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 .
This Office Action is in response to the Application filed May 3, 2024. Claims 1-20 are pending and under examination.
Priority
The present application claims priority of U.S. Provisional Patent Application No. 63463612, filed on 03 May 2023 entitled “System and Method for Creating and Managing Non-Fungible Tokens”.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 11-20 are directed to a method, and claims 1-10 are directed to a system or apparatus. Therefore, these claims fall within the four statutory categories of invention.
The claims recite trading assets, or not, depending on location. Specifically, the claims recite receiving and storing information related to an asset, associating the asset with a geographic area chosen by a user, creating a token comprising the asset, searching an identifying an asset for a second user (buyer), determining location of buyer, enabling trade of the asset if buyer’s location is proper, which is a mental process capable of being performed with pen and paper in prong one of step 2A of the Alice/Mayo test (See MPEP 2106) because it describes a process capable of being performed with pen and paper. The claims are further grouped within certain methods of organizing human activity because the steps recited describe the fundamental economic practice of selling items only to buyers in appropriate locations. 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 the computing devices, and database, merely use a computer as a tool to perform an abstract idea. Specifically, computing devices, and database perform the steps or functions of trading assets, or not, depending on location. 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 element(s) of using one or more computing devices and database, to perform the steps amounts to no more than using a computer to automate and/or implement the abstract idea of trading an asset or not, depending on location the buyer. As discussed above, taking the claim elements separately, one or more computing devices and database perform the steps or functions of receiving and storing information related to an asset, associating the asset with a geographic area chosen by a user, creating a token comprising the asset, searching an identifying an asset for a second user (buyer), determining location of buyer, enabling trade of the asset if buyer’s location is proper. These functions correspond to the actions required to perform the abstract idea. 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 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2-10 and 12-20 further describe the abstract idea of trading an asset, or not, depending on location or the buyer. 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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” (module) that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
an input module configured to receive information in claim 1
a location module configured to receive a geographic information in claim 1
a tokenization module configured to create a non-fungible token (NFT) in claim 1
a search module configured to search one or more non-fungible tokens in claim 1
location module configured to determine a geographic information of the second user in claim 1
a trade module enables to trade at least one non-fungible token in claim 1
Regarding claims 1-10, the term “module” acts as a generic placeholders for the term “means”. Also, the generic placeholders are modified by functional language “receive”, “create”, “search”, “determine”, and “trade”. Further, the generic placeholders are not modified by sufficient structure, material, or acts for performing the claimed function.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-10 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.
Regarding claim 1 -
Claim 1 invokes 35 U.S.C. 112(f) interpretation (see Claim Interpretation section). A means- (or step-) plus-function limitation that is found to be indefinite under 35 U.S.C. 112(b) based on failure of the specification to disclose corresponding structure, material or acts that perform the entire claimed function also lacks adequate written description (see MPEP 2181(IV)). Claim 1 is found to be indefinite under 35 U.S.C. 112(b), therefore the claims are also rejected under 35 U.S.C. 112(a) for lacking adequate written description.
Claims 2-10 are also rejected as each depends from claim 1.
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 1-10 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.
Regarding claim 1 –
Claim limitations “an input module configured to receive information . . .location module configured to receive a geographic information . . . a tokenization module configured to create a non-fungible token (NFT) . . a search module configured to search one or more non-fungible tokens . . . location module configured to determine a geographic information of the second user . . . a trade module enabled to trade at least one non-fungible token “, invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
To satisfy the definiteness requirement under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, the written description must clearly disclose the corresponding structure, material or acts that perform the claimed function (See MPEP 2181(III)). For computer-implemented means-plus-function limitations, the corresponding structure includes both the computer and the algorithm that performs the recited functions. (See MPEP 2161). A review of the specification shows that the specification fails to clearly describe the corresponding structure, material or acts that perform the claimed function. See, e.g., par 74 of the PgPub, where the “processor 202 is configured to execute one or more program modules”. The actual corresponding structure therefore, is not clearly described.
Therefore, claim 1 is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Dependent claims 2-10 depend upon claim 1 and are rejected for the same reasons.
Therefore, claim 1 is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Dependent claims 2-10 depend upon claim 1 and are rejected for the same reasons.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claims 1, 5-8, 10-11, 15-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Poole et al (US 2015/0302393) in view of Turner (US 2022/0271915).
