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 .
Claim Status
As of the Office Action dated May 9, 2025 claims 1-20 were pending and claims 1-20 stood rejected. Claims 1-19 have been cancelled. Claim 20 has been amended. Claims 21-34 have been added. Claims 20-34 are therefore currently pending and are presented for examination on the merits.
Response to Arguments
Applicant’s argument with regard to the interpretation of claims 11-19 under 35 U.S.C. § 112(f) has been fully considered and is persuasive as claims 11-19 have been cancelled.
Applicant’s argument with regard to the 35 U.S.C. § 112(a) rejection of claims 11-19 as failing to meet the written description requirement has been fully considered and is persuasive. Accordingly the rejection is being withdrawn.
Applicant’s argument with regard to the 35 U.S.C. § 101 rejection of claims 1-20 has been fully considered but is not persuasive. A tokenized collectible trading card existing in an unrevealed metadata state, opening a reveal window and presenting the user with an option to reveal the tokenized collectible NFT can all be viewed as being part of the abstract idea itself and the use of a smart contract to update data merely amounts to a particular manner in which data is outputted that only requires transmission of the data over a network such as the internet. The “reveal functionality” is merely claimed at a generally high conceptual level and nothing in the claim particularly describes any implementation details that would alter the analysis under the MPEP. The analysis provided by Applicant is not in accordance with the MPEP and amounts to nothing more than a series of conclusory arguments stating eligibility on claims that are clearly directed towards ineligible subject matter. Therefore the present rejection under section 101 will be maintained.
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 20-34 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 20 recites a method and therefore meets eligibility step 1 as a method falls within one of the four categories of statutory subject matter (MPEP § 2106.03 (II)). The analysis then moves to Prong One of Step 2A in which the claim is evaluated as to whether it recites a judicial exception including an abstract idea (MPEP § 2106.04 (II)(A)(1)). The preamble recites that the method is for managing a tokenized collectibles drop in a blockchain-based online platform and includes operations of logging in a user to a tokenized collectibles drop page, enabling the user to purchase one or more unrevealed packs, transferring assets to a wallet and closing the drop purchase window thereby concluding the sales phase of the collectibles drop At a later point in time a reveal window is opened and an option presented to reveal the purchased tokenized collectible NFT, updating the NFT to reveal the NFT metadata and traits, determining a buyback offer, presenting a swap/buyback offer, providing options to the user, executing a buyback transaction and initiating a claim procedure for the corresponding physical collectible. Per the written disclosure the claimed invention is solving the problem of having immediate financial liquidity of holders of NFTs and digital collectibles and suboptimal financial outcomes for collectors and creators. The claim can be viewed as describing a commercial interaction (MPEP § 2106.04 (a)(2)(II)(B)) which in this case involves contracts and sales activities involving NFT collectible items as providing a buyback offer based on present rules is a form of contract where a guaranteed price floor is provided prior to sale and the remainder of the claim is directed towards the sale and execution of the contract. Given the high level at which the claim is recited and the absence of any particular technical discussion as to how the contract is being implemented the claim can also be viewed as reading on a mental process (MPEP § 2106.04 (a)(2)(III)(C)) in which the particulars of the contract are written and enforcing the contract merely requires observation of events along with an evaluation as to whether conditions are or are not being met. Therefore under Prong One of Step 2A the claim is deemed as being ineligible for reciting an abstract idea.
