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 .
Examiner Comments
Claims 1-21 presented for examination. Applicant filed a response on May 5, 22026 amending the claims 1, 6, 7, 9, 10, 13, 14, 17, 18, 20 and 21. Applicant stated that “Because Applicant did not publicly use, sell, or offer for sale a product including the features recited in the present claims more than one year prior to the date of filing of the present application, Applicant cannot readily obtain an item of required information. Applicant respectfully submits that no item of information exists or is known to the Applicant that can be provided in response to the requirement for information under 35 CFR 1.105. As such, Applicant believes that the above constitutes a complete response to the requirement for information under 37 CFR 1.105.”
After careful consideration of applicant’s amendments and arguments, new ground of rejections of claims necessitated by applicant amendment has been established in the instant application as set forth in detail below. Applicant's arguments with respect to claims have been considered but are moot in view of the new ground(s) of rejection.
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 1-19 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per amended claims 7, 10 and 15, these claims 7 and 15 respectively recites "storing the information associated with the SGU token and by storing the information associated with the unique and linked PWL token across a plurality of memory devices that are physically separated from one another”, and " storing the SGU token and the unique and linked PWL token across multiple memory devices that are physically separated from one another”; and claim 10 recites “SGU token and the unique and linked PWL token on at least one of a blockchain and a distributed ledger that provides a consensus of replicated, shared, and synchronized digital data geographically spread across multiple spatial locations” which are not supported by the disclosures as submitted including the written description.
Applicant has not pointed out where the amended claim is supported, nor does there appear to be a written description of the amended claim limitations as described in the application as filed. Applicant must specifically point out the support for any amendments made to the claims in the response file.
Applicant requested to cite a portion of submitted written description/disclosure where support for above limitation is disclosed, otherwise the limitation would constitute a new matter.
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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ____ (2014).
In the instant case, Claims 1-21 are directed to system and method for identifying a physical asset, generating the SGU token and linked PWL token and storing the SHU token and the PWL token immutably. The claims 1-21 are analyzed to see if claims are statutory category of invention, recites judicial exception and the claims are further analyzed to see if the claims are integrated into practical application if the judicial exception is recited and the claims provides an inventive as per 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) and October 2019 Update: Subject Matter Eligibility as set forth below:
Analysis:
Step 1: Statutory Category? This part of the eligibility analysis evaluates whether the claim falls within any statutory category. MPEP 106.03.
Claim 1 and 21 are directed to system comprising a server with memory and database for immutably storing tokens. The claimed system is therefore directed to a statutory category, i.e., a machine (a combination of device) (Step 1: YES).
Claim 10 is directed to a process i.e., a series of method steps or acts, of immutably storing tokens which is a non-statutory categories of invention as it failed to positively recite the particular machine/processor to which it is tied, for example, by identifying the apparatus that accomplishes the method steps (Step 1: NO)
Claim 20 is directed to a non-transitory computer-readable storage media, which is a manufacture. The claim, thus a statutory category of invention (Step 1: YES).
Step 2A - Prong 1: Judicial Exception Recited? This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04(II) and the October 2019 Update, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim. There are no nature- based product limitations in this claim, and thus the markedly different characteristics analysis is not performed. However, the claim still must be reviewed to determine if it recites any other type of judicial exception.
Claims 1, 10, 20 and 21 are similar and they are then analyzed to determine whether it is directed to a judicial exception.. The claim recite plurality of steps of “storing information associated with a unique and linked standardized gold unit (SGU) token and a unique and linked Purity, Weight & Location (PWL) token and retaining a unique number for each stored changeable PWL token.”
