DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This Office action is in response to Applicant’s communication filed on February 3, 2026. Amendments to claims 1 and 15 and cancellation of claims 8-9 have been entered. Claims 1-7 and 10-15 are pending and have been examined. The
statement of reasons for the indication of allowable subject matter over prior art was already discussed in the Office action mailed on August 6, 2025 and hence not repeated here. The rejections and response to arguments are stated below.
Claim Rejections - 35 USC § 101
2. 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.
3. Claims 1-15 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite a method for managing a digital asset performed by a token rights management service including a transfer of ownership of the digital asset, which is considered a judicial exception because it falls under the category of “Certain Methods of organizing human activity” such as fundamental economic practice as well as commercial or legal interactions including agreements as discussed below. This judicial exception is not integrated into a practical application as discussed below. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Analysis
Step 1: In the instant case, exemplary claim 1 is directed to a method (process).
Step 2A – Prong One: The limitations of “A method for managing a digital asset performed by a token rights management service executing on a system comprising a processor and a non-transitory computer-readable storage medium storing instructions that, when executed by the processor, cause the system to perform the method, the method comprising:
receiving, from a marketplace service, an asset ownership transfer request, the asset ownership transfer request comprising a transferor identifier, a transferee identifier, and an asset identifier;
obtaining, using the asset identifier, an investor identifier associated with the digital asset, the investor identifier being associated with a partial ownership of the digital asset;
generating, a transaction assertion, wherein generating the transaction assertion comprises:
generating at least one hash value based on the transferor identifier, the transferee identifier, and the investor identifier; and
cryptographically signing the generated at least one hash value with a private key of the token rights management service to generate the transaction assertion;
verifying, using a ledger connector service, that a trusted ledger includes at least one recorded assertion associating the transferor identifier with the asset identifier and at least one recorded assertion associating the investor identifier with the transferor identifier;
recording, by the ledger connection service, in response to the verification, the transaction assertion in the trusted ledger, the transaction assertion associating the transferee identifier with the investor identifier; and
sending, in response to the recording of the transaction assertion in the trusted ledger, at least one confirmation message to the marketplace service indicating a transfer of ownership of the digital asset” as drafted, when considered collectively as an ordered combination without the italicized portions, is a process that, under the broadest reasonable interpretation, covers the category of “Certain Methods of organizing human activity” such as fundamental economic practice as well as commercial or legal interactions including agreements.
Managing an asset, including a transfer of ownership of the digital asset is a fundamental economic practice.
The steps of “receiving, from a marketplace service, an asset ownership transfer request, the asset ownership transfer request comprising a transferor identifier, a transferee identifier, and an asset identifier; obtaining, using the asset identifier, an investor identifier associated with the digital asset, the investor identifier being associated with a partial ownership of the digital asset; generating, a transaction assertion, wherein generating the transaction assertion comprises:
generating at least one hash value based on the transferor identifier, the transferee identifier, and the investor identifier; and
cryptographically signing the generated at least one hash value with a private key of the token rights management service to generate the transaction assertion;
verifying, using a ledger connector service, that a trusted ledger includes at least one recorded assertion associating the transferor identifier with the asset identifier and at least one recorded assertion associating the investor identifier with the transferor identifier; recording, by the ledger connection service, in response to the verification, the transaction assertion in the trusted ledger, the transaction assertion associating the transferee identifier with the investor identifier; and sending, in response to the recording of the transaction assertion in the trusted ledger, at least one confirmation message to the marketplace service indicating a transfer of ownership of the digital asset”, considered collectively as an ordered combination, is a form of fulfilling agreements among the parties to the contracts. Hence, the steps of the claim, considered collectively as an ordered combination without the italicized portions, covers the abstract category of “Certain Methods of organizing human activity”.
