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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/09/2024, 03/18/2025, 04/15/2025, 04/24/2025/007/07/2025, 08/14/2025, 09/10/2025 and 11/03/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings submitted on 07/18/2024 are acceptable.
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 recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. MPEP §2106.
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined as Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter). MPEP §2106.03.
Here, the claims are directed to the statutory category of a process (Claims 1-11) and a manufacture (claims 12-20). Therefore, we proceed to Step 2A, Prong 1. MPEP §2106.
Under a Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. MPEP §2106.04. Independent Claim 1 is selected as being representative of the independent claims in the instant application. Claim 1 recites:
A method of provisioning cryptographic digital assets, the method comprising:
receiving, from a remote computing node over a distributed computing network via a dedicated mobile application (mobile app) operating on a personal computing device of a user, a virtual object retrieval option enabling creation of one of a predefined limited number of nonfungible
tokens (NFTs) with a digital asset displaying a digital representation of a physical product;
transmitting, via the mobile app to the remote computing node over the distributed computing network, a user request of the user to use the virtual object retrieval option;
receiving, via the mobile app after transmitting the user request, a confirmation that one of the NFTs was assigned to a cryptographic wallet or locker of the user;
receiving, via the mobile app, an indication that multiple ones of the physical product displayed in the digital asset are being manufactured as physical products;
transmitting, via the mobile app to the remote computing node, a trade request of the user to trade the NFT for one of the physical products being manufactured; and
receiving, via the mobile app after transmitting the trade request, a notification that the one of the physical products was shipped to the user.
Here, the claims recite an abstract idea, or combination of abstract ideas, of redeem and trade a token for an product. This concept/abstract idea, which is identified in the bolded sections seen above, falls within the Certain Methods of Organizing Human Activity grouping because it describes a commercial or legal interactions (e.g., receive, accept and trade an object of value).
Accordingly, it is determined that the claims recite an abstract idea since they fall within one or more of the three enumerated categories of patent ineligible subject matter. MPEP §2106.04.
Since it is determined that the claim(s) contain a judicial exception, it must then be determined, under Step 2A, Prong 2, whether the judicial exception is integrated into a practical application of the exception. MPEP §2106.04. In order to make this determination, the additional element(s) are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. Here claim 1 recite the additional elements of a remote computing node, a distributed ledger, a mobile application, a personal computing device, NFT’s and a cryptographic wallet. Independent claim 12 recite the additional elements of a non-transient, computer-readable medium, one or more processors, a remote computing node, a distributed ledger, a mobile application, a personal computing device, NFT’s and a cryptographic wallet. See MPEP 2106.05(f). These additional elements are all recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception, or a portion thereof, using a generic computer component. Additionally, Examiner finds no indication in the Specification, that the operations recited in the independent claims require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any allegedly inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. Furthermore, there is no indication in the claim(s) that the use of a non-transient, computer-readable medium, one or more processors, a remote computing node, a distributed ledger, a mobile application, a personal computing device, NFT’s and a cryptographic wallet in combination with the abstract idea leads to an improvement of the processor, memory, another technology, or to a technical field. Accordingly, the 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. Looking at the elements as a combination does not add anything more than the elements analyzed individually. Examiner further notes that even though the claims may not preempt all forms of the abstraction, this alone, does not make them any less abstract.
When analyzed under step 2B, the claim(s) does/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, the additional element of using a generic computing component (e.g., a non-transient, computer-readable medium, one or more processors, a remote computing node, a distributed ledger, a mobile application, a personal computing device, NFT’s and a cryptographic wallet) to implement the abstract idea amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept or significantly more than the judicial exception. Considered as an ordered combination, the additional elements recited in the claim(s) add nothing that is not already present when the steps are considered separately.
Therefore, claim 1 and 12 are rejected under 35 U.S.C. §101 and are not patent eligible. Dependent claims 2-11 and 13-20 when analyzed are held to be patent ineligible under 35 U.S.C. §101 because the additional recited limitation(s) fail to establish that the claim(s) is/are not directed to an abstract idea.
Dependent claims 2 and 13 further refine the abstract idea by describing how the NFT’s are generated (e.g., via a virtual object generator). These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 3 and 14 further refine the abstract idea by indicating that an alert that NFT’s was removed from wallet. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 4 and 15 further refine the abstract idea by indicating that the mobile device receives a notification. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 5 and 16 further refine the abstract idea by describing the replacement NFT. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 6-7 and 17-18 further refine the abstract idea by transmitting and receiving trade request and confirmations. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 8 and 19 further refine the abstract idea by describing transfers of an NFT from users. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 9 and 20 further refine the abstract idea by indicating the NFT’s are registered to a blockchain and digital assets are placed on user wallet. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 10 further refine the abstract idea by describing the intended use of a smart contract (e.g., to authenticate ownership and to track transaction of each of the NFTs). This claims fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 11 further refine the abstract idea by describing the physical product (e.g., includes footwear and/or Apparel) and further describing the digital representation. This claims fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract ideas itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, the dependent claims are also not patent eligible.