The limitations of storing information associated gold unit (SGU) token and a unique and linked Purity, Weight & Location (PWL) token and retaining a unique number for each stored changeable PWL token., as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “server/processor,” nothing in the claim element precludes the step from practically being performed in the mind and thus fall within the “mental processes” grouping of abstract idea set forth in the 2019 PEG. 2019 PEG Section I, 84 Fed. Reg. at 52. For example, but for the “executed by processor” language, “storing and retaining information in the context of this claim encompasses the user manually storing and retaining information” The recitation of a processor in this claim does not negate the mental nature of these limitations because the claim here merely uses the processor as a tool to perform the otherwise mental processes. See October Update at Section I(C)(ii). Thus, the above limitations of recite concepts that fall into the “mental process” grouping of abstract ideas. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas (YES).
Step 2A - Prong 2: Integrated into a Practical Application? This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. 2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55.
Besides the abstract idea as described in Prong 1, the claim recites the additional elements of the computing device performing “storing information associated with the SGU token as well as the information associated with the unique and linked PWL token is immutably stored in a blockchain and a distributed ledger.”
An evaluation of whether limitations are insignificant extra-solution activity is then performed. Note that because the Step 2A Prong 2 analysis excludes consideration of whether a limitation is well-understood, routine, conventional activity (2019 PEG Section III(A)(2), 84 Fed. Reg. at 55), this evaluation does not take into account whether or not limitation (a) is well-known. See October 2019 Update at Section III.D. When so evaluated, this additional element represents mere storing generated in a blockchain which is immutable that is necessary for use of the recited judicial exception. The server/processor is also an additional element which is configured to carry out limitations for that is used in steps described in Prong 1. But the server/processor is recited so generically without any details that it represents no more than mere instructions to apply the judicial exceptions on a computer. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a controller. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the computer does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014). Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception (Step 2A: NO).
Step 2B: Claim provides an Inventive concept? This part of the eligibility analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. MPEP 2106.05.
As explained with respect to Step 2A Prong 2, there are two additional elements.
The first is the computing device/server/processor, which is configured to perform all the limitations recited. As explained previously, the computing device is at best the equivalent of merely adding the words “apply it” to the judicial exception. Mere instructions to apply an exception cannot provide an inventive concept. The second additional element is limitation of “storing information associated with the SGU token as well as the information associated with the unique and linked PWL token is immutably stored in a blockchain and a distributed ledger”, which as explained previously is extra-solution activity, which for purposes of Step 2A Prong Two was considered insignificant. Under the 2019 PEG, however, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. 2019 PEG Section III(B), 84 Fed. Reg. at 56. At Step 2B, the evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well-known. See MPEP 2106.05(g). Here, the recitation of a computing device for storing generated data is distributed ledger/blockchain which is not invented by the applicant, recited at a high level of generality, and, as disclosed in the specification, is also well-known. This limitation therefore remains insignificant extra-solution activity even upon reconsideration. Thus, limitation (a) does not amount to significantly more. Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which do not provide an inventive concept (Step 2B: NO). The claim is not eligible.
The claimed additional elements of storing and retaining, immutably storing is implemented using examples of existing computer networking equipment, hardware, and software that are used to construct the claimed invention without apparent modification (see Fig. 3; Specification: paragraph [0057-0063]]). Further, any data stored in blockchain is immutable” which is known and is not novel feature. Therefore, the additional element only recite generic components and steps are well-understood routine and conventional. The claims as recited is simply a process in which computer are invoked merely as a tool for implementing abstract ideas rather than specific asserted improvement in computer capabilities such as the self-reliant table for computer database in the Enfish or remote filtering tool at a specific location customizable filtering features specific to each end user" in BASCOM or "effect an improvement in technology or technical field" in McRO. The automating conventional activities using generic technology does not amount to an inventive concept (See Alice, 134 S. Ct. at 2358) as these simply describes "automation of a mathematical formula/relationship through use of generic-computer computer function (see OIP Technologies, Inc. v. Amazon.com, 788, F.3d at 1363). Claims as recited do not provide any particular asserted inventive technology for performing those functions and therefore the claims are held patent ineligible (see Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
The claims are not patent eligible. (NO).
