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 .
Acknowledgements
Applicant’s response filed February 2, 2026 is acknowledged.
Claims 1 and 4-22 are pending in the application.
Claims 1 and 4-22 are examined below.
Examiner Request
Applicant is requested to indicate where in the specification there is support for amendments to claims should applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112, 1st paragraph issues that can arise when claims are amended without support in the specification. Examiner thanks applicant in advance. See also relevant portions of MPEP 2163.II.A:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP § 714.02 and § 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.").
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 and 4-22 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claims 1 and 4-22, the claimed invention is directed to an abstract idea without significantly more. Representative claim 1 recites accumulating assets, categorizing assets, appending information to the assets related to an owner of the asset, valuing the assets based on other assets not owned by the owner, and displaying the assets, which constitutes a certain method of organizing human activity (specifically, a commercial or legal interaction, or managing personal behavior or relationships or interactions between people) or mental process. Accordingly, the claim recites an abstract idea. This judicial exception is not integrated into a practical application because the additional elements beyond the abstract idea simply link the abstract idea to a particular technological environment (NFTs). Because the abstract idea is not integrated into a practical application, claim 1 is “directed to” an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements identified above represent only well-understood, routine, and conventional technology (or placeholders for such) when compared with the court decisions listed in MPEP § 2106.05(d). Viewing the additional elements as a combination does not add anything further than the individual elements. Therefore, the additional elements in the claim are not sufficient to amount to an inventive concept. Because claim 1 is directed to an abstract idea and fails to recite an inventive concept, it is patent ineligible.
The dependent claims when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101. The additional limitations added by these claims fail to either integrate the claims into a practical application or add an inventive concept, because they serve to further narrow the abstract idea without integrating it into a practical application (claims 4-22) and/or add additional elements that simply further link to a particular technological environment (claims 19-22). Viewing the additional elements of the dependent claims as a combination does not add anything further than the individual elements. Therefore, the dependent claims neither practically integrate the abstract idea nor constitute an inventive concept, and these claims are also rejected as patent ineligible.
Regarding claims 1 and 4-22, the claimed invention encompasses software per se, which does not fall within at least one of the four categories of patent eligible subject. The claims are drawn to an “application” comprising various software modules in each limitation. One of ordinary skill in the art would understand this application to include software per se. For this reason, claims 1 and 4-22 fail to satisfy one of the statutory categories set forth in 35 U.S.C. § 101 and are therefore considered to be non-statutory.
Claim Rejections - 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd Paragraph
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 and 4-22 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 that the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claims 1 and 19, the claim limitations “an accumulator of non-fungible tokens (NFTs),” “a categorizer for categorizing the NFTs according to information in the NFTs,” “an appender for appending to the NFTs owner information related to an owner of the NFTs,” “a valuator for valuing the NFTs,” and “an owner authenticator for accessing the application” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. No information as to what constitutes the above software modules could be found in the specification. Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claims so that the claim limitations will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed functions, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the functions recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the functions so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed functions and clearly links or associates the structure, material, or acts to the claimed functions, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed functions. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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 statute.
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 of this title, 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 following is a quotation of 35 U.S.C. 103(a) (pre-AIA ) which forms the basis for all obviousness rejections set forth in this office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1, 3-18, and 21, as understood by the examiner, are rejected under 35 U.S.C. 103 as being unpatentable over Madhusudhan (US 2023/0071093 A1) in view of Haberman (US 2015/0142603 A1).
Madhusudhan discloses as follows:
Claim
Limitation
Representative disclosure in Madhusudhan
1
an accumulator of non-fungible tokens (NFTs)
Asset Receiving Module 204
1
a categorizer for categorizing the NFTs according to information in the NFTs
"The asset listing module 208 includes an auto catalog module 210 to classify the NFT asset based on metadata associated with the digital file and catalog structure of a target marketplace. The auto catalog module 210 may use classification algorithms, such as decision tree, K-nearest neighbors, support vendor machine, Naïve Bayes, etc" [0072]
1
an appender for appending to the NFTs owner information related to an owner ofthe NFTs
NFT Creation Module 206
1
a valuator for valuing the NFTs, wherein the valuator accesses anonymized data regarding values of other NFTs not owned by the owner
"Interface 700 lists recommended NFT assets for a user-1 based on the user's previous transaction and also based on the predicted value of an NFT," [0089]
1
a display interface for interfacing to a dedicated display for ones of the NFTs
Display 312
21
wherein the NFTs of the one or more groupings are arranged in an ordered series to represent individual frames or samples of the animation, video or sound
"digital assets may include every intangible item, which may include digital documents, securities, videos, images, etc" [0061]
Madhusudhan fails to explicitly disclose but Haberman teaches wherein the valuator accesses data regarding values of other NFTs not owned by the owner ([0016]). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify Madhusudhan to include the valuation of Haberman in order to achieve the predictable result of increasing the accuracy of the value of the NFT, thereby increasing usability of the system.
Haberman does not explicitly disclose that the data used in valuation is anonymized. However, this difference is only found in the nonfunctional descriptive material and does not affect how the claimed invention functions (i.e., the descriptive material does not have any claimed function in the claimed application). Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to modify Haberman to include the anonymized data, because such a descriptive label does not alter how the claimed application functions.
