DETAILED ACTION
Status of Claims
The following is a FIRST, NON-FINAL OFFICE ACTION for Application #18/835,073, filed on 08/01/2024, and a preliminary amendment filed on 07/24/2025. This application is a 371 National Stage Application of PCT/KR2023/001160, filed on 01/26/2023, and claims Priority to Korean Application 10-2022-0014502, filed on 02/24/2022.
Claims 4-24 are now pending and have been examined.
Claims 1-3 have been cancelled by the applicant.
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 4-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The rationale for this finding is explained below.
Per Step 1 of the analysis, the claims are analyzed to determine if they are directed to statutory subject matter. Claim 4 claims a system comprising two databases, a verification unit, a compliance verification unit, a blockchain server, a smart contract processor, an interface, and a processor. Paragraphs [0027]-[0028] and Figure 1 of the applicant’s filed specification describe the units sending and receiving data and being in communication with the servers, and are therefore considered structural components. Therefore, the system is considered an apparatus. An apparatus is a statutory category for patentability. Claim 14 claims a method, or process. A process is a statutory category for patentability. Claim 21 claims an apparatus comprising a processor and memory. An apparatus is a statutory category for patentability.
Per Step 2A, Prong 1 of the analysis, the examiner must now determine if the claims recite an abstract idea or eligible subject matter. In the instant case, the independent claims 4, 14, and 21 recite an abstract idea. Specifically, claim 4 recites “receive air rights registration data including location, altitude, and time, retrieve spatial constraints including programmable exclusion zones, determine whether the registration satisfies the spatial constraints, retrieve financial authorization data associated with the registered air rights, verify whether the data satisfies at least one policy-based financial condition, the condition comprising a government-guaranteed payment obligation, a digitally escrowed payment confirmed via public registry, a programmable payment module pre-approved by a regulatory authority, execute issuance of a contract, record the data, and facilitate issuance upon compliance.” Claims 14 and 18 recite “receiving registration data including location, altitude, and time (claim 14 only), verifying compliance with programmable spatial constraints, verifying whether the data satisfies at least one policy-based financial condition selected from a government-guaranteed payment obligation, public digital escrow, certified programmable payment module, if both verifications succeed store the data, record compliance, and issue the rights contract, otherwise reject the issuance. The claims are directed to an abstract idea, namely “certain methods of organizing human activity.” Specifically, the claims are directed to the activity of “commercial or legal interactions including agreements in the form of contracts” (see MPEP 2106.04 (a) (2) (II)). A legal entity or authorized representative could perform all these steps to facilitate a contract regarding trading or purchase of air rights with access to the proper data and user information. The representative would access the data, verify and authenticate the financial and legal aspects, facilitate the transaction, and issue the contract upon compliance. The technical aspects are used to automate the abstract idea as further explained in the following steps. Therefore, the claims are directed to the abstract idea of “certain methods of organizing human activity,” specifically, “commercial or legal interactions including agreements in the form of contracts.”
Per Step 2A, Prong 2 of the analysis, the examiner must now determine if the claims integrate the abstract idea into a practical application. The additional elements of claim 4 include the recitation of “a geospatial database,” “a member database,” “a verification unit,” “a compliance verification unit,” “a blockchain server,” “a transaction condition table,” “a smart contract processor,” “a user interface,” “a display,” and “a processor.” The additional elements in claim 21 include “a memory” and a “spatial compliance processor.” However, these components are considered generic recitations of technical elements which are recited at a high level of generality. These components are being used as “tools to automate the abstract idea” (see MPEP 2106.05 (f)), and do not integrate the abstract idea into a practical application. They are not recitations of a special purpose computer or transformation (see MPEP 2106.05 (b) and (c)). The additional elements of the claims also include “generate a digital token, such as an NFT” (claim 4), “issuing a digital token, such as an NFT” (claim 14), and “allow issuance of a digital token, such as an NFT” (claim 21). However, these additional elements are recited at a high level of generality and are considered the equivalent of “apply it” or “using a computer as a tool to automate the abstract idea” (see MPEP 2106.05 (f)). Further, the examiner takes Official Notice that it is old and well known at the time of filing of the application to use an NFT to issue and store a contract for such as property, a digital item, and other such products and services. Therefore, the additional elements do not integrate the abstract idea into a practical application. The additional elements in the claims also include “storing verified spatial and financial compliance data, store metadata, manage audit logs” (claim 4), “storing metadata to a blockchain, logging compliance” (claim 14), and “storing spatial and financial policy data” (claim 21). Absent further detail, these limitations are considered “receiving, processing and/or storage of data,” which is listed in the MPEP 2106.05 (d) (II) (iii-iv) as an example of conventional computer functioning (see “electronic recordkeeping” citing Alice Corp, “updating an activity log,” citing Ultramercial, and “storing and retrieving information in a memory” citing Versata Dev Grp v SAP). Therefore these additional elements do not integrate the abstract idea into a practical application.