Dependent Claims:
Examiner further reviewed the dependent claims 2-9 and 11-19 that could be added to the independent claims to make patent eligible. The dependent claims as recited pertains to additional steps which further describes physical asset, authorization based on validation, secure repository, redeem/exchange/buy/sell of token, storing token in distributed ledger, ownership transfer of token which appear to be a mental process using a generic computer component that been found to be an abstract idea as described above. These dependent claims do not provide additional elements significantly more than the purported abstract idea that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The dependent claims as recited would not make the independent claim significantly more by incorporating them into the independent claims. Therefore, claims 1-21 are not patent eligible (NO).
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.
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 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over Pierce et al. European Patent Application No. EP 3432240 A1 (reference 85 of IDS dated 08/27/2024 submitted by the applicant) in view of Kennedy, March 2022).
As per claim 1, Pierce et al. teach a system comprising:
at least one server having memory; a database stored in memory (see Fig. 2, Server (200): Memory (204): Instructions (212); Drive Unit (306): Computer Readable Medium (210)/Instructions (212); paragraph [0063-0068]; where instructions or data or database is stored in memory/computer readable medium),
wherein the database stores information associated with of a unique and linked standardized gold unit (SGU) token and a unique and linked Purity, Weight & Location (PWL) token (see Fig. 7: Digital Tradable Token, DTT (702); Inventory Token, IT (706): paragraph [0038, 0044-0046 and 0139]; where DTT is share of ownership denominated by weight of entirety of gold linked to inventory token specifying refiner, the year of manufacture, a serial number and assayed fineness of the gold),
wherein the database retains a unique number for each stored PWL token; wherein an account number of a PWL token is changeable (see Fig. 9B: paragraph [0047, 0147, 0152-0153]); and
wherein information associated with the unique and linked SGU token and the PWL token cannot be changed in the database (see paragraph [0047-0048, 0050]; where Digital Token and Inventory Token are added blockchain which is immutable/unchangeable).
Pierce et al. do not teach the database stores information associated with gold unit (SGU) token as well as information associated with a unique and linked Purity, Weight & Location (PWL) token; and wherein the information associated with the SGU token as well as the information associated with the unique and linked PWL token is immutably stored on at least one of a blockchain and a distributed ledger.
Kennedy teaches teach the database stores information associated with gold unit (SGU) token as well as information associated with a unique and linked Purity, Weight & Location (PWL) token; and wherein the information associated with the SGU token as well as the information associated with the unique and linked PWL token is immutably stored on at least one of a blockchain and a distributed ledger (see page 2, specifically last paragraph stating “This initial phase will see two distributed ledger companies — aXedras and Peer Ledger (see reference V and W) >— demonstrate how blockchain can best deliver a global ecosystem that will create an immutable record of a gold bar’s place of origin and chain of custody. This blockchain-backed ledger will register and track bars, capturing the provenance and
full transaction history”).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention add the database stores information associated with gold unit (SGU) token as well as information associated with a unique and linked Purity, Weight & Location (PWL) token; and wherein the information associated with the SGU token as well as the information associated with the unique and linked PWL token is immutably stored on at least one of a blockchain and a distributed ledger to Pierce et al. because Kennedy teaches including above features would enable blockchain deliver global ecosystem creating immutable record of gold bar’s place of origin and chain of custody wherein blockchain system of distributed ledger companies aXedras and Peer Ledger provide two token associating gold unit token and Purity, Weight & Location (see page 2).
As per claims 2-3, Pierce et al. teach claim 1 as described above. Pierce et al. further teach the system, wherein
the SGU token and the PWL token are associated with a physical asset, and the physical asset is gold (see abstract, paragraph [0048]; where the token is associated with a physical asset, e.g., Gold).
