that with tangible items, one should avoid selling the same item (e.g., a diamond) to more than one buyer.
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 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-15 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 1-14 are directed to an apparatus or system, while claim 15 is directed to a method. Therefore, these claims fall within the four statutory categories of invention.
The claims recite facilitating the issuance of assets associated with tangible items which is an abstract idea. Specifically, the claim recites “The claims recite facilitating the issuance of assets associated with tangible items which is an abstract idea. Specifically, the claim recites “control a non-fungible token to be non-transferable by locking the non-fungible token in a digital wallet in response to the communication apparatus receives receiving the delivery request; register transaction data; and update a state database to indicate a turn-on of a flag corresponding to a prohibition of transfer of the non-fungible token in response to registering the transaction data”, which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test, classified under “fundamental economic principles or practices”, specifically “mitigating risk” as part of a transaction (See MPEP 2106, specifically 2106.04(a)) because — for example, in this case, the claims involve a series of steps improving traceability of articles such that the same item is not sold to more than one buyer. Accordingly, the claim recites an abstract idea (See MPEP 2106, specifically 2106.04(a)).
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(ad)), the additional elements of the claims such as the use of a non-fungible token (NFT), a processor, and distributed ledger technology merely involves using a computer as a tool to perform an abstract idea and/or generally links the use of a judicial exception to a particular technological environment. The use of a non-fungible token (NFT), a processor, and distributed ledger technology to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment] does not render the claim patent eligible because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Specifically, a non-fungible token (NFT), a processor, and distributed ledger technology perform the steps or functions of “control a non-fungible token to be non-transferable by locking the non-fungible token in a digital wallet in response to the communication apparatus receives receiving the delivery request; register transaction data; and update a state database to indicate a turn-on of a flag corresponding to a prohibition of transfer of the non-fungible token in response to registering the transaction data”. The additional claim elements are not indicative of integration into a practical application, because the claims do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), 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 claims 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, specifically 2106.05), the additional elements of the non-fungible token (NFT), processor, and distributed ledger technology, to perform the steps amounts to no more than using the non-fungible token (NFT), processor, and distributed ledger technology to automate and/or implement the abstract idea of issuance of assets associated with tangible items. As discussed above, taking the claim elements separately the non-fungible token (NFT), processor, and distributed ledger technology perform the steps of Claim 1. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of facilitating the issuance of assets associated with tangible items. 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 the non-fungible token (NFT), processor, and distributed ledger technology to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Claims 2-14 further describe the factors/conditions associated with issuing assets associated with tangible items, however, they do not 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
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 1-6, 8-10, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Voorhees et al (2021/0390531) in view of Azdoud et al (US 2022/0370778).
Regarding claims 1 and 15 -
Voorhees discloses a server (par 108) comprising:
a communication apparatus configured to receive a delivery request that requests delivery of a tangible object, the tangible object being associated with the non-fungible token. (par 43-44, claim1) and
register transaction data. (par 23 “the ledger is updated according to a set of consensus rules applied by the participants in a network of the blockchain. The ledger updaters could be miners in the case of a proof-of-work based chain, but other types of ledger validation also exist such as various proof-of-stake and voting protocols. The principles disclosed herein apply whether the blockchain validators are running programs that implement the token behavior and characteristics described herein or whether the spending and encumbering of UTXOs is the basis for the token behavior”; also par 20-22 and 43.)
Azdoud discloses, as Voorhees does not, control the non-fungible token to be non-transferable by locking the non-fungible token in a digital wallet in response to the communication apparatus receiving the delivery request; (par 95 “ transfer lock may be initiated in response to a specific stage of the service consumption (e.g., booking for redemption is made, services redeemed, etc.)” also par 111 “The transfer lock, which was placed at the time of booking guarantees the token is still owned by the client in the same wallet.”) and
update a state database to indicate a turn-on of a flag corresponding to a prohibition of transfer of the non-fungible token in response to registering the transaction data. (par 205 “flag or state can be updated by the NFT owner using a smart contract function“, also par 81-89 indicating switching or updating a flag.)
It would be obvious to one of ordinary skill in the art, to combine Voorhees with the locking process of Azdoud, in order to obtain better inventory control. Note that with tangible items, one should avoid selling the same item (e.g., a diamond) to more than one buyer, as well as making sure that the item is delivered to the correct person or user (e.g., owner of the NFT).
Regarding claim 2 -
Azdoud discloses wherein the processor is configured to request a terminal apparatus of the holder to prohibit transfer of the non-fungible token from the digital wallet of the holder to another digital wallet. It would be obvious to one of ordinary skill in the art, to combine Voorhees with the locking process of Azdoud, in order to obtain better inventory control. Note that with tangible items, one should avoid selling the same item (e.g., a diamond) to more than one buyer, as well as making sure that the item is delivered to the correct person or user (e.g., owner of the NFT).
Regarding claim 3 -
Azdoud discloses wherein the non-fungible token includes a flag that can be switched to one of a first value and a second value by a smart contract, (par 81-89)
the smart contract sets the flag to the first value when it permits the transfer and sets the flag to the second value when it prohibits the transfer, (par 205) and
the processor is configured to request the terminal apparatus to generate the transaction data including the smart contract that defines processing for switching the flag set to the first value to the second value. (par 81-89, 205)
It would be obvious to one of ordinary skill in the art, to combine Voorhees with the locking process of Azdoud, in order to obtain better inventory control. Note that with tangible items, one should avoid selling the same item (e.g., a diamond) to more than one buyer.