Per Step 2B of the analysis, the examiner must now determine if the claims include limitations that are “significantly more” than the abstract idea by demonstrating an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The additional elements of claim 4 include the recitation of “a geospatial database,” “a member database,” “a verification unit,” “a compliance verification unit,” “a blockchain server,” “a transaction condition table,” “a smart contract processor,” “a user interface,” “a display,” and “a processor.” The additional elements in claim 21 include “a memory” and a “spatial compliance processor.” However, these components are considered generic recitations of technical elements which are recited at a high level of generality. These components are being used as “tools to automate the abstract idea” (see MPEP 2106.05 (f)), and do not integrate the abstract idea into a practical application. They are not recitations of a special purpose computer or transformation (see MPEP 2106.05 (b) and (c)). The additional elements of the claims also include “generate a digital token, such as an NFT” (claim 4), “issuing a digital token, such as an NFT” (claim 14), and “allow issuance of a digital token, such as an NFT” (claim 21). However, these additional elements are recited at a high level of generality and are considered the equivalent of “apply it” or “using a computer as a tool to automate the abstract idea” (see MPEP 2106.05 (f)). Further, the examiner takes Official Notice that it is old and well known at the time of filing of the application to use an NFT to issue and store a contract for such as property, a digital item, and other such products and services. Therefore, the additional elements are not considered significantly more than the abstract idea itself. The additional elements in the claims also include “storing verified spatial and financial compliance data, store metadata, manage audit logs” (claim 4), “storing metadata to a blockchain, logging compliance” (claim 14), and “storing spatial and financial policy data” (claim 21). Absent further detail, these limitations are considered “receiving, processing and/or storage of data,” which is listed in the MPEP 2106.05 (d) (II) (iii-iv) as an example of conventional computer functioning (see “electronic recordkeeping” citing Alice Corp, “updating an activity log,” citing Ultramercial, and “storing and retrieving information in a memory” citing Versata Dev Grp v SAP). Therefore these additional elements are not considered significantly more than the abstract idea itself.
When considered as an ordered combination, the claims still are considered to be directed to an abstract idea. The claims the logical set of steps for facilitating a contract regarding trading or purchase of air rights with access to the proper data and user information, accessing the data, verifying and authenticating the financial and legal aspects, facilitating the transaction, and issuing the contract upon compliance. Therefore, the ordered combination does not lead to a determination of significantly more.
