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
The amendment filed on November 24, 2025 has been entered. Applicant has amended claim 1. Claims 10-14 have been withdrawn from consideration. Claims 1-14 are pending. Claims 1-9 have been examined and currently stand rejected.
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. MPEP §2106.
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined as Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter). MPEP §2106.03.
Here, the claims are directed to the statutory category of a process (Claims 1-9). Therefore, we proceed to Step 2A, Prong 1. MPEP §2106.
Under a Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. MPEP §2106.04. Independent Claim 1 is selected as being representative of the independent claims in the instant application. Claim 1 recites:
A method of generating graphics for digital assets, comprising:
receiving an input identifying a first digital wallet;
identifying one or more non-fungible tokens associated with the first digital wallet;
determining, via a graphics generator, which of the one or more non-fungible tokens are compatible with and can be rendered in a virtual environment;
selecting, from the compatible one or more non-fungible tokens, at least one non-fungible token, each token of the selected at least one non-fungible token being associated with a
corresponding digital asset including at least one attribute;
generating, based on at least one attribute of the digital assets corresponding to each token of the selected at least one non-fungible token, a graphic;
providing the graphic to the virtual environment; and
displaying the graphic within the virtual environment.
Here, the claims recite an abstract idea, or combination of abstract ideas of identifying and determining combability of tokens, generate and provide a graphic based on attributes of the tokens
s. This concept/abstract idea, which is identified in the bolded sections seen above, falls within the Certain Methods of Organizing Human Activity grouping because it describes a mental process (e.g., identify a wallet, e.g., an observation, select compatible tokens e.g., evaluation, determine a compatibility e.g., judgment). Furthermore, the providing and displaying the graphic could be done by pen and paper.
Accordingly, it is determined that the claims recite an abstract idea since they fall within one or more of the three enumerated categories of patent ineligible subject matter. MPEP §2106.04.
Since it is determined that the claim(s) contain a judicial exception, it must then be determined, under Step 2A, Prong 2, whether the judicial exception is integrated into a practical application of the exception. MPEP §2106.04. In order to make this determination, the additional element(s) are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. Here claim 1 recite the additional elements of a first digital wallet, non-fungible tokens and a graphic generator and a virtual environment. These additional elements are all recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception, or a portion thereof, using a generic computer component. See MPEP 2106.05(f). Additionally, Examiner finds no indication in the Specification, that the operations recited in the independent claims require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any allegedly inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. Furthermore, there is no indication in the claim(s) that the use of a first digital wallet, a graphic generator, non-fungible tokens and a virtual environment in combination with the abstract idea leads to an improvement of the processor, memory, another technology, or to a technical field. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Looking at the elements as a combination does not add anything more than the elements analyzed individually. Examiner further notes that even though the claims may not preempt all forms of the abstraction, this alone, does not make them any less abstract.
When analyzed under step 2B, the claim(s) does/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 generic computing component (e.g., a first digital wallet, a graphic generator, non-fungible tokens and a virtual environment) to implement the abstract idea amounts 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 or significantly more than the judicial exception. Considered as an ordered combination, the additional elements recited in the claim(s) add nothing that is not already present when the steps are considered separately.
Therefore, claim 1 is rejected under 35 U.S.C. §101 and are not patent eligible. Dependent claims 2-9 when analyzed are held to be patent ineligible under 35 U.S.C. §101 because the additional recited limitation(s) fail to establish that the claim(s) is/are not directed to an abstract idea.
Dependent claim 2 describes an additional abstract idea of providing data to an artificial intelligence model. This steps does not modify the “generating” step. This claim fails to include any new additional elements that integrate the abstract idea(s) into a practical application or provide significantly more than the abstract idea(s).
Dependent claim 3 further refines the abstract idea by indicating the graphic is generated based on data received from an application programming interface. This claim fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 4-9 further refines the abstract idea by describing the graphic, the one or more non-fungible tokens (e.g., includes brand guidelines and logo) and further indicating that the logo and a sponsorship asset has a display time and a term. This claim fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract ideas itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, the dependent claims are also not patent eligible.
