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 .
Priority
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Status of Claims
The reply filed 06/16/2026 is acknowledged. Claims 1, 6, 9, 12, 15-16, 18, and 20 have been amended. Claim 11 was previously canceled. Claims 1-10 and 12-21 are pending and presented for examination.
Response to Arguments
Applicant’s amendment to claim 9, filed 06/16/2026, has overcome the claim objection set forth in the Non-Final Rejection 12/16/2025. Therefore, the claim objection to claim 9 has been withdrawn.
Applicant's arguments regarding the 35 U.S.C. 101 rejection of claims 1-10 and 12-21, filed 06/16/2026, have been fully considered, but they are not persuasive.
In response to the Applicant’s remarks that the “secure bundling of different rights into different tokens for the same physical object” is a specific technical solution to a technical problem on pgs. 3-5, the bundling of said rights is no more than establishing a contractual relationship between the different rights and the physical object. Such “bundling” does not improve the functioning of a computer, or to any other technology or technical field for the following reasons: 1) managing rights associated with a physical object is not a technology or technical field, therefore, combining different rights for the physical object is not an improvement on a technology or technical field, 2) associating a right to a token for a physical object is not a technical implementation, therefore, it cannot improve the functioning of a computer, or to any other technology or technical field, and 3) “digital handling of the rights via the specific tokens” is not a technical solution to a technical problem because “digital handling” is merely using a computer to handle the rights associated with the physical object, which is not an improvement on the computer or technology itself. Furthermore, Applicant’s remarks regarding cases Enfish, Visual Memory, and Bascom are examples of claims that improve technology. The instant claims do not recite the same or similar claim limitations as the cases, and do not pertain to the same subject matter and/or technology/technical field. Therefore, the aforementioned cases are not relevant to the instant claimed invention and the remarks associated with the cases cannot be persuasive. One cannot draw the same conclusion if the facts of each case are different.
Applicant’s amendments, filed 06/16/2026, to claim 1 have overcome the prior art rejections. Therefore, the 35 U.S.C. 103 rejection of claims 1-10 and 12-21, set forth in the Non-Final Rejection 12/16/2025, has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Endress et al. U.S. 2020/0259653.
In response to the Applicant’s remarks that Yantis et al. U.S. 20210248594 does not disclose attaching two tokens associated with two rights on a same object on pgs. 6-7, under the broadest, most reasonable interpretation, “the physical object” can reasonably encompass all instances of the physical object. In other words, the claim language does not limit “the physical object” to only one or singular object, and therefore, interpreting “the physical object” to be a category or “type” of physical object would be reasonable. Yantis discloses an item is one of a physical good, i.e. physical object [0007]. Each item may have several instances that represent how many are available for transaction [0006]. Even though there may be multiple instances of the item, it is still the item itself, i.e. the physical object, that can be associated with multiple tokens. Each token may represent an instance of the item [0708], however, the instances, collectively, are still representative of the item, wherein the item is one of a physical good. Therefore, the broadest, most reasonable interpretation of the claim language allows for the physical object, or item, to encompass all of the instances of the physical object.
In response to Applicant's argument that Stoyanov et al. U.S. 20220270150 is nonanalogous art on pg. 8, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the remarks relied on the comparison between Stoyanov and Yantis, the primary art reference, instead of the inventor. Stoyanov is in the field of the inventor’s endeavor because it is also concerned with digitally managing rights of an item.
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 1-10 and 12-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1-10 and 12-21 fall into at least one of the four categories of statutory subject matter. The eligibility analysis proceeds to Step 2A.1.
Step 2A.1:
The limitations of independent claim 1 have been denoted with letters by the Examiner for easy reference. The judicial exceptions recited in claim 1 are identified in bold below:
A method for managing rights associated with a physical object, the method comprising:
creating a first digital token associated with a first right to the physical object, the first digital token being stored and authenticated by virtue of a first blockchain protocol,
creating a second digital token associated with a second right associated with the object, the second digital token being different from the first digital token, the second digital token being stored and authenticated by virtue of a second blockchain protocol,
creating a smart contract linking the rights on the first and second digital tokens, wherein the smart contract requires that the ownership right on one of the first and second digital tokens cannot be transferred without the ownership right on the other of the first and second digital tokens.
