DETAILED ACTION
This is in response to the applicant’s communication filed on 6/3/25, wherein:
Claims 1-6 are currently pending.
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 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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claim 1 recites a non-transitory computer-readable medium and therefore, falls into a statutory category. Similar independent claims 5 and 6 recite a system and a method, and therefore, also fall into a statutory category.
Step 2A – Prong 1 (Is a Judicial Exception Recited?): The underlined limitations of
combining first object data corresponding to a first token and second object data corresponding to a second token through superimposition; and
generating third object data corresponding to a third token according to the combination
are processes that, under their broadest reasonable interpretation, cover performance of the limitations in the mind but for the recitation of generic computer components. Data superimposition is a visualization or analysis technique where data is overlaid onto each other. The claim recites the abstract idea of information manipulation and combination, which are steps performable in the human mind. That is, other than reciting that the method involves a first token, a second token, and a third token according to the combination (claims 1, 5, and 6), a communication network; a server; a user terminal; and one or more processors (claim 5), and a computer (claim 6), nothing in the claim elements precludes the step from practically being performed in the mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A-Prong 2 (Is the Exception Integrated into a Practical Application?): This judicial exception is not integrated into a practical application.
In particular, claim 1 recites the additional elements of a non-transitory computer-readable medium, claim 5 recites the additional elements of a communication network; a server; a user terminal; and one or more processors, and claim 6 recites the additional element of a computer. All of the additional elements are considered computer components. The computer components are recited at a high-level of generality (i.e., as a generic processing device performing generic computer functions), such that they amount to no more than mere instructions to apply the exception using generic computer components.
The limitations reciting generating . . . a third token according to the combination provide nothing more than mere instructions to implement an abstract idea on a generic computer. See MPEP 2106.05(f). MPEP 2106.05(f) provides the following considerations for determining whether a claim simply recites a judicial exception with the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer: (1) whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished; (2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and (3) the particularity or generality of the application of the judicial exception. Here, computers are invoked merely as a tool to perform existing processes (generating a third token according to the combination). See MPEP 2106.05(f).
Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea when considered both individually and as a whole. The claims are directed to an abstract idea. Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application, and the claim is directed to the judicial exception.
Step 2B (Does the claim recite additional elements that amount to Significantly More than the Judicial Exception?): The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer to perform the combining and generating steps amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible, as when viewed individually, and as a whole, nothing in the claim adds significantly more to the abstract idea.
Dependent claims 2-3 merely recite further additional embellishments of the abstract idea of independent claim 1 as discussed above with respect to integration of the abstract idea into a practical application, and these features only serve to further limit the abstract idea of independent claim 1, however none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limits.
Claim 4 further defines the additional element causing an output of the third object in an augmented reality space. The device is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic component. Even, in combination, this additional element does not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
In light of the detailed explanation and evidence provided above, the Examiner asserts that the claimed invention, when the limitations are considered individually and as whole, is directed towards an abstract idea.
Notice
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
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Baek (US 20250111458), in view of Netease (CN 115089970).
Referring to claim 1:
Baek discloses a non-transitory computer-readable medium that stores a token management program including instructions, when executed by one or more processors, causing a computer to perform operations comprising: combining first object data corresponding to a first token and second object data [corresponding to a second token] through data superimposition {Baek [0013] [0014][0044][0049][0050][0051][0092]; the virtual fitting unit 210 may superimpose the new digital costume onto a virtual avatar most similar to the body shape and body size of a specific person or mannequin photographed by the user terminal 104, and then provide the superimposed augmented reality screen to the user [0051] and the processor 14 may execute one or more programs stored on the computer-readable storage medium 16 [0092] and where Baek does not explicitly disclose the second object corresponds to the second token, and this is addressed further below}.
Baek discloses a system for recombining digital clothes based on blockchain and issuing an NFT for a new digital costume (abstract and [0005]). Baek does not disclose where the second object data corresponds to a second token; and generating third object data corresponding to a third token according to the combination.