Accordingly, it is determined that all claims are directed to non-statutory subject matter under 35 U.S.C. 101 and are ineligible.
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.
The factual inquiries 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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Chan et al. (US 12,380,432 B1) hereinafter “Chan” in view of Andon et al. (US 2025/0258895 A1) hereinafter “Andon”.
Regarding claim 1: Chan disclose:
A method of generating graphics for digital assets, comprising:
receiving an input identifying a first digital wallet; (See at least Chan, Abs.; Col. 3 lines 12-20; Chan disclose receiving an input (i.e., connects) identifying a first digital wallet (i.e., token minter connects with a digital wallet associated with the user).)
identifying one or more non-fungible tokens associated with the first digital wallet; (See at least Chen, Col. 3 lines 12-20; Chen disclose identifying (i.e. checking) one or more non-fungible tokens (i.e., funds) associated with the first digital wallet.)
determining, via a graphics generator which of the one or more non-fungible tokens are compatible with and can be rendered in a virtual environment; (See at least Chan, Col. 3 lines 17-18; Col. 5 lines 12-17; a graphics generator (i.e., token minter application) determines which of the one or more non-fungible tokens (i.e., tokens/funds) are compatible (e.g., checking the digital wallet to determine whether the digital wallet contains sufficient funds… The funds can be specific (e.g., a specific type of digital currency) and can be rendered in a virtual environment (e.g., The token minting service 132, upon determining that a digital wallet associated with the user includes a threshold amount of digital currency, manages communications with various devices to generate a non-fungible token (NFT) (e.g., the token 144) and a representative image (e.g., the image 142).)
selecting, from the compatible one or more non-fungible tokens, at least one non-fungible token, including at least one attribute; (See at least Chan, Fig. 4B; Col. 3 lines 11-36; The non-fungible token lists the attributes.)
generating, based on at least one attribute of the digital assets corresponding to each token of the selected at least one non-fungible token, a graphic; (See at least Chan, Fig. 4B steps 146 and 440; Col 5 lines 12-20; Chan disclose generating a graphic (i.e., image) based on at least one attribute corresponding to each token of the selected at least one non-fungible token (i.e., based on metadata/attributes).)
providing the graphic to the virtual environment; and (See at least Chan, Col. 6 lines 35-36; display the image.)
displaying the graphic within the virtual environment. (See at least Chan, Col. 6 lines 35-36; display the image.)
Chan disclose that the generated token is associated with an artifact and providing a physical copy of the image generated (See at least Chan, Fig. 4B; Claim 1). However, Chan does no explicitly disclose each token of the selected at least one non-fungible token being associated with a corresponding digital asset.
Andon, on the other hand teaches each token of the selected at least one non-fungible token being associated with a corresponding digital asset (See at least Andon, [0098]; a digital collectable (e.g., an article of apparel 234) that may be uniquely backed by a token on the blockchain.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chan and include Andon’s teachings so that the buyer is enabled to securely trade the digital shoe, store the digital shoe in a cryptocurrency wallet or other digital blockchain locker. (Andon, [0009])
Regarding Claim 2: The combination of Chan and Andon disclose the method of claim 1. The combination further disclose wherein generating the graphic includes providing the at least one attribute of the digital assets corresponding to each token of the selected at least one non-fungible token to a trained artificial intelligence model. (See at least Andon, [0070]; [0079]; A machine learning function may be executed at predefined process block 117 in order to generate image features through a neural network.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chan and include Andon’s teachings in order to provide a dynamic and personalized experience to the users.
Regarding claim 3: The combination of Chan and Andon disclose the method of claim 1. The combination further disclose wherein the graphic is generated based on data received from an application programming interface. (See at least Andon, [0070]; [0098] In one configuration, the application 224 may access the genetic code of the digital asset on the blockchain 60 via an API or other software interface; The 3rd party integration service 66 may operate as an API on an app provided on the user's device, or as a dedicated cloud based service. In some embodiments, the 3rd party integration service 66 may make the virtual object (for example, as expressed by the virtual object generator 62).)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chan and include Andon’s teachings in order to provide a dynamic and personalized experience to the users.