Under the broadest reasonable interpretation, bolded recitations in A-D recite limitations that are reasonably categorized under certain methods of organizing human activity and mental processes. Creating and associating digital tokens with rights to a physical object and linking the tokens such that they cannot be transferred without the other can be grouped under commercial or legal interactions in the form of agreements in the form of contracts because the process is analogous to creating a contractual relationship between the tokens, rights, and the physical object. Authenticating the tokens by a protocol can be grouped under mental processes, such as judgment, because it can be practically performed in the human mind or by a human using a pen and paper. Therefore, claim 1 recites abstract ideas that can be reasonably categorized under multiple groups.
Claim 1 recites at least one abstract idea. The eligibility analysis proceeds to Step 2A.2.
Step 2A.2:
The judicial exception is not integrated into a practical application. In particular, claim 1 recites the additional element(s) not in bold above.
The recitations directed to the tokens being stored in B-C are considered insignificant extra-solution activities because they do not impose any meaningful limits on how the token(s) are created.
The “blockchain” in B-C has been generically recited and amounts to no more than general usage of a data structure.
Reciting “smart” in D is generically linking the use of the judicial exception to a particular technological environment or field of use MPEP 2106.05(h). Limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.
When the additional elements are considered individually and as an ordered combination with the abstract idea(s), claim 1 as a whole amounts to no more than mere steps to implement an abstract idea on a data structure. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Claim 1 does not recite additional elements that integrate the judicial exception into a practical application. The eligibility analysis proceeds to Step 2B.
Step 2B:
The additional elements, both individually and as an ordered combination, do not amount to significantly more than the judicial exception because the outcome of the considerations at Step 2B will be the same when considerations from Step 2A.2 are re-evaluated. Furthermore, storing information (limitations B-C) is considered by the courts to be well-understood, routine, and conventional activity (see MPEP 2106.05(d)(II), “storing and retrieving information in memory,” Versata).
Claim 1 is not patent eligible.
Dependent Claims
Claims 2, 5-10, 15-17, 19-21 merely provide further context for the blockchain protocols, the tokens, the digital cryptoasset wallet, the public/private key or code associated with the public/private key, the physical object, and/or the rights without reciting any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claim from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Claim 3 recites creating a third digital token, the third digital token comprising information contained in the first and second digital token, and claim 18 provides further context on such information. The limitations elaborate on the abstract idea(s) without reciting any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claim from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Claim 4 recites process steps of transferring the ownership right(s). The claim recites another abstract idea: sales activities under commercial or legal interactions (certain methods of organizing human activity). Transferring ownership rights is analogous to selling the ownership rights, i.e. a sales activity. The claim does not recite any new additional elements. When the limitation is considered individually and as a whole in combination with the independent claim from which it depends, the claim does not recite additional elements that amount to significantly more than the judicial exception.
Claims 12-14 recite additional elements of “A device…the device comprising hardware and/or software elements,” “A non-transitory computer program product comprising program code instructions recorded on a computer-readable medium…when program is run on a computer,” and “a computer-readable data recording medium on which is recorded a computer program comprising the program code instructions.” These additional elements have been recited at a high-level of generality such that they amount to no more than generic computing components. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea(s), the claims amount to no more than mere software instructions to implement an abstract idea(s) on a computer, or merely uses a computer as a tool to perform an abstract idea. These 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.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea(s) into a patent eligible application such that the abstract idea amounts to significantly more than the abstract idea 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, claims 1-10 and 12-21 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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.