As per claim 4, Pierce et al. teach claim 2 as described above. Pierce et al. further teach the system, wherein
authorization from an authorized SGU creator provides validation that the physical asset exists and conforms with integrity standards (see Fig. 8, Step 806: paragraph [0165-0168, 0171]; where quantity and fineness of gold associated with digital token and inventory token validated to meet predetermined relationship).
As per claim 5, Pierce et al. teach claim 2 as described above. Pierce et al. further teach the system, wherein
the physical asset is stored in a secure repository (see paragraph [0033]; where gold is stored in secured vault and audited regularly).
As per claim 6, Pierce et al. teach claim 2 as described above. Pierce et al. further teach the system, wherein
the physical asset is stored in a secure repository and redeemable or exchangeable upon presentation of the SGU token (see paragraph [0032, 0041, 0043, 0052, 0153]).
As per claim 7, Pierce et al. teach claim 1 as described above. Pierce et al. further teach the system, wherein
the SGU token and the PWL token are stored on a distributed ledger (see paragraph [0043, 0047 and 0050]).
Pierce et al. do not teach the unique and linked PWL token are stored on the at least one of the blockchain and the distributed ledger by storing the information associated with the SGU token and by storing the information associated with the unique and linked PWL token across a plurality of memory devices that are physically separated from one another.
Kennedy teaches the unique and linked PWL token are stored on the at least one of the blockchain and the distributed ledger by storing the information associated with the SGU token and by storing the information associated with the unique and linked PWL token across a plurality of memory devices that are physically separated from one another (see page 2; where Peer Ledger, a distributed company provides plurality of tokens as required and other Swiss distributed ledger company linked gold units token with Purity, Weight & Location (PWL) token (see reference V and W).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the unique and linked PWL token are stored on the at least one of the blockchain and the distributed ledger by storing the information associated with the SGU token and by storing the information associated with the unique and linked PWL token across a plurality of memory devices that are physically separated from one another to Pierce et al. because Kennedy teaches including above features would enable blockchain deliver global ecosystem creating immutable record of gold bar’s place of origin and chain of custody wherein blockchain system of distributed ledger companies aXedras and Peer Ledger provide two token associating gold unit token and Purity, Weight & Location (see page 2)).
As per claim 8, Pierce et al. teach claim 1 as described above. Pierce et al. further teach the system, wherein
the SGU token is able to be bought, sold, exchanged, traded, auctioned, and/or bartered (see Fig. 9A, 9B and 9C, paragraph [0020, 0154, 0179]).
As per claim 9, Pierce et al. teach claim 1 as described above. Pierce et al. further teach the system, wherein
the SGU token and the uniquely and linked PWL token provide a useful, concrete and tangible product that does not require physically relocating an underlying physical asset to effect an ownership transfer of the physical asset (see paragraph [0039, 0149, 0152]; where token price transfer ownership of gold without moving or relocating the gold as a physical asset).
As per claim 10, Pierce et al. teach a method comprising:
identifying a physical asset to be represented by a standardized gold unit (SGU) token and a unique and linked Purity, Weight & Location (PWL) token (see paragraph [0190]; where physical metal asset is identified based on metal refiner, year of manufacture, a serial number, an assayed fineness and weight);
generating the SGU token; generating the linked PWL token and immutably storing the SHU token and the PWL token (see paragraph [0048]; where Digital Tradable Token and Inventory Token is generated and added to block chain serving as an immutable record).
Pierce et. al. do not teach SGU token and the unique and linked PWL token on at least one of a blockchain and a distributed ledger that provides a consensus of replicated, shared, and synchronized digital data geographically spread across multiple spatial locations.
