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 .
Status of Claims
Claims 8-20 have been examined.
Claims 1-7 have been canceled by the Applicant.
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 8-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In the instance case, claims 8-14 are directed to a method and claims 15-20 are directed to a system. Therefore, these claims fall within the four statutory categories of invention.
The claims recite transferring ownership after validation which is an abstract idea. Specifically, the claims recite “receiving from a new owner…; receiving… key…; validating….and in response to successfully validating….transferring ownership…to new owner”, which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106) because the claims involve a series of steps of receiving a new owner address, receiving credentials of the new owner, validating credentials and in response to successfully validating transferring ownership which is a process that deals with commercial or legal interactions. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; MPEP 2106).
Additionally, claims are directed to decision making by analyzing data which is an abstract idea and deals with mental process. Therefore, the claim is directed to an abstract idea, as it has been held that a combination of abstract ideas, in this case mental processes and certain methods of organizing human activity, is still an abstract idea. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106), the additional elements of the claims such as, edge wallet URI, edge wallet, NFT, computing device, processor and memory, merely use a computer as a tool to perform an abstract idea. Specifically, edge wallet URI, edge wallet, NFT, computing device, processor and memory perform the steps of receiving a new owner address, receiving credentials of the new owner, validating credentials and in response to successfully validating transferring ownership. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106), the additional elements of the edge wallet URI, edge wallet, NFT, computing device, processor and memory, to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of transferring ownership after validation. As discussed above, taking the claim elements separately, edge wallet URI, edge wallet, NFT, computing device, processor and memory perform the steps of receiving a new owner address, receiving credentials of the new owner, validating credentials and in response to successfully validating transferring ownership. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of transferring ownership after validation. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims further describe the abstract idea of transferring ownership after validation. Specifically, claims 9-10 and 16-17 describing confirming the transfer which are part of the abstract idea, claims 11-12 and 18-19 recite further edge wallet which is a part of additional elements, claim 13 further describing additional element which is part of the abstract idea and claims 14 and 20 recite description of the signature which is also part of the abstract idea. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10 and 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 10 and 17 recite “notifying the new owner of the NFT of the approval to transfer ownership occurs in response to receiving the approval of the request to transfer ownership of the NFT within a predefined number of blocks being added to a blockchain network” However, specification does not describe this limitation.
Specification discloses: If the owner fails to accept the request, or fails to accept the request within a predefined number of blocks being added to the blockchain network 100, the NFT smart contract 109 could return the cryptocurrency coins or tokens to the purchaser. (See paragraph 0043), but does not disclose the limitation above.
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 8-20 are 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 8 and 15 recite the limitation "the approval" in line 3 and 7, and “the new owner” in lines 8 and 13 respectively. There is insufficient antecedent basis for these limitations in the claim.
Claims 9-14 and 16-20 are also rejected as each depends from claims 8 and 15 respectively.
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, 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 8-20 are rejected under 35 U.S.C. 103 as being unpatentable over YANTIS (US 2022/0058628) in view of Leddy (US 20190044700).
With respect to claims 8 and 15 YANTIS discloses:
receiving, from a new owner of a non-fungible token (NFT), an edge wallet uniform resource identifier (URI) associated with the new owner of the NFT (See paragraphs 0896-0897);
receiving, from an edge wallet associated with the edge wallet URI, a public key associated with the new owner of the NFT and a signature of the public key by a respective private key (See paragraphs 0842, 0893, 0897);
validating the signature of the public key (See paragraphs 0893 and 0898); and
in response to successfully validating the signature of the public key, transferring ownership of the NFT to the new owner (See paragraph 0898).
YANTIS does not explicitly disclose receiving request from new owner in response to notifying the new owner of the NFT of the approval to transfer ownership of the NFT.
Leddy discloses: receiving request from new owner in response to notifying the new owner of the NFT (i.e. item) of the approval to transfer ownership of the NFT (See paragraphs 0069 and 0071). Therefore, it would have been obvious to one of the ordinary skills in the art at the time invention was filed to modify the YANTIS reference with the Leddy reference in order to make speedy ownership transfer process. (See Leddy paragraph 0002).
With respect to claims 9 and 16 YANTIS in view of Leddy discloses all the limitations as describe above. Leddy further discloses: notifying an existing owner of the NFT of a request to transfer ownership of the NFT; receiving, from the existing owner, an approval of the request to transfer ownership of the NFT; and notifying the new owner of the NFT of the approval to transfer ownership of the NFT (See paragraphs 0066, 0069 and 0071). Therefore, it would have been obvious to one of the ordinary skills in the art at the time invention was filed to modify the YANTIS reference with the Leddy reference in order to make speedy ownership transfer process. (See Leddy paragraph 0002).
With respect to claims 10 and 17 YANTIS in view of Leddy discloses all the limitations as describe above. Leddy further discloses: wherein notifying the new owner of the NFT of the approval to transfer ownership occurs in response to receiving the approval of the request to transfer ownership of the NFT within a predefined number of blocks being added to a blockchain network (See paragraphs 0066-0071). Therefore, it would have been obvious to one of the ordinary skills in the art at the time invention was filed to modify the YANTIS reference with the Leddy reference in order to make speedy ownership transfer process. (See Leddy paragraph 0002).
With respect to claims 11 and 18 YANTIS in view of Leddy discloses all the limitations as describe above. YANTIS further discloses: wherein the edge wallet is a first edge wallet and the public key is received from the first edge wallet (See paragraphs 0842, 0893, 0897). With respect to “in response to a transfer of private date from a second edge wallet associated with the existing owner to the first edge wallet associated with the new owner.” These limitations do not have any patentable weight because first edge wallet and second edge wallet are not part of the claimed method and system respectively. "MPEP § 2103 I C states that language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. An example of such language includes statements of intended use or field of use (MPEP §2103 I C)."
With respect to claims 12 and 19 YANTIS in view of Leddy discloses all the limitations as describe above. With respect to “wherein the edge wallet represents a service that can hold or store sensitive or private date on behalf of a user of a blockchain network.” These are intended use language and does not have any patentable weight. "MPEP § 2103 I C states that language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. An example of such language includes statements of intended use or field of use (MPEP §2103 I C)."
With respect to claims 13 YANTIS in view of Leddy discloses all the limitations as describe above. YANTIS discloses: wherein the NFT can be used to authenticate a current owner of the NFT (See paragraph 0904). Additionally, this limitation is intended use language and it has been held that language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. An example of such language includes statements of intended use or field of use (MPEP §2103 I C).
With respect to claims 14 and 20 YANTIS in view of Leddy discloses all the limitations as describe above. YANITS discloses: wherein the signature of the public key is a DSA signature (See paragraph 0884). YANTIS in view of Leddy does not explicitly disclose signature is a Boneh-Lynn- Shacham (BLS) signature. However, Examiner takes Official notice that BLS signature is old and well known in the art. Therefore, it would have been obvious to one of the ordinary skills in the art to substitute DSA signature as disclosed by YANTIS with the known type of BLS signature in order to yield a predictable result.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sneider (US 20230275751) discloses BLS signature (See paragraph 0049)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZESHAN QAYYUM whose telephone number is (571)270-3323. The examiner can normally be reached Monday-Friday 9:00AM-6:00PM EST.
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, John W Hayes can be reached at (571) 272-6708. 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.
/ZESHAN QAYYUM/Primary Examiner, Art Unit 3697