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/Amendments
Regarding rejection of the claims under 35 USC 101, Applicant’s arguments are found persuasive (see pgs. 6-12 of the Remarks filed 02/13/2026) and the rejection is hereby withdrawn.
Regarding rejection of the claims under 35 USC 112(a), Applicant submits that the amendments overcome the prior rejection and that a person of ordinary skill in the art would recognize Applicant’s possession based on ERC-6551 being publicized before the effective filing date (originally published 02/23/2023). The Examiner respectfully disagrees. Applicant’s reliance on reference materials outside the specification is insufficient to prove possession at the time of filing. Furthermore, the specification makes no mention of token standard ERC-6551 nor does it disclose that the claimed blockchain is an Ethereum blockchain, for which the standard is applicable. Therefore, the rejection is maintained.
Regarding rejection of the claims under 35 USC 112(b), Applicant submits the amendments overcome the prior rejection. The Examiner respectfully disagrees. It remains unclear whether the NFT of the character comprises an electronic wallet, the NFT itself is an electronic wallet, or whether the NFT is merely stored in an electronic wallet. Therefore, the rejection is maintained.
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 1-4, 6-9, 11, and 13-15 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 1, 6, and 11 recite, “creating an NFT of the character in a form of an electronic wallet based on a blockchain...” Paragraph 0038 of the published specification discloses, “Meanwhile, configuring a character in the form of an electronic wallet based on a blockchain may mean creating a contract account (CA) managed by a smart contract. In this case, when a character is acquired, the character itself is configured in the form of an electronic wallet, making it possible to deposit and withdraw an item, held by the character, as an asset... A CA may function like a wallet on a blockchain, accordingly allowing the assets to be deposit and withdrawn, that is, the character may be the owner of the assets.” However, the specification does not sufficiently disclose how the character nor NFT is created “in a form of” an electronic wallet through creation of a CA managed by a smart contract nor how the CA managed by a smart contract performs the functions of an electronic wallet such as deposit/withdrawal. Furthermore, the specification appears to disclose contradictory explanations regarding both the character and the CA “function[ing] like a wallet.” Therefore, the specification lacks sufficient disclosure so as to describe how the claimed functions are performed.
Claims 2-4, 7-9, and 13-15 are also rejected due to their dependence on at least claims 1, 6, and 11.
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 1-4, 6-9, 11, and 13-15 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 1, 6, and 11 recite, “creating an NFT of the character in a form of an electronic wallet based on a blockchain...” It is unclear whether the NFT of the character comprises an electronic wallet, the NFT itself is an electronic wallet, or whether the NFT is merely stored in an electronic wallet. Therefore, the scope of claims 1, 6, and 11 is unclear.
Claims 2-4, 7-9, and 13-15 are also rejected due to their dependence on at least claims 1, 6, or 11.
Claims 2 and 7 recite, “wherein the NFT of the character is created when the CA of the first user is linked to the NFT of the character.” However, it is unclear when the creation of the NFT of the character occurs when the CA cannot be linked until the NFT of the character is created. Furthermore, it is unclear whether “the CA of the first user” refers to the CA managed by a smart contract created in claims 1 and 6 or a different CA managed by the first user. Therefore, the scope of the claims is unclear.
Claims 3-4 and 8-9 are also rejected due to their dependence on at least claim 2 or 7.
Similarly, claims 3 and 8 recite, “[generate a character in a computer game in response to a game activity] wherein the game activity comprises the creating the CA of the first user for the computer game, a success of a quest in the computer game or a purchase of the at least one game item.” However, it is unclear when creation of the CA of the first user occurs as claims 1 and 6, from which the claims depend, recite creating a CA managed by the smart contract after generating a character. Furthermore, it is unclear whether “the CA of the first user” refers to the CA managed by a smart contract created and recited in claims 1 and 6 or a different CA managed by the first user. Therefore, the scope of the claims is unclear.
Claim Interpretation
In view of the rejections under 112(a) and 112(b) noted above, a proper determination of the claims’ allowability over the prior art cannot be determined. The scope of the claims and the functionality of the claimed structures (e.g. NFT and electronic wallet) are so unclear as to be impossible to accurately interpret the claims and properly apply prior art until such issues have been remedied.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Meyers et al. (US 20230125021) generally discloses a game system and methods for generating player token NFTs comprising game-collected NFTs (e.g. in-game items) and updating player token NFTs with game data in response to a user’s gameplay with said player token.
Windle et al. ("ERC-6551: Non-fungible Token Bound Accounts”) generally discloses an Ethereum standard defining a system which assigns Ethereum accounts to all NFTs, allowing NFTs to own assets (e.g. “A character in a role-playing game that accumulates assets and abilities over time based on actions they have taken,” Pg. 2).
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/T.R./Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
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