Regarding claim 4: The combination of Chan and Andon disclose the method of claim 1. The combination further disclose wherein at least one of the one or more nonfungible tokens is associated with a brand digital asset including brand guidelines, and wherein the graphic is generated based on the brand guidelines. (See at least Andon, [0035] In some embodiments, a digital asset may be created for brand promotion purposes.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chan and include Andon’s teachings in order to promote the service and provide a dynamic and personalized experience to the users.
Claim(s) 5, 7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan and Andon as applied to claim 1 and 4 above, and further in view of Andon et al. (US 2022/0300966 A1), hereinafter “Andon 2”.
Regarding claim 5: The combination of Chan and Andon disclose the method of claim 4. However, the combination does not explicitly disclose wherein the brand guidelines include a logo, and wherein the logo is included in the graphic.
Andon 2, on the other hand teaches, wherein the brand guidelines include a logo, and wherein the logo is included in the graphic (See at least Andon 2, [0007]; [0023-0024]; For example, the NFT 18 may include a first ad token container representing a primary logo displayed in large-form on the center of the jersey 16, non-functional descriptive material language that does not affect the positively recited steps in claim 1. )
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chan and include Andon 2’s teachings in order to promote the service and provide a dynamic and personalized experience to the users.
Regarding claim 7: The combination of Chan, Andon and Andon 2 disclose the method of claim 5. The combination further disclose wherein the graphic includes a logo, and wherein a total display time of the logo in the virtual environment is based, at least in part, on a timing attribute of at least one digital object corresponding to the selected at least one non-fungible token. (See at least Andon 2, [0011]; [0030]; [0036]; Once published to the marketplace, users may enter the marketplace and agree to certain "sponsorships" whereby the user would agree to wear a logo on the primary asset for a predetermined amount of time; the sub-asset NFT may deteriorate or diminish as a function of time or use of the sub-asset within the digital world or in connection with the character avatar.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chan and include Andon 2’s teachings in order to promote the service and provide a dynamic and personalized experience to the users.
Regarding claim 9: The combination of Chan and Andon disclose the method of claim 1. However, the combination does not explicitly disclose wherein the selected at least one nonfungible token includes a sponsorship non-fungible token associated with a sponsorship digital asset, wherein at least one attribute of the sponsorship digital asset is associated with a term of a sponsorship agreement.
Andon 2, on the other hand teaches wherein the selected at least one nonfungible token includes a sponsorship non-fungible token associated with a sponsorship digital asset, wherein at least one attribute of the sponsorship digital asset is associated with a term of a sponsorship agreement .(See at least Andon 2, [0007]; [0025]; In some embodiments, the second, sub-asset NFT may be an advertising asset and the image from the second digital graphics file may include an advertising logo In some embodiments, the logo 50 may simply be a component of a broader advertising/sponsorship agreement that may be represented by the advertising token/asset 32.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chan and include Andon 2’s teachings in order to promote the service and provide a dynamic and personalized experience to the users.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan and Andon as applied to claim 4 above, and further in view of McDonnell et al. (US 20240062178 A1), hereinafter “McDonnell”.
Regarding claim 6: The combination of Chan and Andon disclose the method of claim 4. However, the combination does not explicitly disclose wherein an API endpoint is included as an attribute of the brand guidelines.
McDonnell, on the other hand teaches wherein an API endpoint is included as an attribute of the brand guidelines. (See at least McDonnell, [0030] In some cases, an address referenced in an NFT could be an application programming interface (API) endpoint that may vary information returned to the user, or implement a function based on the HTTP method through which the API endpoint is accessed.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention include teachings of McDonnell into the above combination in order to allow a property of the digital asset to be changed based on the operation performed and to provide publicly available information about the digital asset without the need for authentication. (McDonnell, [0033]).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan and Andon as applied to claim 1 above, and further in view of Yantis et al. (US 2021/0326862 A1), hereinafter “Yantis”.