Regarding claim 4 -
Azdoud discloses the processor is configured to continue to lock the non-fungible token until a delivery completion condition indicating completion of delivery of the tangible object is satisfied. (par 81-85, 95)
It would be obvious to one of ordinary skill in the art to combine Voorhees and Azdoud in order to obtain greater flexibility for commercial interactions.
Regarding claim 5 -
Voorhees discloses, wherein the processor is configured to refer to another transaction data indicating completion of delivery of the tangible object, the transaction data indicating the completion being registered in a distributed ledger, (par 20-21) and
the delivery completion condition includes the registration of the another transaction data indicating the completion of the delivery of the tangible object in the distributed ledger. (par 23, 43)
Regarding claim 6 -
Azdoud discloses wherein the delivery completion condition includes reception, by the communication apparatus, of a delivery completion notification indicating completion of delivery of the tangible object. (par 69, 81-89, 101-102, 230).
It would be obvious to one of ordinary skill in the art, to combine Voorhees with the process of Azdoud, in order to obtain better inventory control. Note that with tangible items, one should avoid selling the same item, e.g., a diamond, to more than one buyer.
Regarding claim 8 -
Azdoud discloses wherein when a locking completion condition indicating switching of the flag from the first value to the second value is satisfied after locking the non-fungible token, the processor is configured to permit the delivery. par 81-89, 95, 100, 102)
It would be obvious to one of ordinary skill in the art, to combine Voorhees with the process of Azdoud, in order to obtain better inventory control. Note that with tangible items, one should avoid selling the same item (e.g., a diamond) to more than one buyer.
Regarding claim 9 –
Voorhees discloses wherein the processor is configured to refer to the transaction data registered in a distributed ledger. (par 20-23)
Azdoud discloses wherein the locking completion condition includes registration of the transaction data indicating switching of the flag from the first value to the second value in the distributed ledger. (par 81-89)
It would be obvious to one of ordinary skill in the art, to combine Voorhees with the process of Azdoud, in order to obtain better inventory control. Note that with tangible items, one should avoid selling the same item (e.g., a diamond) to more than one buyer.
Regarding claim 10 –
Azdoud discloses wherein the locking completion condition includes reception, by the communication apparatus, of a locking completion notification indicating switching of the flag from the first value to the second value. (par 81-89)
It would be obvious to one of ordinary skill in the art, to combine Voorhees with the process of Azdoud, in order to obtain better inventory control. Note that with tangible items, one should avoid selling the same item (e.g., a diamond) to more than one buyer.
Regarding claim 12 –
Azdoud discloses wherein
the non-fungible token includes delivery information indicating whether delivery of the tangible object has been completed, (30, 205) and
when the delivery completion condition is satisfied, the processor is configured to rewrite the delivery information such that the delivery information indicates completion of delivery of the tangible object. (par 205, 211, 226, claim6)
It would be obvious to one of ordinary skill in the art, to combine Voorhees with the process of Azdoud, in order to obtain better inventory control. Note that with tangible items, one should avoid selling the same item (e.g., a diamond) to more than one buyer.
Regarding claim 13 –
Azdoud discloses wherein when the non-fungible token in which the delivery information has been rewritten is in the wallet, the processor is configured to generate image data of the tangible object in association with the non-fungible token. (par 19, 21, 192, 211, 220)
It would be obvious to one of ordinary skill in the art, to combine Voorhees with the process of Azdoud, in order to obtain better inventory control. Note that with tangible items, one should avoid selling the same item (e.g., a diamond) to more than one buyer.
Regarding claim 14 –
Azdoud discloses wherein when the delivery completion condition is satisfied, the processor is configured to delete the non-fungible token. (par 30, 310, claim 55)
It would be obvious to one of ordinary skill in the art, to combine Voorhees with the process of Azdoud, in order to obtain better inventory control. Note that with tangible items, one should avoid selling the same item (e.g., a diamond) to more than one buyer.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Voorhees et al (US 2021/0390531) in view of Azdoud et al (US 2022/0370778) and further in view of Panzavolta et al (US 2022/0391884) and Punnoose et al (US 2021/0073933).
Voorhees in view of Azdoud discloses as above.
Regarding claim 7 –
Panzavolta discloses, in analogous art, wherein
the tangible object includes a vehicle, (par 213)
Punnoose discloses the delivery completion condition is satisfied when a first condition or a second condition is satisfied, (par 14)
the second condition is entry of a position of the object detected by a position detector into a residential area of the holder. (par 14, 19)
It would be obvious to combine Voorhees and Azdoud with Panzavolta for greater use of nft’s, and therefore more economical use of resources, such that items delivered and tracked may include, inter alia, vehicles such as cars, and with Punnoose for more precision in keeping track of items delivered, making sure items, whatever they are, get delivered to the correct location.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Voorhees et al (US 2021/0390531) in view of Azdoud et al (US 2022/0370778) and further in view of Panzavolta et al (US 2022/0391884) and Lang et al (US 2015/0269383).
Voorhees in view of Azdoud discloses as above.
Regarding claim 11 -
Panzavolta discloses wherein the tangible object includes a vehicle par 213).
Lang discloses, as Panzavolta does not specifically disclose, that the processor is configured to permit unlocking of a door of the vehicle or permit start-up of a travel system of the vehicle. (par 700)
It would be obvious to one of ordinary skill in the art, to combine Voorhees, Azdoud and Panzavolta with Lang for better vehicle security.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Meyers et al (US 2023/0394455) disclose Nft transactions via nft and pos platforms and methods for use therewith.
THIS ACTION IS MADE FINAL. 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.
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/Cristina Owen Sherr/ Examiner, Art Unit 3697
/JOHN W HAYES/ Supervisory Patent Examiner, Art Unit 3697
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