DETAILED ACTION
Acknowledgements
This Final Office Action is in reply to Applicant’s response filed April 2, 2026.
Claims 1-3 are currently amended.
Claims 1-3 are currently pending.
Claims 1-3 have been examined.
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 Amendment
In the April 2, 2026 Claim Amendments and with respect to claims 1-2, Applicant’s markup shows inaccurate amendments. Both claims show “creating [[the] a smart contract”, despite the fact that the original claim reads “creating a smart contract”. Contrary to the markup, this phrase has not been edited. In addition, there are numerous instances of “[[the]] the” which serve only to create confusion. 37 C.F.R. §1.121 as discussed in MPEP §714 II. C. sets forth the manner of making claim amendments.
The April 2, 2026 Claim Amendments are therefore Non-Compliant. See MPEP §714 II. F.
Because this application is not in condition for allowance, because the error noted above is considered an error that would not otherwise prevent the subsequent examination of this application, and to show a good faith effort by the Examiner to advance prosecution, the Claim Amendments are being examined.
However, Applicants are given actual notice that should any future amendment be non-compliant because the amendment does not (for any reason) comply with 37 C.F.R. §1.121 (as discussed in MPEP §714), the amendment will be considered a non-compliant amendment and the Examiner will issue a “Notice of Non-Compliant Amendment (37 CFR 1.121)” See USPTO Form PTOL-324.
Notwithstanding the issues above, the Claim Amendments are being examined and an office action on the merits is set forth below.
Specification
The disclosure is objected to because Figure 8 shows element 830 as creating “a smart contract for chat data associated with a relationship between the specific chat and the specific entity” while specification paragraph [0125] refers to element 830 as creating “a smart contract for chat data associated with a relationship between a specific chat in a chat history database”. Element 830 is therefore referred to inconsistently. It appears Figure 8 is correct and the specification contains the error, because paragraph [0125] uses the word “between” but then only refers to a single thing.
Drawings
The original drawings submitted on May 20, 2024 and the replacement drawings submitted on October 11, 2024, which replaced figures 2-5 and 7, and the replacement drawings submitted on April 2, 2026, which replaced figures 1, 7-8, have been received.
The drawings are objected to because:
Figure 7 contains a typo (element 720 “COMLETES”)
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-3 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 1-3
Claim 1 recites, in relevant part:
creating an entity private key/wallet address pair associated with a specific chat service provider to interact with the smart contract and store at least a portion of the chat data associated with the specific chat on the blockchain;
creating a smart contract for chat data associated with a relationship between the specific entity in a chat history database;
generating a new NFT in a series on the specific blockchain according to the chat data using the smart contract and authorized by the entity private key/wallet address pair of the specific chat service provider; and
The claim refers to “the smart contract” before later introducing “a smart contract”. There is no antecedent basis for the first mention of “the smart contract” and it is unclear if it refers to the same smart contract as “a smart contract” introduced in the next limitation.
Additionally, there is no antecedent basis for “the chat data” or “the specific chat”. It is unclear if these are referring to “chat data” introduced later in the claim.
It is suggested that the claims should be amended such that the first instance of “smart contract” should refer to it as “a smart contract” and that subsequent references should refer to it as “the smart contract” or “said smart contract”. See MPEP 2173.05(e) Lack of Antecedent Basis. “Chat data” and “specific chat” should be addressed similarly.
Additionally, the “relationship” referred to in the claim is unclear. The claim says it is “between the specific entity in a chat history database”. However, this appears to be an improper use of the word “between” because there is only a single item listed after it. It is not clear what two things the relationship is “between”.
Claims 2-3 recite similar language and are indefinite for the same reasons as claim 1.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Carter (US 20220270421 A1) in view of Robell et al. (US 20230281604 A1).
Regarding claims 1-3
Carter teaches:
A computer-implemented method in a system, on a data communication network, for providing immutable chat session history transactions within a non-fungible cryptographic token (NFT) based chat session certificate, the method comprising:
creating a user private key/wallet address pair associated with a specific user to interact with the system, wherein the user private key/wallet address pair is associated with a specific blockchain; {[0141] “a user account is connected to a digital wallet… the digital wallet [user private key/wallet address pair] is created and hosted by the software platform of the present invention… the platform is operable to support all ETHEREUM Request for Comment (ERC) standards as described by the ETHEREUM Improvement Proposals (EIP). For example, the platform is operable to support EIP-721: ERC-721 Non-Fungible Token Standard”}
creating a smart contract for chat data associated with a relationship between the specific entity in a chat history database; {[0141] “the platform of the present invention deploys at least one smart contract to handle minting of the NFT”}
“For chat data associated with a relationship between a specific entity in a chat history database” is interpreted as an intended use of the smart contract. It is interpreted as merely referring to the data which is intended to be contained in generated NFTs.
generating a new NFT in a series on the specific blockchain according to the chat data using the smart contract […]; {[0141] “the platform provides for creating an NFT from an image [data] in a minting process.”; [0141] “the platform of the present invention deploys at least one smart contract to handle minting of the NFT”}
The claim’s description of the data as “chat” data is considered non-functional descriptive material. The type of data has no effect on any step of the claim.