Regarding claim 8: The combination of Chan and Andon disclose the method of claim 1. However, the combination does not explicitly disclose wherein the graphic is not based on graphics associated with the digital assets corresponding to the selected at least one non-fungible token.
Yantis, on the other hand teaches wherein the graphic is not based on graphics associated with the digital assets corresponding to the selected at least one non-fungible token. (See at least Yantis, [0025]; [0027] T[0029]; [0032]; [0036] the graphic is not based on graphics associated with the digital assets corresponding to the selected at least one non-fungible token (e.g., the system generates unique items.).)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include into the above combination, teachings of Yantis in order to generate items that may be unique and vary in rarity among the various items. (Yantis, [0003]).
The portion which recites “wherein the graphic is not based on graphics associated with the digital assets corresponding to the selected at least one non-fungible token” is non-functional descriptive material. For example, this portion does not affect any of the positively recited steps.
It has been held that non-functional descriptive material will not distinguish the invention from the prior art in terms of patentability.
Examiner has provided prior art, where available, for these intended use and/or non-functional phrases/limitations, however, these phrases/limitations will not distinguish the invention from the prior art in terms of patentability. Accordingly, the prior art is only provided in the interest of compact prosecution.
Response to Arguments
Claim Rejections - 35 U.S.C. § 101
Applicant's arguments filed November 24, 2025 regarding the claim rejections under 35 USC 101 have been fully considered but they are not persuasive.
Applicant asserts “that the recited claim limitations do not fall within one of the three groupings of abstract ideas, including the "certain method of organizing human activity” and “that cannot
practically be performed in the human mind, and, as such, do not recite a mental process (as alleged
by the Office)” Amendment, pp. 5-8. Examiner respectfully disagrees. The operations recited in independent claim 1 amount to collecting, analyzing and presenting information. These operations reflect mental process (e.g., data evaluation). Examiner contends that the process could be done by a human e.g., using pen and paper. The additional elements are used as a tool to implement the recited abstract idea and they do not represent an improvement to any technology or to the blockchain.
Claim Rejections - 35 U.S.C. § 103
Applicant's arguments filed November 24, 2025 regarding the claim rejections under 35 USC 103 have been fully considered but they are not persuasive.
Applicant asserts that “Chan makes no mention of determining whether the "funds" would or would not be compatible with a virtual environment. Moreover, Chan fails to teach or suggest determining if the 'funds' could be rendered in a virtual environment.” Amendment, pp. 9-10. Examiner respectfully disagrees. Chan teaches determine whether the digital wallet contains sufficient funds to complete the minting process. The funds can be specific (e.g., a specific type of digital currency). Chen, Col. 3 lines 12-17. Under the broadest reasonable interpretation, the combability of token (e.g., specific type of digital currency) is verified.
Regarding the assertion “Moreover, Chan fails to teach or suggest determining if the 'funds' could be rendered in a virtual environment.” Applicant’s specification recites that what is being rendered is graphics that are based of attributes of the tokens The graphics generator can determine which cryptographic tokens are compatible with the given virtual environment (e.g., the sports video game) and can render graphics based on the attributes of the tokens, For example, if the sports video game is a basketball video game, and the listed cryptographic tokens in the user's wallet include a basketball shoe NFT, and a boat shoe NFT, and the user's wallet further includes a sports (Applicant’s Specification [0073]). Chen discloses “The token minting service 132, upon determining that a digital wallet associated with the user includes a threshold amount of digital currency, manages communications with various devices to generate a non-fungible token (NFT) (e.g., the token 144) and a representative image (e.g., the image 142). Chen, Col. 5 lines 12-17. Under the broadest reasonable interpretation, Chen teaches rendering an imaged related with the token.
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.
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/K.G.M/Examiner, Art Unit 3698
/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698