Claims 1-10 and 12-21 are rejected under 35 U.S.C. 103 as being unpatentable over Yantis et al. U.S. 20210248594 (herein as “Yantis”), in view of Endress et al. U.S. 2020/0259653 (herein as “Endress”), and further in view of Stoyanov et al. U.S. 20220270150 (herein as “Stoyanov”).
Re Claim 1, Yantis discloses a method for managing rights associated with a physical object:
creating a first digital token associated with a first right to the physical object ([0838] – “generating a set of tokens based on the virtual representation of the item,” [0007] – “the item is one of a…physical good,” [0955] – “In the case of a non-fungible token, the first user to transact for the token is the owner of the token,” i.e. “a first right to the object,”), the first digital token being stored and authenticated by virtue of a first blockchain protocol [0838] – “storing the tokens and associated metadata in a cryptographically secure distributed ledger,” [0844] – “the distributed ledger is a blockchain,” “by storing tokens on a distributed ledger, the status of that token can be verified at any time by querying the ledger and trust that it is correct,”
creating a second digital token associated with a second right associated with the physical object, […] the second digital token being stored and authenticated by virtue of a second blockchain protocol ([0708] – “a set of tokens that respectively correspond to a respective instance of the item,” thereby suggesting an item, i.e. “physical object,” is associated with more than one token, [0838] – “storing the tokens and associated metadata in a cryptographically secure distributed ledger,” [0844] – “the distributed ledger is a blockchain”),
[…] linking the rights on the first and second digital tokens […] [0749] – “a linking system configured to generate a one-to-at-least-one link between the second digital token…and the first digital token.”
However, Yantis does not expressly disclose
the second digital token being different from the first digital token, the second right being different from the first right.
Endress discloses methods and systems for token-based anchoring of a physical object in a distributed ledger environment.
the second digital token being different from the first digital token, the second right being different from the first right (Fig. 9 – asset token, i.e. first digital token, and utility token, i.e. second digital token, are different, [0075] – asset token includes identity of the physical object and the owner of the token, i.e. first right, [0077] – “”the asset token format is particularly suitable and intended to relate to a token representing an asset, such as a physical object, as such, while a utility token format is particularly suitable and intended to relate to a token representing an action or process,” i.e. second right, [0099] – “conversion of the asset token into a utility token, or in other words, generating a copy of the asset token,” i.e. both tokens are associated with the same physical object).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Yantis’ tokens with the teachings of the second digital token being different from the first digital token, the second right being different from the first right in Endress. One would be motivated to make the combination to trace high value products and intended use of the products, thereby limiting counterfeiting and providing supply chain and work flow integrity Endress, [0003-4].
However, Yantis in view of Endress do not explicitly teach the following limitations in italics
creating a smart contract linking the rights on the first and second digital tokens wherein the smart contract requires that the ownership right on one of the first and second digital tokens cannot be transferred without the ownership right on the other of the first and second digital tokens.
Examiner notes that “wherein the smart contract requires that the ownership right on one of the first and second digital tokens cannot be transferred without the ownership right on the other of the first and second digital tokens” is merely content of information, i.e. nonfunctional descriptive language MPEP 2111.05. The content of the smart contract does not meaningfully limit how the smart contract is created to link the rights. Furthermore, claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure MPEP 2111.04. The wherein clause does not recite any active steps to be performed in the method claim. Therefore, it cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided.
