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 Application filed November 14, 2023. Claims 1-5 are pending in this case.
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 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1- 5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non- statutory subject matter.
Regarding claims 1-5 -
Claims 1-5 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 1-5 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
The claims recite ownership of a digital asset through the use of digital assets. Specifically, the independent claims 1 and 5 recite recording ownership of one more related assets, and linking the multiple related assets, which is a commercial transaction and therefore within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 January 7, 2019)).
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 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54-55 (January 7, 2019)), the additional elements of the claims such as the digital tokens, merely use a computer as a tool to perform an abstract idea. Specifically, the digital token perform the steps or functions of recording ownership of one more related assets, and linking the multiple related assets. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), 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 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 January 7, 2019)), the additional elements of using digital tokens to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of digital ownership through the use of digital assets. As discussed above, taking the claim elements separately, the one or more computing devices perform the steps or functions of recording ownership of one more related assets, and linking the multiple related assets. 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 automate and/or implement the abstract idea of fractional ownership of a physical or digital asset through the use of digital assets. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claims are not patent eligible.
Dependent claims 2-4, further describe the abstract idea of digital ownership through the use of digital assets. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Claim Rejections - 35 USC § 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Goldston et al (US 2023/0222187).
Regarding claim 1 –
Goldston discloses a method for serial digital delivery of content comprising:
minting a first non-fungible token; (par 298)
linking a first media segment to said first non-fungible token; (par 313-314)
minting a second non-fungible token; (par 313-314) and
linking a second media segment to said second non-fungible token, wherein said second media segment is a continuation of said first media segment. (par 313-314)
Regarding claim 2 –
Goldston discloses wherein:
said first non-fungible token includes a first smart contract; (par 89, 108)
said second non-fungible token includes a second smart contract; (par 89, 108) and
said first and second smart contracts are structured so that when said first and second non-fungible tokens are owned in a common wallet, said second media segment may be appended to said first media segment to form single combined digital asset. (par 245, abs, 7)
Regarding claim 3 –
Goldston discloses minting initiated by said first and second smart contracts a new non-fungible token, said single combined digital asset linked to said new non-fungible token. (par 313-314)
Regarding claim 4 –
Goldston discloses wherein:
said first non-fungible token denotes ownership of a first digital asset; (par 313-314) and
said first media segment is associated with said first digital asset. (par 313-314)
Regarding claim 5 –
Goldston discloses a method for serial digital delivery of content consisting of a series of episodes, the method comprising:
minting a plurality of non-fungible tokens (par 313-314)
linking each of said plurality of non-fungible tokens with one episode of the series; (par 313-314) and
disseminating said plurality of non-fungible tokens via a blockchain. (par 305, 308, 323)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Azmi et al (US 2013/0117156) discloses fractional ownership using digital assets.
Yallen et al (US 2023/0319373) discloses Non-Fungible Token Minting in a Metaverse Environment.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRISTINA OWEN SHERR whose telephone number is (571)272-6711. The examiner can normally be reached 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at 571-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Cristina Owen Sherr/ Examiner, Art Unit 3697
/JOHN W HAYES/ Supervisory Patent Examiner, Art Unit 3697