When considering the dependent claims, claim 5 is considered insignificant extra-solution activity, as the blockchain server being synchronized with a specific registry does not change the analysis and the additional element does not integrate the abstract idea into a practical application. Claim 6 is considered part of the abstract idea as the type of evaluation does not change the analysis. Claims 7-9 are considered the equivalent of “apply it” or “using a computer as a tool to automate the abstract idea” (see MPEP 2106.05 (f)), as a digital token including metadata, being expired, or being compatible with 3rd party platforms after re-verification is considered conventional computer functioning and the examiner takes Official Notice that it is old and well known for digital tokens to have accompanying metadata, be expired, or be compatible with 3rd party platforms after re-verification. Claim 10, absent further detail, is considered part of the abstract idea as enforcing a policy regarding token expiration is part of a commercial interaction, and using a smart contract processor is considered a generic recitation of a technical element which is recited at a high level of generality. The component is being used as a “tool to automate the abstract idea” (see MPEP 2106.05 (f)). Claim 11 recited an index that links tokens to regions. This is considered insignificant extra-solution activity, and also considered “receiving, processing and/or storage of data,” which is listed in the MPEP 2106.05 (d) (II) (iii-iv) as an example of conventional computer functioning (see “electronic recordkeeping” citing Alice Corp, “updating an activity log,” citing Ultramercial, and “storing and retrieving information in a memory” citing Versata Dev Grp v SAP). Therefore these additional elements are not considered significantly more than the abstract idea itself. Claim 12 is considered the equivalent of “apply it” or “using a computer as a tool to automate the abstract idea” (see MPEP 2106.05 (f)), as issuance of a digital token, such as an NFT, being subject to a programmable multi-signature process involving financial and regulatory co-signatory is considered conventional computer functioning as well as a part of a commercial interaction involving facilitating a contract. Further, the examiner takes Official Notice that it is old and well known for issuance of a digital token, such as an NFT, being subject to a programmable multi-signature process involving financial and regulatory co-signatory. Claim 13 is considered insignificant extra-solution activity as the types of spatial constraints being programmable does not change the analysis. Claims 15 and 16 are considered “receiving, processing and/or storage of data,” which is listed in the MPEP 2106.05 (d) (II) (iii-iv) as an example of conventional computer functioning (see “electronic recordkeeping” citing Alice Corp, “updating an activity log,” citing Ultramercial, and “storing and retrieving information in a memory” citing Versata Dev Grp v SAP). Therefore these additional elements are not considered significantly more than the abstract idea itself. Claim 17 is considered part of the abstract idea of facilitating a commercial interaction in the form of a contract. Claims 18 and 20, absent further detail on any technical aspect of the limitation, is considered part of the abstract idea. Claim 19 is considered to be rejected for the same reasons as claim 14. Claim 22 is considered part of the abstract idea of facilitating a commercial interaction in the form of contracts. Claim 23 is considered conventional computer functioning and the examiner takes Official Notice that it is old and well known in the computer arts to execute validations asynchronously to reduce latency. Claim 24 is considered part of the abstract idea of facilitating a commercial interaction in the form of contracts.
Therefore, claims 4-24 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. Vs. CLS Bank International et al., 2014 (please reference link to updated publicly available Alice memo at http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf as well as the USPTO January 2019 Updated Patent Eligibility Guidance.)
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Howie, David. WIPO Publication WO 2019/033090 A1 (included as a PDF with this Office Action) in view of Wang, et al., Pre-Grant Publication No. 2021/0133713 A1.
Regarding Claim 21, Howie teaches:
An apparatus (method) …comprising:
a memory storing spatial and financial policy data (see pages 12-14 and 16 in which spatial data, such as for an air space, is stored on a distributed ledger or other storage; see also pages 20-22 and 27-28 in which financial information is stored)
a spatial compliance processor (page 4 which teaches the system verifying spatial compliance, see also pages 12-14 in which the server/processor uses stored spatial information to validate the property, verify size and availability and existence, ownership, altitude accuracy of records of the air space, ability to be separated, all which are measures of compliance)
a financial condition validation module configured to evaluate whether the request satisfies public escrow confirmation (see page 21 in which public escrow information is verified for the transaction), a regulator-approved payment module (page 3- last paragraph to page 4); see also pages 27-28
a control unit to allow issuance of a digital token only upon dual compliance verification (see pages 28-30 in which upon verification of air rights property and financial payment and completion of the transaction a native digital token is issued)
Howie, however, does not appear to specify:
such as a non-fungible token (NFT)
Wang teaches:
such as a non-fungible token (NFT) (see Abstract, [0005], [0009], [0026], [0031], and [0039] in which an NFT is used for transfer of air-rights)
It would be obvious to one of ordinary skill in the art to combine Wang with Howie because Howie already teaches air rights transfer using digital tokens associated with a blockchain, but does not specify NFT’s, and using NFT’s are especially advantageous for purchase of rights, rent, or lease of irreplacable assets like real estate that often change hands and are unique, versus using other types of fungible tokens or other types of contracts and receipts.