Stoyanov discloses systems and methods to support custom bundling of virtual items within an online game. Specifically, Stoyanov discloses
creating a smart contract ([0043] – “asset Ax may be created through a function of smart contract 51. Asset Ax may represent ownership rights of a particular custom item bundle,” [0036] – “generate instructions to form digital assets (e.g., as created by bundling component 114) as smart contracts”) linking the rights on the first and second digital tokens wherein the smart contract requires that the ownership right on one of the first and second digital tokens cannot be transferred without the ownership right on the other of the first and second digital tokens [0030] – “Bundling component 114 may be configured to bundle virtual items into custom item bundles,” i.e. “linking,” “a particular custom item bundle may include ownership rights of the virtual items that are included, such that exchanging the particular custom item bundle to another user implies that the included virtual items are also exchanged.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Yantis in view of Endress’ linking the rights on the first and second digital tokens with the teachings of creating a smart contract linking the rights on the first and second digital tokens wherein the smart contract requires that the ownership right on one of the first and second digital tokens cannot be transferred without the ownership right on the other of the first and second digital tokens in Stoyanov. One would be motivated to make this combination because 1) smart contracts are known in the blockchain art to allow for predefining of conditions to facilitate automated execution of transactions, thereby improving transaction speed and efficiency and to 2) allow users to customize bundling of certain items to unlock further value in the custom bundle Stoyanov, [0028].
Re Claim 2, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 1, and Yantis in view of Endress and Stoyanov further teach wherein
the first blockchain protocol and second blockchain protocol are of a same type, or
the first blockchain protocol and second blockchain protocol are a same blockchain protocol Yantis, [0844].
Re Claim 3, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 1, and Yantis in view of Endress and Stoyanov further teach wherein the smart contract involves creating, by virtue of a blockchain protocol, a third digital token Yantis, [0838] – “generating a set of tokens based on the virtual representation of the item” including information comprising:
at least one piece of information contained in the first digital token Yantis, [0838] – “The virtual representation of the item may include information that identifies the item…information relating to the item…” and
at least one piece of information contained in the second digital token (Yantis, [0838] – the virtual representation of the item may also include “code that may be used to facilitate or verify transactions involving the item”).
Re Claim 4, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 1, and Yantis in view of Endress and Stoyanov further teach wherein the smart contract is configured so that:
transferring the ownership right on the first digital token involves transferring the ownership right on the second digital token Stoyanov, [0030] – “Bundling component 114 may be configured to bundle virtual items into custom item bundles,” “a particular custom item bundle may include ownership rights of the virtual items that are included, such that exchanging the particular custom item bundle to another user implies that the included virtual items are also exchanged” and/or transferring the ownership right on the third digital token, and/or
transferring the ownership right on the second digital token involves transferring the ownership right on the first digital token and/or transferring the ownership right on the third digital token, and/or
transferring the ownership right on the third digital token involves transferring the ownership right on the first digital token and/or transferring the ownership right on the second digital token.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Yantis in view of Endress’ tokenization platform with the teachings of transferring the ownership right on the first digital token involves transferring the ownership right on the second digital token in Stoyanov. One would be motivated to make this combination to allow users to customize bundling of certain items to unlock further value in the custom bundle Stoyanov, [0028].
Under the broadest, most reasonable interpretation, “and/or” is interpreted to not require the “and.” Therefore, the recited process steps are merely alternative options.
Re Claim 5, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 1, and Yantis in view of Endress and Stoyanov further teach wherein the first digital token and/or second digital token are associated with a digital cryptoasset wallet or with digital cryptoasset wallets Yantis, [0841].
Re Claim 6, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 5, and Yantis in view of Endress and Stoyanov further teach wherein the digital cryptoasset wallet or one of the digital cryptoasset wallets is associated with:
a public key Yantis, [0846] – “Each account may be assigned a public key,” or
a code associated with the public key,
the public key or code being written:
on the physical object, or
on a tangible medium sold with the physical object Yantis, [0850], or
in a digital document.
Re Claim 7, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 6, and Yantis in view of Endress and Stoyanov further teach wherein the public key or the code associated with the public key is written by printing or by engraving or by adhesively bonding a label Yantis, [0850] – “the public key…may also be provided in the physical media.”
Re Claim 8, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 6, and Yantis in view of Endress and Stoyanov further teach wherein the code associated with the public key is a machine-readable code (Yantis, [0850] – “the token may be encoded into a QR-code or barcode…the public key of the party used to digitally sign the token…may also be provided in the physical media,” therefore, the QR-code is associated with the public key).
