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 .
Response to Amendment
1. This action is in response to the communication filed on March 23, 2026. Claims 1-20 were originally received for consideration. No claims have been added or cancelled by the received amendment.
2. Claims 1-20 are currently pending consideration.
Information Disclosure Statement
3. An initialed and dated copy of Applicant’s IDS (form 1449), received on October 17, 2026, is attached to this Office Action.
Allowable Subject Matter
4. Claims 5-10 and 15-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
5. Applicant’s arguments with respect to claim(s) 1-4, and 11-14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
6. The nonstatutory double patenting rejection has been withdrawn as the co-pending application (18/586,058) has been abandoned.
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.
7. Claim(s) 1, 3, 4, 11, 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marks (U.S. Patent Pub. No. US 2023/0037728) in view of Slepinin (U.S. Patent Pub. No. US 2015/0081566).
Regarding claim 1, Marks discloses:
A computer-implemented method comprising:
receiving, by a computer, a notification from the platform server indicating an authentic token minted to a blockchain (paragraph 0023, 0049-0050, : receiving financial account data and identifying information from a prospective seller and verifying the data provided by the prospective seller, and if the data verification is successful, whitelisting a digital wallet of the prospective seller via a smart contract execution on the first blockchain and generating a UIAM minter account for the seller, recording the verified seller identity and minter status in the first blockchain and providing a UIAM token and an identity token to the verified seller);
generating, by the computer, a synthetic token corresponding to the authentic token (paragraphs 0049-0050: a user's ownership a UIAM token may be evidenced by a user's possession of such token(s) by the user's digital wallet (or in alternative embodiments, a user's digital vault). As is known in the art, the user may possess a private cryptographic key the provides secure access to her digital wallet and may evince ownership to the wallet and its contents); and
updating, by the computer, the authentic token associated with the platform server according to the synthetic token as indicated by the request (paragraphs 0049-0050, 0081, 0158: UIAM Application Entity 120 may be configured to push out application updates to buyer mobile/computing devices 115, seller computing/mobile devices 113, and/or the like; Then, as in step 330, upon receiving the funds, UIAM Application Entity 120 may convert the funds into Private Utility Tokens (PUT) via its private blockchain, and record buyer 105's ownership therein and thereof. A PUT may be understood to be a private cryptocurrency maintained on a private blockchain network. In some preferred embodiments each PUT may be pegged to a certain fiat currency value).
Marks does not explicitly disclose transmitting, by the computer, a request to the platform server, the request indicating the synthetic token corresponding to the authentic token, wherein the synthetic token is distinct from the authentic token. However, in an analogous art, Slepinin discloses a method for recovering the value of a token that was lost, stolen or compromised by using a digital cash storage service wherein a recovery file (analogous to a synthetic token) is pared that includes the owner’s identification and password (paragraph 0062). This recovery file is then associated with the token in the digital cash storage system provider’s system (paragraph 0062). Then if the token is lost, the owner can send a request to the digital cash storage system for recovery of the token, and the system sends the recovery file (encrypted version of token) back to the owner who can then restore it and store it on their device (paragraph 0062). Once the token is restored, the recovery file (synthetic token) is obsolete and is removed (paragraph 0063). It would have been obvious to use a synthetic token (recovery file) to recover a lost token as is provided in Slepinin so that the owner can recover the value of a token that is lost, stolen or compromised (paragraph 0062).
Claim 3 is rejected as applied above in rejecting claim 1. Furthermore, Marks discloses:
The method according to claim 1, wherein the computer generates the authentic token for a digital wallet on the blockchain, digital wallet associated with a client digital identity (paragraphs 0049-0050: a Unique Identity Asset Marker (UIAM) token may be understood to be a nonfungible digital token (NFT) that may be indicative of ownership of a particular unit of an asset, entity’s identity, an entity’s credentials, or may reflect the token holder’s authorization to access data; UIAMs may be tokenized real world assets, synthetic commodities and a user’s ownership in a UIAM token may be evidenced by a user’s possession of such tokens by the user’s digital wallet).
Claim 4 is rejected as applied above in rejecting claim 3. Furthermore, Marks discloses:
The method according to claim 3, further comprising:
receiving, by the computer from a customer device, a request associated with a first digital wallet, the request indicating a second digital wallet and a number of synthetic tokens (paragraph 0059: Each UIAM Child token may represent a number of real-world items (and/or digital items) that may be linked to its Parent UIAM and the other minted Child UIAM tokens via a particular genetic make-up, a particular formula, a specific set of environmental conditions, and/or the like); and
verifying, by the computer, that a digital identity of the second digital wallet associates with the client digital identity (paragraph 0023, 0049-0050, : receiving financial account data and identifying information from a prospective seller and verifying the data provided by the prospective seller, and if the data verification is successful, whitelisting a digital wallet of the prospective seller via a smart contract execution on the first blockchain and generating a UIAM minter account for the seller, recording the verified seller identity and minter status in the first blockchain and providing a UIAM token and an identity token to the verified seller).