That is, other than, a marketplace service, a digital asset, at least one hash value, a system comprising a processor, a non-transitory computer-readable storage medium storing instructions, a ledger connector service, cryptographically signing, a private key and a trusted ledger, nothing in the claim precludes the steps from being performed as a method of organizing human activity. If the claim limitations, under the broadest reasonable interpretation, covers methods of organizing human activity but for the recitation of generic computer components, then it falls within the “Certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A – Prong Two: The judicial exception is not integrated into a practical application. In particular, the claim only recites the additional elements of a marketplace service, a digital asset, at least one hash value, a system comprising a processor, a non-transitory computer-readable storage medium storing instructions, a ledger connector service, cryptographically signing, a private key and a trusted ledger to perform all the steps. A plain reading of Figures 1-22 and associated descriptions in the Specification reveals that the system comprising processor, (with a non-transitory computer-readable storage medium storing instructions) may be a system with a generic processor suitably programmed to perform the associated functions. The marketplace service is interpreted to include a generic marketplace service suitably programmed to perform the associated service. The digital asset, the at least one hash value, cryptographical signature, the private key. the ledger connector service, and the trusted ledger are all generic computer components suitably programmed to perform the corresponding functions. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements in all the steps are recited at a high-level of generality (i.e., as generic computer components performing generic computer functions) such that it amounts no more than mere instructions to apply the exception using generic computer components. Accordingly, these 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. Hence, claim 1 is directed to an abstract idea.
Step 2B: The claim does 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, using the additional elements (identified above) to perform the claimed steps amounts to no more than mere instructions to apply the exception using a generic computer component. The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Hence, independent claim 1 is not patent eligible.
Dependent claims 2-15, when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations only refine the abstract idea further.
For instance, in claims 2-3, the steps “wherein obtaining the investor identifier comprises querying a database service using the asset identifier to obtain the investor identifier from the database” and “wherein the method further comprises updating an asset table managed by the database service” under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps describe the intermediate steps of the underlying process. The additional element of a database service is broadly interpreted to correspond to institutions with generic software suitably programmed to perform the associated functions. The additional element of the database service, performs a traditional function recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components.
In claims 4-5, the steps “wherein the at least one confirmation message indicates a transfer of the partial ownership of the digital asset” and
“wherein the ledger connector service comprises a service of the token rights management service” under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps describe the intermediate steps of the underlying process.
In claims 6-7, the steps “wherein the trusted ledger comprises a blockchain ledger” and “wherein the trusted ledger comprises a trusted immutable distributed assertion ledger” under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps describe the trusted ledger used in the intermediate steps of the underlying process.
In claims 8-9, the steps “wherein generating the transaction assertion further comprises signing the transaction assertion with a private key of the token rights management service” and “wherein generating the transaction assertion comprises generating at least one hash value based on at least one of the transferor identifier, the transferee identifier, and the investor identifier” under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps describe generating the transaction assertion in the intermediate steps of the underlying process.
In claim 10, the step “wherein the at least one confirmation message comprises an indication of transfer of ownership of the digital asset to the transferee identifier” under the broadest reasonable interpretation, is a further refinement of methods of organizing human activity because this step describes the at least one confirmation message used in the intermediate steps of the underlying process.
In claims 11-13, the steps “wherein the partial ownership of the digital asset is expressed in terms of a number of owned tokens associated with the digital asset”,
“wherein the trusted ledger comprises at least one assertion associating the investor identifier with the number of owned tokens” and
“wherein the number of owned tokens comprises at least a subset of a total number of minted tokens associated with the digital asset”, are further refinements of methods of organizing human activity because these steps describe the intermediate steps of the underlying process.
In claims 14, the step “wherein the partial ownership of the digital asset is expressed in terms of a percentage ownership of the digital asset” under the broadest reasonable interpretation, is a further refinement of methods of organizing human activity because this step describes the partial ownership of the digital asset used in the intermediate steps of the underlying process.
In claims 15, the step “wherein the ledger connector service comprises a subservice of the token rights management service” under the broadest reasonable interpretation, is a further refinement of methods of organizing human activity because this step describes the ledger connector service used in the intermediate steps of the underlying process.
In all the dependent claims, the judicial exception is not integrated into a practical application because the limitations are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components. Also, the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; the claims do not affect a transformation or reduction of a particular article to a different state or thing; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment. In addition, the dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself. For these reasons, the dependent claims also are not patent eligible.
Response to Arguments
4. In response to Applicants arguments on pages 6-10 of the Applicant’s remarks that the claims are patent-eligible under 35 USC 101 when considered under MPEP 2106, the Examiner respectfully disagrees.
