DETAILED ACTION
Acknowledgments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the amendment and response filed on 08/05/2025.
Claim 1 has been amended.
Claims 2-8 have been canceled.
Claim 1 is currently pending and have been examined.
Response to Arguments
Claim Interpretation
After careful review of the original specification, the Examiner is unable to locate any lexicographic definitions with the required clarity, deliberateness, and precision. See MPEP §2111.01 IV.
Terms such as “when”, “if”, “only if”, “on the condition”, “in the event” and “in a case where” are representative of optional limitations; therefore, optional or conditional language do not narrow the claims because they can always be omitted.
Arguments and Assertions by the Applicant
Applicant’s arguments received 08/05/2025 with respect to the prior art rejections have been considered but are moot in view of the new ground(s) of rejection.
Claim Rejections - 35 USC § 103
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.
Claims 1-6 are rejected under U.S.C. 103 as being unpatentable over Andon et al. (USPGP 2020/0273048 A1), hereinafter ANDON, in view of Simu et al. (USPGP 2022/0210061 A1), hereinafter SIMU, and further in view of Smeltzer (USPGP 2023/0015535 A1), hereinafter SMELTZER.
Claim 1:
ANDON as shown below discloses the following limitations:
automating generation of cryptographic digital assets associated with digital promotional space including the location, user interaction and payment contract, comprising: (see at least paragraphs abstract, 0002, 0008, 0052, 0085, 0086, 0111, 0148)
transfer of display control as defined by digital contract details from one asset holder to another via distributed computer systems; (see at least paragraphs abstract, 0013)
determining, via digital Smart Contract the current owner and contract conditions controlling the digital promotional space via a unique Holder ID; (see at least paragraphs 0002, 0052, 0085, 0086, 0111, 0148)
generating a cryptographic asset and Smart Contract that contains all elements of digital advertising space and the payment contract defined by the asset creator; (see at least paragraphs 0002, 0052, 0085, 0086, 0111, 0148)
identifying both the asset creator and asset holder by unique ID entered into a cryptographic ledger. (see at least paragraphs abstract, 0002, 0008, 0052, 0085, 0086, 0111, 0148)
wherein the asset is stored as an NFT in a distributed blockchain and modifications to the asset are facilitated by the blockchain distributed engines. (see at least paragraph 0049)
accessing contract details accessible from the Blockchain using the NFT ID to query and display all SmartContract details. (see at least paragraph 0048)
wherein the asset is stored as an NFT in a distributed blockchain and modifications to the asset are facilitated by the blockchain distributed engines; (see at least paragraph 0011, 0045 , 0082)
validating all exchanges by cryptographic signature in the distributed blockchain; (see at least paragraph 0024)
wherein the NFT ID identifies the image source defined in the blockchain and combined with contract rules displays an appropriate image for that digital promotional space providing public transparency of all existing and previous marketing agreements and display behavior for the Promotional Space by using the NFT ID and using the blockchain as the historical record. (see at least paragraphs 0002, 0048, 0049, 0052, 0085, 0086, 0111, and 0148)
wherein registration, notification, contract negotiations, payment verification, image validation are handled with blockchain integrated technology and services. (see at least paragraphs 0048 and 0049)
ANDON does not specifically disclose moving an asset identified by an NFT ID from one party's public ID to another party's public ID. SIMU, however, in at least paragraphs 0237, 0240, 0259, 0275, 0277, and 0299 does. In the competitive business climate, there is a profit-driven motive to maximize the profitability of goods and services that are provided or marketed to customers. Enterprises typically use business planning to make decisions in order to maximize profits. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to combine/modify the method of ANDON with the technique of SIMU because, “Many anti-counterfeiting techniques have been developed to help identify counterfeit goods and to prevent illicit sales of such counterfeits. Unfortunately, within the digital realm, supply is often unconstrained—if not by the original developer, then by a subsequent party who may freely (or illicitly) duplicate the digital object in its entirety. This often complicates a brand owner's ability to control the exclusivity of a digital object and, thus, have influence regarding the value of that object. The lack of control over digital-object exclusivity then erodes the opportunity for free brand promotion by product enthusiasts and collectors who are in search of that object (e.g., as often occurs upon the release of limited production sneakers by “sneakerheads”).” (ANDON: paragraph 0004). Moreover, each of the elements claimed are all shown by the prior art of record but not combined as claimed. However, the technical ability exists to combine the elements as claimed and the results of the combination are predictable. Therefore, when combined, the elements perform the same function as they did separately. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Additionally, there is a recognized problem or need in the art including market pressure, design need, etc., and there are a finite number of identified predictable solutions. Consequently, those in the art could have pursued known solutions with reasonable expectation of success. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)).
The combination of ANDON/SIMU does not specifically disclose hovering with a cursor on a display over a virtual icon to reveal contract details for promotional space digital asset. SMELTZER, however, in at least paragraph 0091 does. In the competitive business climate, there is a profit-driven motive to maximize the profitability of goods and services that are provided or marketed to customers. Enterprises typically use business planning to make decisions in order to maximize profits. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to combine/modify the method of ANDON/SIMU with the technique of SMELTZER because each of the elements claimed are all shown by the prior art of record but not combined as claimed. However, the technical ability exists to combine the elements as claimed and the results of the combination are predictable. Therefore, when combined, the elements perform the same function as they did separately. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Additionally, there is a recognized problem or need in the art including market pressure, design need, etc., and there are a finite number of identified predictable solutions. Consequently, those in the art could have pursued known solutions with reasonable expectation of success. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)).
CONCLUSION
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Non-Patent Literature:
GAO. “NON-FUNGIBLE TOKENS (NFTS).” (June 2022). Retrieved online 02/18/2024. https://hedera.com/learning/tokens/what-is-a-non-fungible-token-nft
Ahmad A. Rabaa’i,a et al. “Understanding Non-Fungible Tokens (NFTs): Overview, Opportunities, and Challenges.” (29 June 2022). Retrieved online 02/18/2024. https://www.researchgate.net/publication/361618778_Understanding_Non-Fungible_Tokens_NFTs_Overview_Opportunities_and_Challenges
Dr. Katharina Garbers-von Boehm et al. “Intellectual Property Rights and Distributed Ledger Technology.” (October 2022). Retrieved online 02/18/2024. https://www.europarl.europa.eu/RegData/etudes/STUD/2022/737709/IPOL_STU(2022)737709_EN.pdf
Foreign Art:
LI WEN TING et al. “METHOD AND SYSTEM FOR SECURING SMART CONTRACTS IN BLOCKCHAINS.” (JP 2019/083013 A)
NAKAHIRA ATSUSHI et al. “CONTENT CONTRACT SYSTEM, CONTENT CONTRACT METHOD, RIGHT HOLDER TERMINAL, ASSIGNEE TERMINAL, CONTROL TERMINAL, CONTENT STORAGE SERVER, RIGHT HOLDER PROGRAM, ASSIGNEE PROGRAM, CONTROL PROGRAM, AND CONTENT STORAGE PROGRAM.” (JP 2020/068388 A)
YOUNG JOHN et al. “CONTACT CENTER TRANSACTION SYSTEM THAT USES DISTRIBUTED DIGITAL LEDGER.” (JP 2020/184760 A)
Applicant’s amendment filed on 08/05/2025 necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to James A. Reagan (james.reagan@uspto.gov) whose telephone number is 571.272.6710. The Examiner can normally be reached Monday through Friday from 9 AM to 5 PM. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, John Hayes, can be reached at 571.272.6708.
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/JAMES A REAGAN/Primary Examiner, Art Unit 3697
james.reagan@uspto.gov
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