Regarding Claim 22, the combination of Howie and Wang teaches:
the apparatus of claim 21
Howie further teaches:
wherein the financial condition validation module verifies cryptographic signatures using a regulatory public key infrastructure (see pages 3-4)
Claims 23 is rejected under 35 U.S.C. 103 as being unpatentable over Howie, David. WIPO Publication WO 2019/033090 A1 (included as a PDF with this Office Action) in view of Wang, et al., Pre-Grant Publication No. 2021/0133713 A1 and in further view of Official Notice.
Regarding Claim 23, the combination of Howie and Wang teaches:
the apparatus of claim 21
Howie and Wang, however, does not appear to specify:
wherein spatial and financial validations are executed asynchronously to reduce processing latency
The examiner, however, takes Official Notice that it is old and well known in the computer arts to asynchronously perform various transmissions over a network such as general use, inquiries, data transfers, broadband use, requests, streaming, and other functionalities so that the demand on one component or network is less and network latency is avoided or lessened. Companies ranging from Nokia and Verizon to Microsoft and IBM have done so for at least several years prior to the effective filing date of the application.
Therefore, it would be obvious to one of ordinary skill in the art to combine wherein spatial and financial validations are executed asynchronously to reduce processing latency with Howie and Wang because Howie and Wang already teach functionality including validation and payments being performed by computers over networks, and asynchronous verifications would allow for more optimal computer functionality and less chance of latency.
Claims 24 is rejected under 35 U.S.C. 103 as being unpatentable over Howie, David. WIPO Publication WO 2019/033090 A1 (included as a PDF with this Office Action) in view of Wang, et al., Pre-Grant Publication No. 2021/0133713 A1 and in further view of Taveira, Patent No. 9,552,736 B2.
Regarding Claim 24, the combination of Howie and Wang teaches:
the apparatus of claim 21
Howie and Wang, however, does not appear to specify:
wherein the control unit blocks issuance of any digital token associated with prohibited altitude bands or national airspace restrictions
Taveira teaches:
wherein the control unit blocks issuance of any digital token associated with prohibited altitude bands or national airspace restrictions (see Column 5, line 63-Column 7, line 54 in which drone operators pay for access to specified airspaces but the access transactions are not allowed if the airspace is restricted, or they are charged extra for entering airspace that is restricted)
It would be obvious to one of ordinary skill in the art to combine Taveira with Howie and Wang because Howie already teaches air rights transfer using digital tokens and checks for availability and compliance for the transfer, but does not specify basing any decision on restricted or prohibited airspace, and doing so would prevent transactions for unavailable or restricted airspace from going through, which therefore would prevent a need to undo transactions or cause those with purchased air rights to enter restricted areas.
**CLAIMS 4-20 have no prior art rejection, but they have standing 101 rejections. Further, claim 4 likely has a path to eligibility with a couple amendments, while claim 14 is much farther from being patent eligible, and the examiner suggests amending claim 14 to mirror claim 4.**
Conclusion
The following prior art references was not relied upon in this office action but is considered pertinent to the claimed invention:
Uetaki, Ryohei. Pre-Grant Publication No. 2021/0280068 A1
Amaitis, et al. Pre-Grant Publication No. 2006/0031082 A1- teaches a system for intelligent assignment of tasks for optimum workflow and efficiency in a work setting, the tasks assigned to both human workers and robots.
Reber, et al. Pre-Grant Publication No. 2019/0147553 A1- teaches warehouse workflow optimization through task assignments to various entities in the warehouse.
Howie, et al., Pre-Grant Publication No. 2020/0175623 A1
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to Luis A. Brown whose telephone number is 571.270.1394. The Examiner can normally be reached on M-F 8:30am-4:30pm EST. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, JESSICA LEMIEUX can be reached at 571.270.3445.
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/LUIS A BROWN/Primary Examiner, Art Unit 3626