The analysis then proceeds to Prong Two of Step 2A where the claim is evaluated in order to determine whether additional elements are present that integrate the abstract idea into a practical application (MPEP § 2106.04 (d)). Other than being tied to a blockchain network by virtue of the preamble no other technology is present in the claim and all of the operations that are claimed are directed towards determining whether an offer may be extended, the price for the buyback offer which is presented and if the buyback offer is accepted the buyback offer is executed such that none of the limitations contain any elements which can be considered as evidence that would be usable as part of the practical application determination as every limitation recites operations that are part of the abstract idea. Element a) recites a user login and the navigation to a tokenized collectibles drop page which is both a data gathering step (MPEP § 2106.05(g)) and a description of the technological environment in which the claim operates (MPEP § 2106.05(h)). Element b) recites enabling the user to purchase one or more unrevealed packs, each pack comprising at least one tokenized collectible trading card in an unrevealed metadata state in which metadata traits of the tokenized collectible trading card are unrevealed, wherein the purchase is recorded on a blockchain where the enabling the purchase constitutes mere instructions to implement the abstract idea (MPEP § 2106.05(f)), the blockchain merely describes the technological environment in which the claim is operating (MPEP § 2106.05(h)) and the recitation regarding the unrevealed metadata state only involves a particular type of data to be manipulated (MPEP § 2106.05(g)). Element c) recites transferring the purchased digital assets to the user’s blockchain account which is both instructions to implement the abstract idea (MPEP § 2106.05(f)) and also recites a data outputting operation (MPEP § 2106.05(g)). Element d) recites closing the drop purchase window upon selling out of the collectibles drop or reaching a predetermined time, thereby concluding the sales phase of the collectibles drop which is both instructions to implement the abstract idea (MPEP § 2106.05(f)) and a form of data outputting (MPEP § 2106.05(g)). Element e) recites opening a reveal window at a designated time or date, enabling users to reveal traits and details of their purchased tokenized collectible NFTs which is both mere instructions to implement the abstract idea (MPEP § 2106.05(f)) and implied data outputting (MPEP § 2106.05(g)). Element f) recites presenting the user with an option to reveal the purchased tokenized collectible NFT which is merely instructions to implement the abstract idea (MPEP § 2106.05(f)). Element g) recites updating, via a smart contract, metadata associated with the tokenized collectible NFT to transition the tokenized collectible NFT from the unrevealed metadata state to a revealed metadata state in which metadata traits of the tokenized collectible NFT are publicly accessible, responsive to a user’s election to reveal which is both mere instructions to implement the abstract idea (MPEP § 2106.05(f)) and data outputting (MPEP § 2106.05(g)). Element h) recites responsive to the transition of the tokenized collectible NFT to the revealed metadata state, dynamically determining a buyback offer value for the revealed tokenized collectible NFT based on its metadata which is mere instructions to implement the abstract idea (MPEP § 2106.05(f)). Element i) recites presenting a swap/buyback offer to the user for the revealed tokenized collectible NFT which is mere instructions to implement the abstract idea (MPEP § 2106.05(f)). Element j) recites providing the user with options to list the revealed tokenized collectible NFT for sale, accept the buyback offer, decline the buyback offer, or initiate a claim for the corresponding physical collectible which is mere instructions to implement the abstract idea (MPEP § 2106.05(f)). Element k) recites executing a buyback transaction, wherein the tokenized collectible NFT is transferred from the user’s wallet to a l) designated wallet upon acceptance of the buyback offer, and a payment is transferred to the user’s wallet which is both mere instructions to implement an abstract idea (MPEP § 2106.05(f)) and data outputting (MPEP § 2106.05(g)). Element m) recites maintaining the revealed tokenized collectible NFT in the user’s wallet if the buyback offer is declined which is mere instructions to implement the abstract idea (MPEP § 2106.05(f)). Element n) recites initiating a claim procedure for the corresponding physical collectible if elected by the user is mere instructions to implement the abstract idea (MPEP § 2106.05(f)). Clearly no improvement in the functioning of a computer is present and no other technological field is part of the claim. The blockchain network is merely a technological environment in which the abstract idea operates (MPEP § 2106.04 (d)(I)). Therefore under Prong Two of Step 2A the claim is deemed as being directed towards ineligible subject matter.