The fact that the claims are Patent-Ineligible when considered under the MPEP 2106 has already been addressed in the rejection and hence not all the details of the rejection are repeated here.
Response to Applicants’ arguments regarding Step 2A – Prong one:
The claims recite a method for managing a digital asset performed by a token rights management service including a transfer of ownership of the digital asset, which is considered a judicial exception because it falls under the category of “Certain Methods of organizing human activity” such as fundamental economic practice as well as commercial or legal interactions including agreements as discussed in the rejection. The additional elements in the claims are generic components, used as tools in their ordinary capacity, to apply the abstract idea. In arriving at this conclusion, the original guidelines and also the August 4, 2025, Memorandum on Subject Matter Eligibility issued by the Deputy Commissioner for Patents ("August 4th Subject Matter Eligibility Memorandum") were fully considered. Therefore, The Applicant’s arguments are not persuasive.
Response to Applicants’ arguments regarding Step 2A – Prong two:
According to MPEP 2106, limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e).
In the instant case, the judicial exception is not integrated into a practical application, because none of the above criteria is met. The claims only recite the additional elements of a marketplace service, a digital asset, at least one hash value, a system comprising a processor, a non-transitory computer-readable storage medium storing instructions, a ledger connector service, cryptographically signing, a private key and a trusted ledger to perform all the steps. A plain reading of Figures 1-22 and associated descriptions in the Specification reveals that the system comprising processor, (with a non-transitory computer-readable storage medium storing instructions) may be a system with a generic processor suitably programmed to perform the associated functions. The marketplace service is interpreted to include a generic marketplace service suitably programmed to perform the associated service. The digital asset, the at least one hash value, cryptographical signature, the private key. the ledger connector service, and the trusted ledger are all generic computer components suitably programmed to perform the corresponding functions. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements in all the steps are recited at a high-level of generality (i.e., as generic computer components performing generic computer functions) such that it amounts no more than mere instructions to apply the exception using generic computer components. Accordingly, these 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. Hence, the claims are directed to an abstract idea.
Also contrary to Applicant’s assertion that the Office action oversimplifies the subject matter claimed by describing the claims at a high level of abstraction and untethered from the language of the claims, the Examiner would like to point out that all limitations of all claims have been fully considered (in the rejections) in arriving at the conclusion that the claims are directed to an abstract idea. Abstract ideas can be characterized at different levels of abstraction. (See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (“An abstract idea can generally be described at different levels of abstraction.”)).
Regarding applicant's arguments alleging that the claims do not wholly preempt or monopolize the abstract idea, the Supreme Court in Alice Corp. cautioned that merely limiting the use of an abstract idea “to a particular technological environment” or implementing the abstract idea on a “wholly generic computer” is not sufficient as an additional feature to provide “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice Corp., 134 Supreme Court. at 2358 (citations omitted). Although the Supreme Court has described “the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption,” see Alice Corp.,134 S. Ct. at 2354, characterizing preemption as a driving concern for patent eligibility is not the same as characterizing pre-emption as the sole test for patent eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354). “[Preemption may signal patent ineligible subject matter, [but] the absence of complete preemption does not demonstrate patent eligibility.” Id. Also preemption is not a stand-alone test. Preemption concerns have been addressed by the examiner through the application of the 2019 PEG framework. Applicant’s attempt to show alternative uses of the abstract idea outside the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Similarly, Applicant’s attempt to show that the recited abstract idea is a very narrow and specific one is not persuasive. A specific abstract idea is still an abstract idea and is not eligible for patent protection without significantly elements more recited in the claim. In the present case, the claimed technology is nothing more than generic computer technology implementing an abstract idea. In Alice also the computer system was specifically programmed to execute the specifically claimed steps in Alice. It is noted that the issue is whether the claims preempt the abstract idea that is claimed. The abstract idea of the challenged claims is not only “a method for managing a digital asset performed by a token rights management service including a transfer of ownership of the digital asset” in general, but also the specific type of “methods for managing a digital asset performed by a token rights management service including a transfer of ownership of the digital asset”. And that the present claims do not preempt the field of a method for managing a digital asset performed by a token rights management service including a transfer of ownership of the digital asset do not make them any less abstract. (See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (collecting cases); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (generating tasks in an insurance organization). Also, Ultramercial decision makes it clear that Patent Owner's arguments regarding pre-emption "are not a substitute for the proper two-part test under Alice". Therefore, the Applicant’s arguments are not persuasive.