Accordingly, it is determined that all claims are directed to non-statutory subject matter under 35 U.S.C. 101 and are ineligible.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yantis, (US 2022/0058629 A1), “Yantis” in view of Aielli (US 2017/0161807 A1), “Aielli”.
Regarding claim 1 and 12: Yantis disclose:
Claim 1: A method of provisioning cryptographic digital assets, the method comprising:
Claim 12: A non-transient, computer-readable medium (CRM) (See at least Yantis, [0992]) storing instructions executable by one or more processors (See at least Yantis, [0992]) of a personal computing device with a dedicated mobile application (mobile app) operating on the personal computing device, the instructions, when executed by the one or more processors, causing the mobile app to perform operations comprising:
receiving, from a remote computing node over a distributed computing network via a dedicated mobile application (mobile app) operating on a personal computing device of a user, a virtual object retrieval option enabling creation of one of a predefined limited number of nonfungible tokens (NFTs) with a digital asset displaying a digital representation of a physical product; (See at least Yantis, [0009]; [0011]; [0013]; [0015]; [0022] a virtual retrieval option (i.e., redemption) is received from a remote computing node over a distributed computing network via a dedicated mobile application (mobile app) operating on a personal computing device of a user (i.e., user device) enabling creation of one of a predefined limited number of nonfungible tokens (NFTs) (i.e., NFT) with a digital asset displaying a digital representation of a physical product (i.e., a virtual reality visualization of the respective item). ( See Provisional 62/754,987 [0003]; [0007-0008])
transmitting, via the mobile app to the remote computing node over the distributed computing network, a user request of the user to use the virtual object retrieval option; (See at least Yantis, [0026]; [0031]; [0904-0905] a user request of the user (i.e., redemption request) to use the virtual object retrieval option is transmitted (e.g., user accept the transaction).) (See Provisional 62/754,987, [0083])
receiving, via the mobile app after transmitting the user request, that one of the NFTs was assigned to a cryptographic wallet or locker of the user; (See at least Yantis, [0876]; [0948]; Once this occurs, a copy of the token may be deposited into an account of the user. For example, the token may be deposited in a digital wallet of the user.) (See Provisional 62/754,987, [0057]) (See Provisional 62/754,987, [0057])
receiving, via the mobile app, that multiple ones of the physical product displayed in the digital asset are being manufactured as physical products; (See at least Yantis, [0826] It is noted that an item may refer to goods that already exist or that can be produced at a later time. For example, an item may be an unmade pizza or article of clothing. A purchaser of such an item may purchase the item, and the item may be produced at a time after the purchase.) (See Provisional 62/754,987, [0084])
transmitting, via the mobile app to the remote computing node, a trade request of the user to trade the NFT for one of the physical products being manufactured; and (See at least Yantis, [0060]; [0957]; In embodiments, the unique digital token is redeemable for a right to possess the real-world object. Once owned by the user, the user may use the token in the video game and may subsequently redeem the token to receive the physical item represented by the token.) (See Provisional 62/754,987, [0036])
receiving, via the mobile app after transmitting the trade request, that the one of the physical products was shipped to the user. (See at least Yantis, [0849]; [0957]; In the latter scenario, the earrings may be shipped to the user, such that the earrings may be physically worn by the user, but are no longer able to be used in the video game. The seller may provide information such as a physical location where physical items may be shipped from, a digital location where digital items may be retrieved from, physical locations of the seller's brick and mortar stores, hours of operation of the seller, and the like.) (See Provisional 62/754,987, [0036]; [0051])
Yantis disclose redemption of an NFT for a physical product, and a trade process. However, Yantis does not explicitly disclose receiving confirmations, receiving indication and notification regarding the products and the trade.
Aielli, on the other hand teaches receiving confirmations, receiving indication and notification regarding the products and the trade. (See at least Aielli, Fig. 9; [0020]; [0043]; [0076]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yantis and include Aielli’s teachings in order to provide transparency by keeping the user informed of the trades and transactions.