The analysis then proceeds to Step 2B (MPEP § 2106.05) in which the claim is evaluated as to whether additional elements are present that amount to an inventive concept. The conclusions reached in Prong Two of Step 2A are brought into the analysis under Step 2B and any operations involving data gathering and outputting under (MPEP § 2106.05(g)) are analyzed under (MPEP § 2106.05(d)). Notably none of the operations involving data gathering and outputting involve anything more than transmission over a network such as the internet which therefore does not change the conclusion reached in the analysis of Prong Two of Step 2A. As noted above none of the limitations go beyond reciting operations that are part of the abstract idea of forming and consummating a buyback offer as there is no improvement to the functioning of a computer or to any other technology (MPEP § 2106.05 (A)). The claim does not even recite the machine upon which the method is performed and only indicates in the preamble that it is “computerized” such that the recitation is nothing more than mere instructions to implement the abstract idea on a computer. Therefore under Step 2B claim 20 is deemed as being directed towards ineligible subject matter.
Claim 21 recites a method and therefore meets eligibility step 1 as a method falls within one of the four categories of statutory subject matter (MPEP § 2106.03 (II)). The analysis then moves to Prong One of Step 2A in which the claim is evaluated as to whether it recites a judicial exception including an abstract idea (MPEP § 2106.04 (II)(A)(1)).
The preamble recites that the method is for executing a buyback offer in a blockchain-based Non-Fungible token (NFT) collection system and includes operations of a) identifying an NFT within a blockchain network for evaluation of a buyback offer; b) determining, from metadata associated with the NFT on the blockchain network, that the NFT is in an unrevealed metadata state in which metadata traits of the NFT are unrevealed, and in response, preventing generation of the buyback offer for the NFT; c) determining, via an associated smart contract, that a reveal condition associated with the NFT has been satisfied, and in response, updating metadata associated with the NFT to transition the NFT from the unrevealed metadata state to a revealed metadata state; d) determining, via the associated smart contract and from the metadata associated with the NFT on the blockchain network, that the NFT is in the revealed metadata state, and in response: i) accessing the metadata traits of the NFT from the blockchain network; ii) calculating a Composite Trait Score for the NFT based on the metadata traits of the NFT; iii) determining a buyback offer price for the NFT using the Composite Trait Score; and iv) presenting the buyback offer to a holder of the NFT in accordance with terms including the buyback offer price; e) receiving a response from the holder of the NFT regarding acceptance or rejection of the buyback offer; and f) executing, via the associated smart contract and in response to acceptance of the buyback offer: i) transferring ownership of the NFT from a blockchain wallet associated with the holder of the NFT to a designated blockchain wallet; ii) transferring a buyback payment to the blockchain wallet associated with the holder of the NFT; and iii) recording updated ownership information for the NFT on the blockchain network. Per the written disclosure the claimed invention is solving the problem of having immediate financial liquidity of holders of NFTs and digital collectibles and suboptimal financial outcomes for collectors and creators. The claim can be viewed as describing a commercial interaction (MPEP § 2106.04 (a)(2)(II)(B)) which in this case involves contracts and sales activities involving NFT collectible items as providing a buyback offer based on present rules is a form of contract where a guaranteed price floor is provided prior to sale and the remainder of the claim is directed towards the sale and execution of the contract. Given the high level at which the claim is recited and the absence of any particular technical discussion as to how the contract is being implemented the claim can also be viewed as reading on a mental process (MPEP § 2106.04 (a)(2)(III)(C)) in which the particulars of the contract are written and enforcing the contract merely requires observation of events along with an evaluation as to whether conditions are or are not being met. Therefore under Prong One of Step 2A the claim is deemed as being ineligible for reciting an abstract idea.