Regarding claims 1 and 11-
Poole discloses a system for creating and managing non-fungible tokens, (par 64) comprising:
a first user device associated with a first user; (par 61 “merchant system)
a second user device associated with a second user; (par 61 “mobile device”)
at least one database storing information related to the first user, information related to the second user and information related to the non-fungible tokens, (par 64)and
at least one computing device in communication with the first user device, the second user device and the database via a network, wherein the computing device comprises a set of program modules and at least one processor configured to execute one or more modules stored in a memory,(par 64) wherein the set of modules comprises:
an input module configured to receive information related to at least one digital asset from the first user, and receive the digital asset from the first user, (par 72)
a location module configured to receive a geographic information determined by the first user to trade the digital asset and associate the digital asset to the geographic information, wherein the geographic information includes a geographic boundary, (par 78)
the location module configured to determine a geographic information of the second user, (par 78, 85-86) and
a trade module enables to trade at least one non-fungible token when the geographic information of the second user corresponds to the geographic information of the digital asset. (par 78, 85-86)
Turner discloses, as Poole does not specifically disclose,
a tokenization module configured to create a non-fungible token (NFT) comprising the digital asset, (par 20)
a search module configured to search one or more non-fungible tokens using one or more criteria received from the second user and display one or more non-fungible tokens relevant to the criteria. (par 46, 63)
It would be obvious to one of ordinary skill in the art to combine Poole with the NFT’s of Turner for greater transaction security.
Regarding claims 5 and 15 -
Poole discloses wherein the modules further comprise a payment module configured to enable the second user to make payment to collect the desired non-fungible token. (par 56, 60-61)
Regarding claims 6 and 16 -
Turner discloses wherein the payment module is configured to share a revenue received from trading the non-fungible token to the first user. (par 119-120)
It would be obvious to one of ordinary skill in the art to combine Poole with the NFT’s of Turner for greater transaction security.
Regarding claims 7 and 17 -
Turner discloses wherein the payment module is configured to share a predefined percentage of revenue to the first user, and share a predefined percentage of revenue to the first user on subsequent sale of the transferred non-fungible token. (par 119-120)
It would be obvious to one of ordinary skill in the art to combine Poole with the NFT’s of Turner for greater transaction security.
Regarding claims 8 and 18 –
Poole discloses wherein the information related to non-fungible token comprising digital assets and information related to digital assets, and wherein the information related to the digital asset includes token name, collection name, series name, price, number of digital assets to retain, tags and text to be added to the tags. (par 61)
Regarding claims 10 and 20 -
Poole discloses wherein the criteria include token name, places, popular tokens, tags and location proximal to the second user to collect tokens. (par 78, 85-86)
Claims 2-4, 9, 12-14, and 19 are rejected under Poole et al (US 2015/0302393) in view of Turner (US 2022/0271915) and further in view of Jensen et al (US 2022/0150196).
Poole in view of Turner discloses as discussed above.
Claims 2 and 12 –
Jensen discloses wherein the location module enables the first user to mark the geographic boundary on a geographic map and links the digital asset to the geographic boundary. (par 37)
It would be obvious to combine Poole and Turner with Jensen for greater transaction control and security.
Claims 3 and 13 –
Jensen discloses , wherein the location module is configured to determine the geographic information of the second user using at least one of GPS, GNSS, Bluetooth, Wi-Fi, hotspot, and mobile network of the second user device. (par 56, 128)
It would be obvious to combine Poole and Turner with Jensen for greater transaction control and security.
Regarding claims 4 and 14 –
Jensen discloses wherein the location module is configured to determine the geographic information of the first user using at least one of GPS, GNSS, Bluetooth, Wi-Fi, hotspot, and mobile network of the first user device. (par 56, 128)
It would be obvious to combine Poole and Turner with Jensen for greater transaction control and security.
Regarding claims 9 and 19 –
Jensen discloses wherein the digital asset includes audio file video file, digital media file, and picture. (par 19, 34, 36)
It would be obvious to combine Poole and Turner with Jensen for greater transaction control and security.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Schwartz (US 2024/0037615) discloses NON-FUNGIBLE TOKEN MANAGEMENT SYSTEMS AND METHODS FOR AN ENTERTAINMENT VENUE.
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/Cristina Owen Sherr/Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697