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 .
Claims 3-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/4/2025.
Claim Objections
Claim 2 is objected to because of the following informalities: “a product blueprint and/or other digital representation of a product, project, component, or part of a physical product on the research and development platform,” in line 2. It appears that the claim limitation should be written as “the blueprint and/or other digital representation of a product, project, component, or part of a physical product on the research and development platform,” as dependent on claim 1 above. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: “a distributed ledger (blockchain),” in line 6. It appears that the claim limitation should be written as “the distributed ledger (blockchain).” Appropriate correction is required.
Claim 2 is objected to because of the following informalities: “a non-fungible token,” in line 6. It appears that the claim limitation should be written as “the non-fungible token.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 2 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claims are narrative in form and replete with indefinite language. According to the preambles, these claims are method claims. However, method steps are not clearly recited in the body of the claims. The term “system” in the body of the claims, along with a lack of clearly defined limitations, creates confusion as to whether Applicant is trying to claim a system or a method. Additionally, claim 2 is written as two sentences. For purposes of examination, these claims are interpreted as method claims and the claims are being examined as best understood according to the concepts recited in the claims.
Claims 1-2 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-2 recites the limitation "the research and development platform" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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 1-2 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
As noted above, for purpose of the examination, Examiner interprets claims 1 and 2 as being a “method” claim.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03) Claim 1 recites a process, which is a statutory category of invention (Step 1: YES).
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a)). Yes.
The claims are analyzed to determine whether it is directed to a judicial exception. The following claims identify the limitations that recite additional elements in bold and the abstract idea without bold. Underlined claim limitations denote newly added claim limitations:
Claim 1 recites a method comprising a system for the conversion of a blueprint and/or other digital representation of a product, project, component, or part of a physical product on the research and development platform, into a non-fungible token (NFT) that is recorded on a distributed ledger (blockchain) that can be stored, traded, manufactured, produced, patented or rented and also provides for NFT lotteries and in any other ways be monetized. These limitations, as drafted, under its broadest reasonable interpretation, covers performance via certain methods of organizing human activity, but for the recitation of generic computer components. Under human activity, the limitations are fundamental economic practice. More specifically, under fundamental economic practice, the claims involve mitigating risk. Accordingly, the claim recites an abstract idea. The mere recitation of generic computer components in the claims do not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: Yes. The claims recite an abstract idea).
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d)). No.
The above judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of a system, non-fungible token, digital representation, and distributed ledger (blockchain). The additional elements of a system, are just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)). The additional elements of digital representation, non-fungible token, and distributed ledger (blockchain) are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of blockchain (MPEP 2106.05(h)). The computer components are recited at such a high-level of generality (i.e. as a generic computer components) such that it amounts to no more than mere instructions to apply the exception using generic computer components, and the claims fail to recite technological detail as to how the step of the judicial exception is accomplished. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. (Step 2A-Prong 2: NO. The judicial exception is not integrated into a practical application).
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05). No.
The claims are next analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements of (system, non-fungible token, digital representation, and distributed ledger (blockchain) in the claims amount to no more than mere instructions to apply the exception using a generic computer component and generally linking the use of blockchain to judicial exception. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component and generally linking the use of blockchain to the judicial exception cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claims do not amount to significantly more than the recited abstract idea (Step 2B: NO; The claims do not provide significantly more, and are not patent eligible).
Claim 2 recites the method according to claim 1, wherein the system further comprises a method for conversion of an input into a product blueprint and/or other digital representation of a product, project, component, or part of a physical product on the research and development platform, through a proprietary algorithm/artificial intelligence system. The blueprint and/or digital representation of a product, component, or part of a physical product is then minted on a distributed ledger (blockchain) as a non-fungible token. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of the system and algorithm/artificial intelligence system are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. These limitations are also part of the abstract idea identified in claim 10, and the additional elements of digital representation, non-fungible token, and distributed ledger are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of blockchain (MPEP 2106.05(h)), Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McDonald US 20240062178.
Regarding claim 1, McDonald discloses a method comprising a system for the conversion of a blueprint and/or other digital representation of a product, project, component, or part of a physical product on the research and development platform (Generating a cryptographic digital asset, Fig. 1, creating a digitally minted golfclub), into a non-fungible token (NFT) that is recorded on a distributed ledger (blockchain) (Minting as NFT on blockchain and recording ownership on ledger; Fig. 4; Fig. 7, 704 to 708 to 712 to 716 and 720; Para. 28, provisioned through a blockchain ledger; Para. 30; Para. 31, with smart contracts that run on blockchain network; See also Fig. 5, describing the process from digital asset protocol to creating digital art to linking digital asset to blockchain ledger, 524) that can be stored, traded, manufactured, produced, patented or rented (Para. 28, “Using the digital asset, the buyer is enabled to securely trade or sell the tangible club, trade or sell the digital club, store the non-fungible token representing ownership of the digital club in a cryptocurrency wallet or other digital blockchain wallet, and, based on rules of acceptable club manufacturability, create a custom, made-as-new, tangible club”) and also provides for NFT lotteries and in any other ways be monetized (Fig. 5, Element 548, Allows posting digital asset to marketplace, where there are NFT lotteries and ways to sell).