The analysis then proceeds to Prong Two of Step 2A where the claim is analyzed in order to determine whether the claim forms a practical application of the abstract idea. The preamble recites a computerized method for executing a buyback offer in a blockchain-based Non-Fungible token (NFT) collection system which indicates nothing more than mere instructions to implement an abstract idea (MPEP § 2106.05(f)). Element a) recites identifying an NFT within a blockchain network for evaluation of a buyback offer which is a form of data gathering per (MPEP § 2106.05(g)). Element b) recites determining, from metadata associated with the NFT on the blockchain network, that the NFT is in an unrevealed metadata state in which metadata traits of the NFT are unrevealed, and in response, preventing generation of the buyback offer for the NFT which is both mere instructions to implement the abstract idea (MPEP § 2106.05(f)) and data gathering (MPEP § 2106.05(g)) and the blockchain merely recites a particular technological environment (MPEP § 2106.05(h)). Element c) recites determining, via an associated smart contract, that a reveal condition associated with the NFT has been satisfied, and in response, updating metadata associated with the NFT to transition the NFT from the unrevealed metadata state to a revealed metadata state which constitutes mere instructions to implement the abstract idea (MPEP § 2106.05(f)) and data gathering (MPEP § 2106.05(g)). Element d) recites determining, via the associated smart contract and from the metadata associated with the NFT on the blockchain network, that the NFT is in the revealed metadata state, and in response: i) accessing the metadata traits of the NFT from the blockchain network; ii) calculating a Composite Trait Score for the NFT based on the metadata traits of the NFT; iii) determining a buyback offer price for the NFT using the Composite Trait Score; and iv) presenting the buyback offer to a holder of the NFT in accordance with terms including the buyback offer price which constitutes mere instructions to implement the abstract idea (MPEP § 2106.05(f)) and data gathering (MPEP § 2106.05(g)). Element e) receiving a response from the holder of the NFT regarding acceptance or rejection of the buyback offer which constitutes mere instructions to implement the abstract idea (MPEP § 2106.05(f)) and data gathering (MPEP § 2106.05(g)). Element f) recites executing, via the associated smart contract and in response to acceptance of the buyback offer: i) transferring ownership of the NFT from a blockchain wallet associated with the holder of the NFT to a designated blockchain wallet; ii) transferring a buyback payment to the blockchain wallet associated with the holder of the NFT; and iii) recording updated ownership information for the NFT on the blockchain network which under MPEP § 2106.05 constitutes mere instructions to implement the abstract idea (MPEP § 2106.05(f)), data gathering (MPEP § 2106.05(g)) and describing the technological environment where the abstract idea is being implemented (MPEP § 2106.05(h)). Therefore under Prong Two of Step 2A claim 21 does not contain a practical application of the abstract idea and is ineligible under section 101.
The analysis then proceeds to Step 2B where the claim is analyzed in order to determine whether the claim amounts to significantly more than the abstract idea itself. All conclusions reached in Prong Two of Step 2A are imported into Step 2B and any operations indicated to be directed towards data gathering under (MPEP § 2106.05(g)) are revisited in light of (MPEP § 2106.05(d)). In reviewing these operations each operation requires nothing more than the transmission of data over a network such as the internet. Therefore the operations do not provide an inventive concept under Step 2B and as a result claim 21 is held as being directed towards ineligible subject matter under 35 U.S.C. § 101.
Claim 22 recites “The computerized method of claim 21, wherein updating metadata associated with the NFT on the blockchain network comprises updating a metadata link associated with the NFT to reference metadata including the metadata traits of the NFT”. The operations involve both mere instructions to implement the abstract idea (MPEP § 2106.05(f)) and data gathering (MPEP § 2106.05(g)) that involves transmission of data over the internet (MPEP § 2106.05(d)). Therefore as the claim does not form a practical application of the abstract idea under Prong Two of Step 2A or provide an inventive concept under Step 2B the claim is directed towards ineligible subject matter.
Claim 23 recites “The computerized method of claim 22, wherein updating the metadata link comprises updating a Uniform Resource Identifier (URI) associated with the NFT from a placeholder metadata resource associated with the unrevealed metadata state to a metadata resource containing the metadata traits of the NFT”. The operations involve both mere instructions to implement the abstract idea (MPEP § 2106.05(f)) and data gathering (MPEP § 2106.05(g)) that involves transmission of data over the internet (MPEP § 2106.05(d)). Therefore as the claim does not form a practical application of the abstract idea under Prong Two of Step 2A or provide an inventive concept under Step 2B the claim is directed towards ineligible subject matter.
