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 Arguments
Applicant’s arguments with respect to claims 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.
With respect to U.S.C. 101 rejection, Applicant is of the opinion that claims are not directed to abstract idea. Claims do not recite that would qualify as commercial or legal interactions. Claims integrate the alleged judicial exception into the practical application. Specification outlines an improvement in providing authentication in a metaverse. Claim recites significantly more than alleged abstract idea and not routine or conventional in the relevant industry. However, Examiner respectfully disagrees.
Approving and completing a transfer of ownership of an asset upon verification of the recipient’s identity is a sales/ownership-transfer activity regardless of the digital nature of the asset. The claim is property characterized as reciting a certain method of organizing human activities, and is further characterized as commercial or legal interactions or a fundamental economic practice.
Applicant correctly states that improvements to technical fields beyond computer functionality may satisfy Prong two, but the claim does not reflect the improvement Applicant describes. The specification identifies the technical problem as the absence of uniquely identifying, biometric-like features for digital avatars. The claims actually describe receiving a public key and a signature from an edge wallet and validating that signature is generic public key signature verification that authenticate possession of a private key, not any uniquely identifying feature of an avatar or user, and is functionally identical to the authentication process used in any blockchain asset transfer unrelated to a metaverse or avatar. Because the claimed process does not correspond to the problem identified in the specification, the cited passages cannot establish integration into practical application.
The additional limitation Applicant states “processing an approval…within a predefined number of blocks being added to a blockchain network” recites only the well-known, industry-standard practice of gating transaction finality on a threshold number of block confirmations. This is not a technical solution to the avatar-identification problem the specification describes; It is a generic timing/finality parameter applied to any blockchain transaction, unrelated to identifying who the new owner is.
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.
Therefore, the rejection is maintained.
With respect to U.S.C. 103 rejection, Applicant is of the opinion that prior art fails to teach “receiving from an edge wallet associated with the edge wallet URI, a public key…” after “receiving, from a new owner of a non-fungible token (NFT), an edge wallet uniform resource identifier (URI)…”. However, Examiner respectfully disagrees.
Firstly, claim is silent with respect to second receiving step (i.e. receiving, from a new owner of a non-fungible token (NFT), an edge wallet uniform resource identifier (URI)…) is perform after the first receiving step (i.e. receiving from an edge wallet associated with the edge wallet URI, a public key…). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., after the first receiving) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Secondly, YANTIS discloses: receiving, from a new owner (i.e. intended recipient) of a non-fungible token (NFT), an edge wallet uniform resource identifier (URI) (i.e. public address) 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 i.e. transfer request may include a copy of the token or value that uniquely identifiers the token; in some embodiments the transfer request may include a public key of the entity that digitally signed the token). Therefore, the rejection is maintained.
The following assertions of fact have gone unchallenged as stated in the office action mail on 02/27/2026 and considered admitted prior art:
BLS signature
Status of Claims
Claims 8-9, 11-16 and 18-22 have been examined.
Claims 1-7, 10 and 17 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 8-9, 11-16 and 18-22 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 8-9, 11-14 and 21 are directed to a method and claims 15-16, 18-20 and 22 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 “processing an approval…; 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 processing an approval based on some rules, 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).
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 processing an approval based on some rules, 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 processing an approval based on some rules, 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 and 16 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. Claims 21-22 recite the recording of ownership which is 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 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 9 and 16 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 9 and 16 recite the limitation "an approval" in line 3 and 5, respectively. It is unclear to one of the ordinary skills in the art that is this approval the same as recited in claims 8 and 15 or different approval. ((In re Zletz, 893 F.2d 319, 13USPQ2d 1320 (Fed. Cir. 1989), MPEP 2173.02 (III)(B)) which states “Examiners should bear in mind that "[a]n essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process”).
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 8-9, 11-16 and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over YANTIS (US 2022/0058628) in view of Leddy (US 20190044700) and in further view of Jang (US 20220215394).
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 i.e. transfer request may include a copy of the token or value that uniquely identifiers the token; in some embodiments the transfer request may include a public key of the entity that digitally signed the token);
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).
YANTIS in view of Leddy does not explicitly disclose: processing an approval to transfer ownership of a non-fungible token (NFT) within a predefined number of blocks being added to a blockchain network. Jang discloses: processing an approval to transfer ownership of a non-fungible token (NFT) within a predefined number of blocks being added to a blockchain network (See paragraph 0002). Therefore, it would have been to one of the ordinary skills in the art at the time invention was filed to modify the combination of YANTIS and Leddy references with well-known standard blockchain confirmation as disclosed by Jang reference in order to mitigate the risk of a chain reorganization or double spending.
With respect to claims 9 and 16 YANTIS in view of Leddy and in further view of Jang 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 11 and 18 YANTIS in view of Leddy and in further view of Jang 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 data 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 and in further view of Jang 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 data 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 and in further view of Jang 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 and in further view of Jang 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.
With respect to claims 14 and 20 YANTIS in view of Leddy and in further view of Jang discloses all the limitations as describe above. YANITS discloses: recording that the NFT can be used to authenticate a current owner of the NFT in response to successfully validating the signature of the public key. (See paragraphs 0842, 0850, 0884 and 0893).
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 ZESHAN QAYYUM whose telephone number is (571)270-3323. The examiner can normally be reached Monday-Friday 9:00AM-6:00PM EST.
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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.
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/ZESHAN QAYYUM/Primary Examiner, Art Unit 3697
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