Regarding claim 11, Marks discloses:
A system comprising:
memory (paragraph 0094: memory); and
a computer comprising one or more processors configured to:
receive a notification from the platform server indicating an authentic token minted to a blockchain (paragraph 0023, 0049-0050, : receiving financial account data and identifying information from a prospective seller and verifying the data provided by the prospective seller, and if the data verification is successful, whitelisting a digital wallet of the prospective seller via a smart contract execution on the first blockchain and generating a UIAM minter account for the seller, recording the verified seller identity and minter status in the first blockchain and providing a UIAM token and an identity token to the verified seller);
generate a synthetic token corresponding to the authentic token (paragraphs 0049-0050: a user's ownership a UIAM token may be evidenced by a user's possession of such token(s) by the user's digital wallet (or in alternative embodiments, a user's digital vault). As is known in the art, the user may possess a private cryptographic key the provides secure access to her digital wallet and may evince ownership to the wallet and its contents); and
update the authentic token associated with the platform server according to the synthetic token as indicated by the request (paragraphs 0049-0050, 0081, 0158: UIAM Application Entity 120 may be configured to push out application updates to buyer mobile/computing devices 115, seller computing/mobile devices 113, and/or the like; Then, as in step 330, upon receiving the funds, UIAM Application Entity 120 may convert the funds into Private Utility Tokens (PUT) via its private blockchain, and record buyer 105's ownership therein and thereof. A PUT may be understood to be a private cryptocurrency maintained on a private blockchain network. In some preferred embodiments each PUT may be pegged to a certain fiat currency value).
Marks does not explicitly disclose transmitting, by the computer, a request to the platform server, the request indicating the synthetic token corresponding to the authentic token, wherein the synthetic token is distinct from the authentic token. However, in an analogous art, Slepinin discloses a method for recovering the value of a token that was lost, stolen or compromised by using a digital cash storage service wherein a recovery file (analogous to a synthetic token) is pared that includes the owner’s identification and password (paragraph 0062). This recovery file is then associated with the token in the digital cash storage system provider’s system (paragraph 0062). Then if the token is lost, the owner can send a request to the digital cash storage system for recovery of the token, and the system sends the recovery file (encrypted version of token) back to the owner who can then restore it and store it on their device (paragraph 0062). Once the token is restored, the recovery file (synthetic token) is obsolete and is removed (paragraph 0063). It would have been obvious to use a synthetic token (recovery file) to recover a lost token as is provided in Slepinin so that the owner can recover the value of a token that is lost, stolen or compromised (paragraph 0062).
Claim 13 is rejected as applied above in rejecting claim 11. Furthermore, Marks discloses:
The system according to claim 11, wherein the one or more processors generates the authentic token for a digital wallet on the blockchain, digital wallet associated with a client digital identity (paragraphs 0049-0050: a Unique Identity Asset Marker (UIAM) token may be understood to be a nonfungible digital token (NFT) that may be indicative of ownership of a particular unit of an asset, entity’s identity, an entity’s credentials, or may reflect the token holder’s authorization to access data; UIAMs may be tokenized real world assets, synthetic commodities and a user’s ownership in a UIAM token may be evidenced by a user’s possession of such tokens by the user’s digital wallet).
Claim 14 is rejected as applied above in rejecting claim 13. Furthermore, Marks discloses:
The system according to claim 13, wherein the one or more processors are further configured to:
receive, from a customer device, a request associated with a first digital wallet, the request indicating a second digital wallet and a number of synthetic tokens (paragraph 0059: Each UIAM Child token may represent a number of real-world items (and/or digital items) that may be linked to its Parent UIAM and the other minted Child UIAM tokens via a particular genetic make-up, a particular formula, a specific set of environmental conditions, and/or the like); and
verify that a digital identity of the second digital wallet associates with the client digital identity (paragraph 0023, 0049-0050, : receiving financial account data and identifying information from a prospective seller and verifying the data provided by the prospective seller, and if the data verification is successful, whitelisting a digital wallet of the prospective seller via a smart contract execution on the first blockchain and generating a UIAM minter account for the seller, recording the verified seller identity and minter status in the first blockchain and providing a UIAM token and an identity token to the verified seller).
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.
8. Claim(s) 2 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marks (U.S. Patent Pub. No. US 2023/0037728) in view of Slepinin (U.S. Patent Pub. No. US 2015/0081566) in further in view of Ward et al. (WO 2023/201167).
Claim 2 is rejected as applied above in rejecting claim 7. Furthermore, Marks discloses invalidating a token (paragraph 0150: UIAM Application Entity 120 may remove the UTs from buyer's account. In certain preferred embodiments, the UTs removed from buyer 103's account may be burned. Such actions may be recorded on a private blockchain of UIAM Application Entity 120, a public blockchain of Public Blockchain Entity 160, and/or stored in a centralized digital ledger). However, the combination of Marks and Slepinin does not explicitly disclose invalidating the synthetic token by transferring the synthetic token to an inaccessible blockchain address. In an analogous art, Ward discloses destroying a token by sending the token to a wallet address that is inaccessible (paragraph 00349). It would have been obvious to invalidate a token by sending it to an inaccessible wallet so that the token can no longer be accessed by a user (Ward: paragraph 00349).
Claim 12 is rejected as applied above in rejecting claim 11. Furthermore, Marks discloses invalidating a token (paragraph 0150: UIAM Application Entity 120 may remove the UTs from buyer's account. In certain preferred embodiments, the UTs removed from buyer 103's account may be burned. Such actions may be recorded on a private blockchain of UIAM Application Entity 120, a public blockchain of Public Blockchain Entity 160, and/or stored in a centralized digital ledger). However, the combination of Marks and Slepinin does not explicitly disclose invalidating the synthetic token by transferring the synthetic token to an inaccessible blockchain address. In an analogous art, Ward discloses destroying a token by sending the token to a wallet address that is inaccessible (paragraph 00349). It would have been obvious to invalidate a token by sending it to an inaccessible wallet so that the token can no longer be accessed by a user (Ward: paragraph 00349).
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 KAVEH ABRISHAMKAR whose telephone number is (571)272-3786. The examiner can normally be reached M-F 9-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jung Kim can be reached at 571-272-3804. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KAVEH ABRISHAMKAR/
04/07/2026Primary Examiner, Art Unit 2494