Regarding claim 2, McDonald discloses wherein the system further comprises a method for conversion of an input into a product blueprint and/or other digital representation of a product, project, component, or part of a physical product on the research and development platform (Generating a cryptographic digital asset, Fig. 1, creating a digitally minted golfclub; Para. 40, representation as authenticated ticket; Para. 62, GolfNET as ownership of a specific asset; Para. 68), through a proprietary algorithm/artificial intelligence system (Para. 80, machine learning system which is an algorithm intelligence system).
The blueprint and/or digital representation of a product, component, or part of a physical product is then minted on a distributed ledger (blockchain) as a non-fungible token (Para. 25, discussing minting; Para. 32, minting to blockchain network as NFT; Para. 37, NFT are recorded, or minted to the blockchain ledger stored in the blockchain network).
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 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.
Claim(s) 1 are rejected under 35 U.S.C. 103 as being unpatentable over McDonald, in view of Build Bear, “Building an NFT Lottery.”
Regarding claim 1, McDonald discloses a method comprising a system for the conversion of a blueprint and/or other digital representation of a product, project, component, or part of a physical product on the research and development platform (Generating a cryptographic digital asset, Fig. 1, creating a digitally minted golfclub), into a non-fungible token (NFT) that is recorded on a distributed ledger (blockchain) (Minting as NFT on blockchain and recording ownership on ledger; Fig. 4; Fig. 7, 704 to 708 to 712 to 716 and 720; Para. 28, provisioned through a blockchain ledger; Para. 30; Para. 31, with smart contracts that run on blockchain network; See also Fig. 5, describing the process from digital asset protocol to creating digital art to linking digital asset to blockchain ledger, 524) that can be stored, traded, manufactured, produced, patented or rented (Para. 28, “Using the digital asset, the buyer is enabled to securely trade or sell the tangible club, trade or sell the digital club, store the non-fungible token representing ownership of the digital club in a cryptocurrency wallet or other digital blockchain wallet, and, based on rules of acceptable club manufacturability, create a custom, made-as-new, tangible club”). McDonald fails to disclose also provides for NFT lotteries and in any other ways be monetized. However, Build Bear discloses how to deploy an NFT to a lottery, including using Next.js, installing the application, connecting the application with the blockchain and user interface (Step 4 and 5).
It would have been obvious to one of ordinary skill in the art, before the effective date of filing, to have modified McDonald with the deployment to an NFT lottery system with ways to make money of “BuidBear Team.” Doing so allows the object that is created to be deployed to a profitable market where the user to benefit from the creation of the NFT asset and make money.
Examiner notes that there are two rejections for the claim limitation “provides for NFT lotteries and in any other was be monetized,” as both a 102 and 103 rejection (below). The claim “provides for NFT lotteries and in any other was be monetized” could be interpreted as the NFT lottery being “one way” that fulfils “multiple” ways to monetized (the 102 rejection above), or could be a separate way to monetize, as apart from “others ways” to monetize (the 103 rejection).
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over McDonald, in view of Build Bear, “Building an NFT Lottery,” as applied to claim 1 above, further in view of Shapsal US 202300622427.
Regarding claim 2, modified McDonald discloses where the system further comprises a method for conversion of an input into a product blueprint and/or other digital representation of a product, project, component, or part of a physical product on the research and development platform (Generating a cryptographic digital asset, Fig. 1, creating a digitally minted golfclub; Para. 40, representation as authenticated ticket; Para. 62, GolfNET as ownership of a specific asset; Para. 68), but fails to disclose through a proprietary algorithm/artificial intelligence system. However, Shapsal discloses a conversion for building NFTs through an artificial intelligence system (Para. 68; Para 79, using the AI system to extract information and compare patterns as well as verify the authenticity of an NFT; Fig. 8, 806)
It would have been obvious to one of ordinary skill in the art, before the effective date of filing, to have modified McDonald with the AI system of Shapsal. Doing so enhances the accuracy and security of the NFT that is being built and sold and rented.
McDonald also discloses where the blueprint and/or digital representation of a product, component, or part of a physical product is then minted on a distributed ledger (blockchain) as a non-fungible token (Para. 25, discussing minting; Para. 32, minting to blockchain network as NFT; Para. 37, NFT are recorded, or minted to the blockchain ledger stored in the blockchain network).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Khan US 20230289784 9/14/2023 G06Q20/38 discloses creating and managing AI entities represented by NFT on blockchain.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON M DUCK whose telephone number is (469)295-9049. The examiner can normally be reached 8am - 5pm.
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/BRANDON M DUCK/Examiner, Art Unit 3693
/ELIZABETH H ROSEN/Primary Examiner, Art Unit 3693