The combination Madhusudhan/Haberman fails to explicitly disclose wherein the categorizer groups the NFTs into one or more groupings, and wherein the one or more groupings comprise NFTs that collectively form an animation, video or sound. However, this limitation can be reasonably interpreted as an intended use of the application, and, therefore, fails to distinguish the claimed invention from the prior art.
Regarding claims 8, 9, and 11-14, Haberman teaches updating the valuation over time or in real-time ([0016]).
Regarding claims 4-7, 10, and 15-18, Madhusudhan fails to explicitly disclose the various valuation data sources, however, there are only a limited number of known types of data to use to value an asset. Therefore, accessing the various valuation data sources would have been obvious because “a person of ordinary skill has a good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR Int’l Co. v. Teleflex Inc. 82 USPQ2d 1385, 1397.
Claims 19 and 20, as understood by the examiner, are rejected under 35 U.S.C. 103 as being unpatentable over Madhusudhan/Haberman in view of applicant-admitted prior art.
The below officially noticed facts are taken to be admitted prior art. The official notices were asserted by the examiner in the office action mailed October 1, 2026. Applicant did not adequately traverse these official notices in applicant's next response submitted February 2, 2026. Applicant did not state why the noticed facts are not considered to be common knowledge or well-known in the art. Therefore, the officially noticed facts are taken to be admitted prior art. See MPEP 2144.03.C.
Madhusudhan/Haberman discloses as discussed above, but Madhusudhan/Haberman fails to explicitly disclose authenticating for accessing the application using a key.
However, the examiner takes official notice that it is old and well known in the art to authenticate a user for accessing the application using a key in order to provide security to the application.
It would have been obvious to a person having ordinary skill in the art at the time of the invention to modify Madhusudhan/Haberman to include the authentication of examiner’s official notice because all the claimed elements/steps were known in the prior art and one skilled in the art could have combined the elements/steps as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results, such as increased security, to one of ordinary skill in the art at the time of the invention.
Claim 22, as understood by the examiner, is rejected under 35 U.S.C. 103 as being unpatentable over Madhusudhan/Haberman in view of examiner’s official notice.
Madhusudhan/Haberman discloses as discussed above, but Madhusudhan/Haberman fails to explicitly disclose wherein selecting at least one of the one or more NFTs and one or more groupings starts or plays the animation, video or sound.
However, the examiner takes official notice that it is old and well known in the art to for selecting an NFT and/or groupings to start or play an animation, video or sound, because that is one of the expected behaviors for a user.
It would have been obvious to a person having ordinary skill in the art at the time of the invention to modify Madhusudhan/Haberman to include the select to play of examiner’s official notice because all the claimed elements/steps were known in the prior art and one skilled in the art could have combined the elements/steps as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results, such as increased usability, to one of ordinary skill in the art at the time of the invention.
Response to Amendments and Arguments
The examiner expresses his appreciation for applicant’s specific citations to the specification indicating where applicant believes support for the claim amendments can be found. The examiner's search for support for the claim amendments was not limited to these citations.
The objections to claims 16 and 17 are withdrawn in response to applicant’s amendment.
The 112(b) rejections of claims 16 and 17 due lack of antecedent basis are withdrawn in response to applicant’s amendment.
Regarding the 112(b) rejections due to invocation of 112(f) without disclosure of corresponding structure, material, or acts for performing the entire claimed function, applicant argues that the disclosure is adequate. The examiner respectfully disagrees. For example, regarding the “valuator for valuing the NFTs,” applicant points to “value engine 160 in communication with data stores or oracles (180, 190) over network 170, executed by the processor system of FIG. 7, as described at paragraphs [0037], [0045], and [0056]-[0058]” as disclosing the corresponding structure for performing the claimed function. The examiner has reviewed these portions of the specification, and they contain only potential inputs to perform the claimed function and do not disclose anything approaching the requisite structure or algorithm necessary to perform the claimed function of valuing an NFT. Applicant’s arguments regarding the other invocations of 112(f) are similarly unpersuasive. Therefore, the 112(b) rejections due to invocation of 112(f) without disclosure of corresponding structure, material, or acts for performing the entire claimed function are maintained.
Regarding the software per se 101 rejection, applicant neither argues nor amends to overcome this rejection. The rejection is still believed to be proper. Therefore, the rejection is maintained.
Regarding the Alice 101 rejection, applicant argues that the amendment to the claims overcomes the rejection. The examiner respectfully disagrees. The rejection above has been modified in response to applicant’s amendment but is otherwise maintained.
The prior art rejections have been modified in response to applicant’s amendment but are otherwise maintained.
Conclusion
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIE KUCAB whose telephone number is (571)270-3025. The examiner can normally be reached Monday through Friday, 9 a.m. to 4:30 p.m. ET. The examiner’s email address is Jamie.Kucab@USPTO.gov. See MPEP 502.03 regarding email communications. Following is the sample authorization for electronic communication provided in MPEP 502.03.II: “Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.” Without such an authorization in place, an examiner is unable to respond via email.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel, can be reached at telephone number (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMIE R KUCAB/Primary Examiner, Art Unit 3699