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 .
Election/Restrictions
Newly submitted claims 16-23 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claims 1-7 were directed to a server for shopping for digital content (G06Q 20/123).
Claims 16-23 are directed to a system for licensing (G06Q 2220/18).
These inventions are found to be a combination and sub-combination usable together.
There is no evidence of record that there are only trivial differences between the original server and the new system; nor did the response plainly represent that these are obvious variants. The original server could have been made or used without the specific components of the new system. The new system could be made or used without the server. The system requires a different search strategy.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 16-23 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
1. Claim 25 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant disclosed a sensor, but did not disclose the algorithm for determining the relationship between x) the predefined position and y) the predefined distance. Even if the applicant had described the algorithm, applicant did not describe that the sensor could perform that functionality.
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.
2. Claims 24 and 25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In general, it is unclear why there is a minting step as the minted NFT is not actually used for anything.
As per claim 24, there is insufficient antecedent basis for stored thresholds.
As per claim 25, there is insufficient antecedent basis for selected products.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
3. Claims 24 and 25 are rejected under 35 U.S.C. 102 as being anticipated by Jakobsson et al. (US20230075884).
Jakobsson discloses:
-enabling a curator to publish the content; permitting resale by a reseller ([0003-4];[0212]; Figs. 1&2 social media platforms);
-minting an NFT for the digital content ([0024]; [0074-5]; [0134-5]; [0145-6] tokens and NFTs);
-computing engagement metrics including view counts and positive response counts;
generating an influence index from said metrics; comparing the influence index to stored thresholds ([0280-5]; Figs. 26-27 valuation model for digital content).
The adverb “conditionally” does not identify the conditional logic (e.g., binary if/then, multiple-branch decision tree, sequential decision steps). Thus, it is construed to merely rephrase the if/when conditional language present in the original method, such that the steps following the comparison, including but not limited to the distance determining and/or interface rendering steps of the dependent claim, are not actually required yet.
Proceeds could mean gross proceeds, net proceeds after fees, or another base amount. However, the term is found to broad, rather than indefinite while its actual construction is of no particular significant at this time in view of the optional format detailed above.
Different revenue equations could mean various mathematical forms, variables, parameters or values. However, the phrase is found to broad, rather than indefinite while its actual construction is of no particular significant at this time in view of the optional format detailed above.
Response to Arguments
Applicant’s arguments with respect to all pending claim(s) have been considered but are moot because the new ground of rejection does not rely on any rejection of record specifically challenged in the argument.
Conclusion
Lee, in the field of NFTs, shows dragging products/things from one area to another.
The Korean (IP) office opinion provided by the examiner takes a position pertinent to smart contracts etc.
Applicant's amendment necessitated the new ground(s) 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 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.
/MICHAEL FUELLING/Supervisory Patent Examiner