Regarding claims 2 and 13: The combination of Yantis and Aielli disclose the method of claim 1 and the CRM of claim 12. The combination further disclose wherein the one of the NFTs is generated via a virtual object generator responsive to the remote computing node receiving the user request to use the virtual object retrieval option. (See at least Yantis, [0033]; [0872-0874]; [0904]; the one of the NFTs (token/non-fungible token) is generated via a virtual object generator (i.e., cryptographic token generation system) responsive to the remote computing node receiving the user request to use the virtual object retrieval option (i.e., redemption request).) (See Provisional 62/754,987, [0060])
Regarding claims 3 and 14: The combination of Yantis and Aielli disclose the method of claim 1 and the CRM of claim 12. The combination further disclose receiving, via the mobile app after transmitting the trade request, the one of the NFTs was removed from the cryptographic wallet or locker of the user. (See at least Yantis, [0011]; [0146] In embodiments, the messaging system is integrated with a digital wallet such that the digital wallet is updated upon exchange of the second digital token without requiring the user to interact with). (See Provisional 62/754,987, [0079-0086]). However, Yantis does not explicitly disclose receiving alert.
Aielli, on the other hand teaches receiving alert regarding the products and the trade. (See at least Aielli, Fig. 9; [0020]; [0043]; [0076]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yantis and include Aielli’s teachings in order to provide transparency by keeping the user informed of the trades and transactions.
Regarding claims 4 and 15: The combination of Yantis and Aielli disclose the method of claim 3 and the CRM of claim 14. The combination further disclose receiving, via the mobile app after transmitting the trade request, a new confirmation that a replacement NFT, distinct from the NFTs associated with the digital asset, was assigned to the cryptographic wallet or locker of the user. (See at least Yantis, [0895]; [0909]; [0895] FIG. 4; In embodiments, the transaction system 106 includes an express trading system 410 in which users may trade one or more assets without exchanging money. In these embodiments, the express trading system 410 provides a mechanism by which users can safely trade tokens, where each token represents a different item. In an example operation, a first user may make a trade offer in a smart contract to a second user to exchange one or more tokens for one or more tokens in return. The second user may accept by transferring the requested virtual asset. The smart contract then marks the transaction as completed. In embodiments, the express trade system 410 may provide a GUI that allows a user to view an inventory of tokens, create offers, accept offers, and/or cancel offers.) (See Provisional 62/754,987, [0088])
Regarding claims 5 and 16: The combination of Yantis and Aielli disclose the method of claim 4 and the CRM of claim 15. The combination further disclose wherein the replacement NFTs are associated with a different digital asset displaying a different digital representation of a different physical product. (See at least Yantis, [0895]; [0909]; [0895] FIG. 4; In embodiments, the transaction system 106 includes an express trading system 410 in which users may trade one or more assets without exchanging money. In these embodiments, the express trading system 410 provides a mechanism by which users can safely trade tokens, where each token represents a different item. In an example operation, a first user may make a trade offer in a smart contract to a second user to exchange one or more tokens for one or more tokens in return. The second user may accept by transferring the requested virtual asset. The smart contract then marks the transaction as completed. In embodiments, the express trade system 410 may provide a GUI that allows a user to view an inventory of tokens, create offers, accept offers, and/or cancel offers.) (See Provisional 62/754,987, [0088])
Regarding claims 6 and 17: The combination of Yantis and Aielli disclose the method of claim 1 and the CRM of claim 12. The combination further disclose:
transmitting, via the mobile app to the remote computing node, an NFT-to-NFT trade request of the user to trade the one of the NFTs for a new NFT; and (See at least Yantis, [0125]; [0135-0141]; In embodiments, the second digital token is exchangeable among accounts via a user interface of the system.) (See Provisional 62/754,987, [0088])
receiving, via the mobile app after transmitting the NFT-to-NFT trade request, that the new NFT was assigned to the cryptographic wallet or locker of the user.(See at least Yantis, [0136]; In embodiments, ownership of the second digital token is recorded in an ownership record system.) (See Provisional 62/754,987, [0088]). However, Yantis does not explicitly disclose a new confirmation.
Aielli, on the other hand teaches a new confirmation regarding the products and the trade. (See at least Aielli, Fig. 9; [0020]; [0043]; [0076]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yantis and include Aielli’s teachings in order to provide transparency by keeping the user informed of the trades and transactions.
Regarding claims 7 and 18: The combination of Yantis and Aielli disclose the method of claim 6 and the CRM of claim 17. The combination further disclose: receiving, via the mobile app after transmitting the NFT-to-NFT trade request, the one of the NFTs was removed from the cryptographic wallet or locker of the user. (See at least Yantis, [0011]; [0146] In embodiments, the messaging system is integrated with a digital wallet such that the digital wallet is updated upon exchange of the second digital token without requiring the user to interact with). (See Provisional 62/754,987, [0028; [0057]; [0088]). However, Yantis does not explicitly disclose sending an alert.