Carter does not teach, however Robell teaches:
creating an entity private key/wallet address pair associated with a specific chat service provider to interact with the smart contract and store at least a portion of the chat data associated with the specific chat on the blockchain; {[0039] “Additionally, an administrator (admin) that operates the admin wallet [entity private key/wallet address pair]… is involved in the creation of the NFT IDs by coding, compiling, deploying, and running a smart contract”}
Robell does not explicitly teach creating an admin wallet. However, creating an admin wallet is implied because Robell teaches using it.
generating a new NFT in a series on the specific blockchain according to new chat data using the smart contract and authorized by the entity private key/wallet address pair of the specific chat service provider; {[0039] “Additionally, an administrator (admin) that operates the admin wallet… is involved in the creation of the NFT IDs by coding, compiling, deploying, and running a smart contract”}
sending the new NFT to the user private key/wallet address pair associated with the specific user. {[0086] “At step 5.5, the minted NFT ID 402 is added to the admin wallet [entity private key/wallet address pair] 360. The newly minted NFT ID 402 initially belongs to whoever did (or requested) the actual minting, which in this example is the admin… The NFT ID 402 is then transferred [sending] to the individual's wallet [user private key/wallet address pair]… The transfer of the minted NFT ID 402 from the admin wallet 360 to the wallet 310 of the new ID holder 501 may be recorded as a transaction 417 and/or is added as a block to the relevant blockchain(s) 415.”}
In addition, it would have been obvious to one of ordinary skill in the art, at the time of filing, to modify Carter to include the admin wallet of Robell. One would have been motivated to do so, in order to allow the platform to exercise administrative control over creation of NFTs and define the functions of each NFT (Robell [0039] “Additionally, an administrator (admin) that operates the admin wallet… associated with an org/entity defines the requirements and functions of each NFT ID type. The admin 360 may be the same or similar as the client 310, but is operated by a user having administrator privileges.”). Furthermore, the Supreme Court has supported that combining well known prior art elements, in a well-known manner, to obtain predictable results is sufficient to determine an invention obvious over such combination (see KSR International Co. v. Teleflex Inc. (KSR), 550 U.S.,82 USPQ2d 1385 (2007) & MPEP 2143). In the instant case, Carter evidently discloses a system which creates a user wallet, creates a smart contract, and mints NFTs for users using the smart contract. Robell is merely relied upon to illustrate the functionality of an admin wallet for controlling the smart contract to mint the NFT, receive the NFT, and transfer to the user wallet, in the same or similar context. As best understood by Examiner, since both Carter, as well as Robell are implemented through well-known blockchain technologies in the same or similar context, combining their features as outlined above using such well-known blockchain technologies (i.e., smart contracts, wallets, NFTs), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by Carter, as well as Robell would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Carter/Robell.
Claims 2 and 3 are similar in scope to claim 1 and are treated the same with respect to prior art rejections.
Response to Arguments
Claim Interpretation
Amended claim 3 no longer invokes 112(f). The associated 112(a) and 112(b) rejections have been withdrawn.
35 USC § 112(b)
Claims 1-3 were rejected as indefinite. Applicant asserts the claim amendments cure the indefiniteness. However, many antecedent basis and indefiniteness issues have not been corrected. Applicant is advised to review 2173.05(e) Lack of Antecedent Basis. Suggestions for addressing the issues have been provided in the rejection.
35 USC § 103
Applicant argues neither Carter nor Robell teaches the claimed architecture where the chat service provider itself maintains an entity private key that is actively used to cryptographically authorize the generation of the specific chat session NFT. Applicant states the cited combination merely teaches a generic platform administrator wallet and fails to teach or suggest a private key/wallet address pair belonging specifically to the chat service provider that authorizes the NFT generation.
However, this argument is not convincing because it relies on the label “chat service provider” to distinguish the claimed invention from the prior art. The words “chat service provider” in the claim are interpreted as a mere label for an entity in the claim, and do not impose any limitation. Whether or not the “chat service provider” is providing a chat service is outside the scope of the claim because it has no effect on any of the steps which are part of the method (claim 1) or the functions being performed by the system (claim 3). The claim is directed towards a method/system/medium related to storing data on a blockchain. The type of data being stored or the type of entity using the invention is merely an intended use and is not given patentable weight.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/S.M.D./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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