Claim 24 recites “The computerized method of claim 23, wherein the metadata resource containing the metadata traits of the NFT is stored in decentralized storage”. The operations involve both mere instructions to implement the abstract idea (MPEP § 2106.05(f)) and data gathering (MPEP § 2106.05(g)) that involves transmission of data over the internet (MPEP § 2106.05(d)). The claim also describes a particular technological environment (MPEP § 2106.05(h)). Therefore as the claim does not form a practical application of the abstract idea under Prong Two of Step 2A or provide an inventive concept under Step 2B the claim is directed towards ineligible subject matter.
Claim 25 recites “The computerized method of claim 23, wherein updating the URI associated with the NFT causes one or more blockchain wallets or NFT marketplaces to display the metadata traits of the NFT”. The operations involve both mere instructions to implement the abstract idea (MPEP § 2106.05(f)) and data outputting (MPEP § 2106.05(g)) that involves transmission of data over the internet (MPEP § 2106.05(d)). Therefore as the claim does not form a practical application of the abstract idea under Prong Two of Step 2A or provide an inventive concept under Step 2B the claim is directed towards ineligible subject matter.
Claim 26 recites “The computerized method of claim 21, wherein determining, via the associated smart contract, that the reveal condition has been satisfied comprises determining that a reveal window associated with the NFT is open”. The operations involve mere instructions to implement the abstract idea (MPEP § 2106.05(f)). Therefore as the claim does not form a practical application of the abstract idea under Prong Two of Step 2A or provide an inventive concept under Step 2B the claim is directed towards ineligible subject matter.
Claim 27 recites “The computerized method of claim 21, wherein updating metadata associated with the NFT on the blockchain network comprises modifying blockchain-stored metadata associated with the NFT to reflect the metadata traits of the NFT”. The operations involve both mere instructions to implement the abstract idea (MPEP § 2106.05(f)) and data outputting (MPEP § 2106.05(g)) that involves transmission of data over the internet (MPEP § 2106.05(d)). Therefore as the claim does not form a practical application of the abstract idea under Prong Two of Step 2A or provide an inventive concept under Step 2B the claim is directed towards ineligible subject matter.
Claim 28 recites “The computerized method of claim 21, further comprising, before presenting the buyback offer, determining whether one or more restrictions on presenting the buyback offer for the NFT are satisfied”. The operations involve mere instructions to implement the abstract idea (MPEP § 2106.05(f)). Therefore as the claim does not form a practical application of the abstract idea under Prong Two of Step 2A or provide an inventive concept under Step 2B the claim is directed towards ineligible subject matter.
Claim 29 recites “The computerized method of claim 21, further comprising, before presenting the buyback offer, determining, via the associated smart contract, that a buyback offer window for the NFT is open”. The operations involve mere instructions to implement the abstract idea (MPEP § 2106.05(f)). Therefore as the claim does not form a practical application of the abstract idea under Prong Two of Step 2A or provide an inventive concept under Step 2B the claim is directed towards ineligible subject matter.
Claim 30 recites “The computerized method of claim 29, wherein determining that the buyback offer window is open comprises analyzing a current date and time against a predefined buyback offer window period set in the associated smart contract”. The operations involve mere instructions to implement the abstract idea (MPEP § 2106.05(f)). Therefore as the claim does not form a practical application of the abstract idea under Prong Two of Step 2A or provide an inventive concept under Step 2B the claim is directed towards ineligible subject matter.