However, Netease discloses a similar system for determining a prop NFT corresponding to a virtual prop (Netease [0005]). Netease discloses where the second object data corresponds to a second token {Netease [0114]-[0124]; multiple target props NFTs [0118] which indicates that multiple props have corresponding NFTs}; and generating third object data corresponding to a third token according to the combination {Netease [0114]-[0124]; Step f), synthesizing multiple target props NFTs to obtain synthesized target props NFTs, and eliminating the target props NFTs before synthesis [0122]}.
It would have been obvious for a person of ordinary skill in the art (PHOSITA) before the effective filing date of the claimed invention to modify the system disclosed in Baek to incorporate generating a third token from two objects, each corresponding to a token as taught by Netease because this would provide a manner for generating a rich variety of virtual props and enriching the game content (Netease [0125]), thus aiding the user by improving the player’s gaming experience.
Referring to claim 2:
Baek, as modified by Netease, discloses wherein the operations further comprise invalidating the first and second tokens corresponding to the first and second object data used for the combination {Netease [0123]; After the synthesis is successful, the system can eliminate the 4 green virtual props used as synthesis materials and the corresponding props NFT [0123]}.
Referring to claim 3:
Baek, as modified by Netease, discloses wherein the operations further comprise invalidating the first and second object data used for the combination {Netease [0123]; After the synthesis is successful, the system can eliminate the 4 green virtual props used as synthesis materials and the corresponding props NFT [0123]}.
Referring to claim 4:
Baek, as modified by Netease, discloses wherein the third object data corresponding to the third token is based on the superimposition of the first object data and the second object data, and wherein the operations further comprise causing an output device to output the third object data in an augmented reality space {Baek [0013][0014][0044][0049][0050][0051] [0092]; the virtual fitting unit 210 may superimpose the new digital costume onto a virtual avatar most similar to the body shape and body size of a specific person or mannequin photographed by the user terminal 104, and then provide the superimposed augmented reality screen to the user [0051]}.
Referring to claim 5:
Claim 5 is rejected on a similar basis to claim 1, with the following additions:
Baek discloses a token management system comprising: a communication network; a server; a user terminal; and one or more processors {Baek [0013][0014][0036]-[0038][0044][0049][0050][0051][0092][0095] and Fig. 1; a user terminal 104 [0036] and The computing device 12 includes at least one processor 14, a computer-readable storage medium 16, and a communication bus 18 [0092] and The computing device 12 may also include one or more input/output interfaces 22 that provide an interface for one or more input/output devices 24, and one or more network communication interfaces 26 [0095]}.
Referring to claim 6:
Claim 6 is rejected on a similar basis to claim 1.
Response to Arguments
1. Status of the Claims
Examiner has no comment.
2. Office Action
Examiner has no comment.
3. 35 USC 101 Rejection
Applicant argues that the elements and features of the claims “clearly represent improvements to the functioning of the computer or its processors.” Remarks 5. Examiner respectfully disagrees. Applicant does not identify the alleged improvements. As is explained above, computers are invoked merely as a tool to perform existing processes. See MPEP 2106.05(f). No improvements to the functioning of the computer are provided.
4. 35 USC 103 Rejections
Applicant argues “there exist technical impediments to applying Netease’s teachings to Baek’s system.” Remarks 6. However, Applicant does not argue that the prior art does not teach the claim limitations. Applicant appears to be arguing only the combination of the prior art, stating “it would not have been obvious to a person having ordinary skill in the art to apply the teachings of Netease to Baek’s system” because the deletion of the original tokens (of the avatar and the costume) would not allow the user the evaluate the fit of a digital costume on a personalized avatar. Remarks 7. Examiner respectfully disagrees that deleting the original tokens would not allow the user to evaluate the fit of the costume. The user would still receive the final token, showing the fit. If the separate costume were deleted, the user would have a one-time use only costume, which may suit some purposes. Regardless, there would still be motivation to combine the prior art, as provided in the rejection (see above).
Conclusion
Applicant's amendment 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 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 CARRIE S GILKEY whose telephone number is (571)270-7119. The examiner can normally be reached Monday-Thursday 7:30-4:30 CT and Friday 7:30-12 CT.
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/CARRIE S GILKEY/Primary Examiner, Art Unit 3626