Kennedy teaches SGU token and the unique and linked PWL token on at least one of a blockchain and a distributed ledger that provides a consensus of replicated, shared, and synchronized digital data geographically spread across multiple spatial locations (see page 2; where Peer Ledger, a distributed company provides plurality of tokens as required and other Swiss distributed ledger company linked gold units token with Purity, Weight & Location (PWL) token based on consensus among miners in the blockchain (see reference V and W)).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the unique and linked PWL token are stored on the at least one of the blockchain and the distributed ledger by storing the information associated with the SGU token and by storing the information associated with the unique and linked PWL token across a plurality of memory devices that are physically separated from one another to Pierce et al. because Kennedy teaches including above features would enable blockchain deliver global ecosystem creating immutable record of gold bar’s place of origin and chain of custody wherein blockchain system of distributed ledger companies aXedras and Peer Ledger provide two token associating gold unit token and Purity, Weight & Location (see page 2)).
As per claim 11, Pierce et al. teach claim 10 as described above. Pierce et al. further teach the system comprising
validating existence, quality and integrity of the physical asset (see Fig. 8, Step 806: paragraph [0165-0168, 0171]; where quantity and fineness of gold associated with digital token and inventory token validated to meet predetermined relationship).
As per claim 12, Pierce et al. teach claim 10 as described above. Pierce et al. further teach the system comprising
exchanging the SGU token for the physical asset (see paragraph [0040-0041]; Digital token exchanged for physical asset Gold).
As per claim 13, Pierce et al. teach claim 10 as described above. Pierce et al. further teach the system, wherein
the generating and immutably storing steps are a digitization of the physical asset (abstract, paragraph [0039-0041, 0047-0048, 0050 ]; where issuer generate digital token for gold and immutably stored on blockchain and exchange with fiat currency).
As per claim 14, Pierce et al. teach claim 10 as described above. Pierce et al. further teach the system comprising
a SGU token holder buying, selling, exchanging, trading, auctioning, and/or bartering the SGU token (see Fig. 9A, 9B and 9C, paragraph [0020, 0154, 0179]).
As per claim 15, Pierce et al. teach claim 10 as described above. Pierce et al. further teach the system, wherein
the immutably storing is on a distributed ledger (see paragraph [0048]).
As per claim 16, Pierce et al. teach claim 10 as described above. Pierce et al. further teach the system comprising
receiving authorization from a SGU creation administrator to generate the SGU token. (see paragraph [0039, 0165]).
Pierce et al. do not teach storing the SGU token and the unique and linked PWL token across multiple memory devices that are physically separated from one another
Kennedy teaches storing the SGU token and the unique and linked PWL token across multiple memory devices that are physically separated from one another (see page 2; where Peer Ledger, a distributed company provides plurality of tokens as required and other Swiss distributed ledger company linked gold units token with Purity, Weight & Location (PWL) token and storing the in different memory locations (see reference Y and Z).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include storing the SGU token and the unique and linked PWL token across multiple memory devices that are physically separated from one another to Pierce et al. because Kennedy teaches including above features would enable blockchain deliver global ecosystem creating immutable record of gold bar’s place of origin and chain of custody wherein blockchain system of distributed ledger companies aXedras and Peer Ledger provide two token associating gold unit token and Purity, Weight & Location (see page 2)).
As per claims 17-18, Pierce et al. teach claim 10 as described above. Pierce et al. further teach the system comprising
physical asset comprises precious metal and the precious metal is gold (see abstract, paragraph [0048]; where the token is associated with a precious metal is a physical asset, e.g., Gold).
As per claim 19, Pierce et al. teach claim 17 as described above. Pierce et al. further teach the system comprising
redeeming or exchanging the physical asset from a secured repository upon presentation of the SGU token (see paragraph [0032, 0041, 0043, 0052, 0153]).
As per claim 20, Pierce et al. teach a non-transitory computer-readable information storage media having instructions stored thereon, that when executed by one or more processors ((see Fig. 2, Processor (202), Memory (204): Instructions (212); Drive Unit (306): Computer Readable Medium (210)/Instructions (212)), perform a method comprising steps as described in the claim 1 above.