Response to Applicants’ arguments regarding Step 2B:
As discussed in the rejection, the claims 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, using the additional elements (identified in the rejection) to perform the claimed steps, amount to no more than mere instructions to apply the exception using a generic computer component. The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Hence, the claims are not patent eligible.
The Examiner does not see the parallel between the Applicant’s claims and that of Example 35 of the U.S. Patent and Trademark Office's Published Subject Matter Eligibility Examples. Therefore, the Applicant’s arguments are not persuasive.
Regarding applicant's arguments alleging the lack of prior art as evidence that the claims contain an improvement and therefore are significantly more, this argument-sounding in § 102 novelty-is beside the point for a §101 inquiry. See Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., No. 1: 10cv910 (LMB/TRJ), 2014 WL 5430956, at *11 (E.D. Va. Oct. 24, 2014) ("The concern of § 101 is not novelty, but preemption.").
In response to Applicant’s arguments based on the USPTO guidelines (also known as the Berkheimer Memo) based in MPEP 2106.04(d) that that an additional element (or combination of additional elements) is well-understood, routine, conventional activity, the Examiner would like to point out the MPEP 2106.04(d) states:
Appropriate forms of support that an additional element (or combination of additional elements) is well-understood, routine, conventional activity include one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
The additional elements in the claims are a marketplace service, a digital asset, at least one hash value, a system comprising a processor, a non-transitory computer-readable storage medium storing instructions, a ledger connector service, cryptographically signing, a private key and a trusted ledger to perform all the steps. A plain reading of Figures 1-22 and associated descriptions in the Specification reveals that the system comprising processor, (with a non-transitory computer-readable storage medium storing instructions) may be a system with a generic processor suitably programmed to perform the associated functions. The marketplace service is interpreted to include a generic marketplace service suitably programmed to perform the associated service. The digital asset, the at least one hash value, cryptographical signature, the private key. the ledger connector service, and the trusted ledger are all generic computer components suitably programmed to perform the corresponding functions. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The fact that a general purpose computing system, suitably programmed, may be used to perform the claimed method and the fact that the claims at issue do not require any nonconventional computer, network, or other components, or even a “non-conventional and non-generic arrangement of known, conventional pieces” but merely call for performance of the claimed functions “on a set of generic computer components, satisfies the Berkheimer memo requirement that the additional elements are conventional elements (as outlined in criterion 1 of the Berkheimer memo).Therefore, the Applicant’s arguments are not persuasive. In Summary, the computer system is merely a platform on which the abstract idea is implemented. Hence, the claims do not recite significantly more than an abstract idea.
For these reasons and those discussed in the rejection, the rejections under 35 USC § 101 are maintained.
Conclusion
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
(a) Tsung; Theodore et al. (US Pub. 2016/0125537 A1) discloses a method that includes calculating respective moving average values for client holdings at a financial account level, an individual client level, and a household level based on end-of-day holding prices therefor. The method further includes calculating a financial account level risk metric, an individual level risk metric, and a household level risk metric responsive to the respective moving average values. The method also includes outputting a respective alarm signal for at least one financial firm employee responsive to any of the financial account level risk metric, the individual level risk metric, and the household level risk metric respectively exceeding a target financial account level risk metric, a target individual level risk metric, and a target household level risk metric. The target risk metrics are determined from respective client specified risk acceptance values at the financial account level, the individual client level, and the household level.
6. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Narayanswamy Subramanian whose telephone number is (571) 272-6751. The examiner can normally be reached Monday-Friday from 9:00 AM to 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Abhishek Vyas can be reached at (571) 270-1836. The fax number for Formal or Official faxes and Draft to the Patent Office is (571) 273-8300.
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/Narayanswamy Subramanian/
Primary Examiner
Art Unit 3691
March 14, 2026