Aielli, on the other hand teaches an alert regarding the products and the trade. (See at least Aielli, Fig. 9; [0020]; [0043]; [0076]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yantis and include Aielli’s teachings in order to provide transparency by keeping the user informed of the trades and transactions.
Regarding claims 8 and 19: The combination of Yantis and Aielli disclose the method of claim 1 and the CRM of claim 12. The combination further disclose:
transmitting, via the mobile app to the remote computing node, an NFT transfer request of the user to transfer the one of the NFTs to a second user; and (See at least Yantis, [0218] receiving a transfer request to transfer the specific token to a different user).
receiving, via the mobile app after transmitting the NFT transfer request, the one of the NFTs was assigned to a second cryptographic wallet or locker of the second user. (See at least Yantis, [0218]; [0719] wherein the transfer request includes a digital-token identifier that identifies the specific token and a public address of the different user, validating the specific token based on the digital-token identifier and the ledger, verifying that the different user has a valid account on the tokenization platform based on the public address of the user and the ledger, in response to validating the specific token and verifying the different user, updating the ledger with a block that includes ownership data that indicates that the specific token corresponding to the virtual representation is owned by the different user). (See Provisional 62/754,987, [0028; [0057]; [0088]). However, Yantis does not explicitly disclose sending an alert.
Aielli, on the other hand teaches an alert regarding the products and the trade. (See at least Aielli, Fig. 9; [0020]; [0043]; [0076]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yantis and include Aielli’s teachings in order to provide transparency by keeping the user informed of the trades and transactions.
Regarding claims 9 and 20: The combination of Yantis and Aielli disclose the method of claim 1 and the CRM of claim 12. The combination further disclose: wherein assigning the one of the NFTs to the cryptographic wallet or locker of the user includes registering the one of the NFTs to a blockchain ledger and placing one of the digital assets in the cryptographic wallet or locker of the user. (See at least Yantis, [0876]; [0880]; updating the distributed ledger to indicate the change of ownership of the assigned token to the public address of the user. In embodiments, the distributed ledger 310 is a blockchain). (See Provisional 62/754,987, [0028]; [0057]; [0088]).
Regarding claim 10: The combination of Yantis and Aielli disclose the method of claim 1. The combination further disclose: receiving, via the mobile app, a smart contract operable to authenticate ownership and to track transaction of each of the NFTs. (See at least Yantis, [0478]; In embodiments, the smart contract updates a ledger to indicate a change in an ownership interest with respect to the token in response to the one or more conditions is met.) (See Provisional 62/754,987, [0028; [0057]; [0088]).
The portion which recites “to authenticate ownership and to track transaction of each of the NFTs.” Is intended use/result language because it indicates the intended use of the smart contract without positively reciting steps (e.g., authenticating and tracking).
The applicant is reminded that these portions, i.e., intended use/result, do not further limit the scope of the claim as the limitations, or portions thereof, do not claim the functions as being positively recited actions or functions, and/or they do not add any meaning or purpose to the associated manipulative step(s). See MPEP 2103 C and 2111.04. Simply because the limitation recites something as being "for ... [performing a specific functionality]", etc. does not mean that the functions are required to be performed, or are actually performed.
Regarding claim 11: The combination of Yantis and Aielli disclose the method of claim 1. The combination further disclose: wherein the physical product includes footwear and/or apparel, and wherein the digital representation includes a 2D or 3D virtual rendering of the footwear and/or apparel. (See at least Yantis, [0849]; [0860]; wherein the physical product includes footwear and/or apparel (i.e., clothing) wherein the digital representation includes a 2D or 3D virtual rendering of the footwear and/or apparel (i.e., 3D representations of the items).) (See Provisional 62/754,987, [0084])
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cox et al. (US20100005007A1): method according to one embodiment includes providing access to a representation of a real world item to an avatar in a virtual world based on a real world transaction involving a user associated with the avatar. A method according to another embodiment includes receiving notice that a user has purchased a real world item; providing access to a representation of the real world item to an avatar in a virtual world; and allowing the avatar to interact with the representation of the real world item in the virtual world; outputting. Cox, Abs.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARLYANNIE M GARCIA whose telephone number is (571)272-6950. The examiner can normally be reached Monday - Friday 7:30am - 4:30-pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick McAtee can be reached at (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.G.M/Examiner, Art Unit 3698
/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698
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