As per claim 21, Pierce et al. teach a system comprising:
means for identifying a physical asset to be represented by a standardized gold unit (SGU) token and a unique and linked Purity, Weight & Location (PWL) token (see paragraph [0190]; where physical metal asset is identified based on metal refiner, year of manufacture, a serial number, an assayed fineness and weight);
means for generating the SGU token; means for generating the linked PWL token (see abstract, paragraph [0039-0041]; where issuer generate digital token for gold on blockchain and exchange with fiat currency); and
means for immutably storing the SHU token and the PWL token (see paragraph [0048]; where Digital Tradable Token and Inventory Token is generated and added to block chain serving as an immutable record).
Pierce et al. do not teach means for generating the unique and linked PWL token; and means for immutably storing the unique and linked PWL token on at least one of a blockchain and a distributed ledger.
Kennedy does not teach means for generating the unique and linked PWL token; and means for immutably storing the unique and linked PWL token on at least one of a blockchain and a distributed ledger.
Kennedy teaches means for generating the unique and linked PWL token; and means for immutably storing the unique and linked PWL token on at least one of a blockchain and a distributed ledger (see page 2; where (see reference V and W).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include teaches means for generating the unique and linked PWL token; and means for immutably storing the unique and linked PWL token on at least one of a blockchain and a distributed ledger to Pierce et al. because Kennedy teaches including above features would enable blockchain deliver global ecosystem creating immutable record of gold bar’s place of origin and chain of custody wherein blockchain system of distributed ledger companies aXedras and Peer Ledger provide two token associating gold unit token and Purity, Weight & Location and store in distributed ledger provided by aXedras (see page 2)).
Response to Arguments
After careful consideration of applicant’s amendments and arguments, new ground of rejections of claims necessitated by applicant amendment has been established in the instant application as set forth in detail below. Applicant's arguments with respect to claims have been considered but are moot in view of the new ground(s) of rejection.
As per amended featured in the claims in the response filed, cited prior art but relied on last office action disclosed one of distributed ledger company Peer Ledger specializes tokens (see reference V) plurality of tokens as required and other distributed ledger company Axedras specializes linking gold units token with Purity, Weight & Location (PWL) token (see reference W). There is nothing new in combining expertise of two distributed ledger company to arrive at abstract idea of linking two tokens to immutably stored in database and any data stored the distributed ledger immutable which is fundamental application of a blockchain. The claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Additionally, it is noted that KSR forecloses the argument that a specific teaching, suggestion, or motivation is required to support a finding of obviousness. Under KSR, a claim would have been obvious if the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (Rationale A). Furthermore, under KSR, a claim would have been obvious if a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of applying the teachings of Boyd and Ovadia into the disclosure of Pentel and the results would have been predictable to one of ordinary skill in the art (Rationale D).
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.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosures. The following are pertinent to current invention, though not relied upon:
Akunuri et al. (U.S. Pub No. 2024) teach identifying, validating and transferring soft or hard physical asset using digital surrogate.
Choi (U.S. Pub No. 2024/0095727) teaches virtual asset value in real asset having virtual asset value.
Gagne-Keats et al. (U.S. Pub No. 2023/0239152) teach linking digital and physical non-fungible items.
De Jong et a. (U. S. Patent No. 1,657,595) teach tokenization of asset-backed digital assets.
Marques (U.S. Pub No. 2025/0086711) teaches linking cryptocurrency to a physical asset.
Responsible Gold Operations Ltd. (WO 2018/209148) teach tokenization of asset-backed digital assets
Gillen, Rory (2023) teaches digital gold assets.
Bizouti-Kennedy, Yael (2022) teaches digitized gold bar supply chain affecting investors
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BIJENDRA K SHRESTHA whose telephone number is (571)270-1374. The examiner can normally be reached on 8:00AM-5:00PM.
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Respectfully submitted,
/BIJENDRA K SHRESTHA/Primary Examiner, Art Unit 3691 August 1, 2026
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