Claim 31 recites “The computerized method of claim 21, wherein determining the buyback offer price comprises accessing Buyback Value Table data from the associated smart contract, the Buyback Value Table data including values or offer prices indexed based on composite trait score values, and determining the buyback offer price using the Composite Trait Score and the Buyback Value Table data”. The operations involve mere instructions to implement the abstract idea (MPEP § 2106.05(f)). Therefore as the claim does not form a practical application of the abstract idea under Prong Two of Step 2A or provide an inventive concept under Step 2B the claim is directed towards ineligible subject matter.
Claim 32 recites “The computerized method of claim 21, wherein calculating the Composite Trait Score comprises applying a scoring algorithm to the metadata traits of the NFT”. The operations involve mere instructions to implement the abstract idea (MPEP § 2106.05(f)). Therefore as the claim does not form a practical application of the abstract idea under Prong Two of Step 2A or provide an inventive concept under Step 2B the claim is directed towards ineligible subject matter.
Claim 33 recites “The computerized method of claim 21, wherein determining the buyback offer price comprises utilizing a scoring system that reflects rarity and uniqueness of the metadata traits of the NFT”. The operations involve mere instructions to implement the abstract idea (MPEP § 2106.05(f)). Therefore as the claim does not form a practical application of the abstract idea under Prong Two of Step 2A or provide an inventive concept under Step 2B the claim is directed towards ineligible subject matter.
Claim 34 recites “The computerized method of claim 21, wherein presenting the buyback offer comprises communicating the buyback offer to the holder of the NFT through a platform interface”. The operations involve mere instructions to implement the abstract idea (MPEP § 2106.05(f)) as well as reciting a particular technological environment (MPEP § 2106.05(h)). Therefore as the claim does not form a practical application of the abstract idea under Prong Two of Step 2A or provide an inventive concept under Step 2B the claim is directed towards ineligible subject matter.
Statement Regarding the Prior Art
Examiner’s search did not reveal any art that fairly read on the claims. Mullings (WIPO Publication WO 2023/150185 A2) discloses an NFT appraisal algorithm which adds weighted inputs involving the lowest, highest sale values along with averages of sales within the collection and calculates an appraised monetary value for an NFT (Abstract, and more fully explained on pages 6-13 which contains example appraisal calculations). However Mullins while disclosing a calculated price does not teach or suggest any form of buyback offer. Panchal et al. (WIPO Publication WO 2023/214207 A1) discloses a sharded NFT (F-NFT, page 9) which represents a fraction of an underlying piece of digital art. The buyback feature allows owners of F-NFTs to put in a buyback request and the content creators buy back all F-NFTs of the content that were put for buyback at the closing price of the last day (page 16, lines 26-30). Examiner does not see where Mullins and Panchal could be used to form a combination of references as Panchal, while teaching a buyback feature does not use any form of value table or trait score to compute a price and merely relies on a closing price. Non-patent literature found in Examiner’s search included Chen et al. “ABSNFT: Securitization and Repurchase Scheme for Non-Fungible Tokens Based on Game Theoretical Analysis”, arXiv:2202.02199v2, July 30 2022, 23 pages discloses an Asset-Backed Securities Solution to enhance the liquidity of NFTs. Chen also teaches a repurchase protocol that allows a participant owning at least half of the shares of the NFT an opportunity to repurchase all of the remaining shares of the NFT (Abstract, 2.3). However Chen does not disclose any buyback that uses a value table or trait score. Kesonpat “Show me the Liquidity”, retrieved from https://medium.com/1kxnetwork/show-me-the-liquidity-evaluating-nft-financialization-methods-f3c30bf8f08c, February 24, 2022, 33 pages, discloses various mechanisms for making NFT appraisals and provides a survey of various mechanisms but also does not teach any form of buyback mechanism. Therefore it is Examiner’s conclusion that the prior art does not fairly teach or suggest each and every element of the claim.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES D NIGH whose telephone number is (571)270-5486. The examiner can normally be reached 5 AM to 2 PM Monday through Thursday.
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/JAMES D NIGH/Senior Examiner, Art Unit 3699
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