Re Claim 9, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 5, Yantis in view of Endress and Stoyanov further teach wherein the digital cryptoasset wallet or one of the digital cryptoasset wallets is associated with:
a private key Yantis, [0846], or
a code associated with the private key,
the private key or code associated with the private key being written:
on a tangible medium annexed to the physical object, and/or
in a digital document (Yantis, [0846] – “Each account may be assigned…a private key…the address of an account…may be stored in the distributed ledger.” The address of the account is analogous to a code associated with the private key since the account is associated with the private key. Storing in a distributed ledger is analogous to writing in a digital document).
Re Claim 10, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 9, and Yantis in view of Endress and Stoyanov further teach wherein the code associated with the private key is a machine-readable code (Yantis, [0846] – the address of an account “may be verified as corresponding to valid accounts using the distributed ledger,” therefore, it is capable of being processed by a machine, or computer).
Re Claim 12, Yantis in view of Endress and Stoyanov teach a device allowing rights associated with a physical object to be managed, and Yantis in view of Endress and Stoyanov further teach the device comprising hardware and/or software elements implementing the method as claimed in claim 1 (Yantis, Fig. 1. See claim 1 above).
Re Claim 13, Yantis in view of Endress and Stoyanov teach a non-transitory computer program product comprising program code instructions recorded on a computer-readable medium for implementing the method as claimed in claim 1 when the program is run on a computer (Yantis, [0992]. See claim 1 above).
Re Claim 14, Yantis in view of Endress and Stoyanov teach the non-transitory computer program product as claimed in claim 13, and Yantis in view of Endress and Stoyanov further teach which includes a computer-readable data recording medium on which is recorded a computer program comprising the program code instructions (Yantis, [0992]. See claim 1 above).
Re Claim 15, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 1, and Yantis in view of Endress and Stoyanov further teach wherein the physical object is a timepiece or an item of jewelry Yantis, [0943].
Re Claim 16, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 1, and Yantis in view of Endress and Stoyanov further teach wherein the first right is an ownership right to the physical object Yantis, [0837] and the second right is a right of access to digital content (Yantis, [0838] – virtual representation of the item can include video, virtual reality data, etc.).
Re Claim 17, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 1, and Yantis in view of Endress and Stoyanov further teach wherein the second digital token is a non-fungible digital token Yantis, [0212].
Re Claim 18, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 3, and Yantis in view of Endress and Stoyanov further teach wherein
the at least one piece of information contained in the first digital token is information on the physical object and/or a serial number of the physical object Yantis, [0838] – “a serial number” and/or an identifier of the transaction that created the first digital token and/or a date of activation of the certificate of authenticity and/or a date of sale of the product and/or an identifier of the first digital token, and
the at least one piece of information contained in the second digital token is an identifier of the second digital token Yantis, [0884] – “a unique identifier for each respective token corresponding to the virtual representation.”
Re Claim 19, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 5, and Yantis in view of Endress and Stoyanov further teach wherein the first digital token and/or second digital token are associated with a same digital cryptoasset wallet Yantis, [0841].
Re Claim 20, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 6, and Yantis in view of Endress and Stoyanov further teach wherein the physical object is a timepiece Yantis, [0950] – “watches” and the public key or code is written on a barrel or a ratchet of a barrel of the timepiece Yantis, [0850] – “public key…may also be provided in the physical media.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute Yantis’ physical media with a barrel or a ratchet of a barrel of the timepiece. The modification is a simple substitution of one known element, i.e. barrel or a ratchet of a barrel of the timepiece, for another, i.e. physical media, to obtain predictable results.
Re Claim 21, Yantis in view of Endress and Stoyanov teach the managing method as claimed in claim 6, and Yantis in view of Endress and Stoyanov further teach wherein the public key or code is written in a digital document which is a computer file or a message (Yantis, [0954] – “the player may scan the ticket (e.g., the QR-code)…the ticket may appear in the player’s digital wallet,” i.e. code is written in a digital document).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE DANG whose telephone number is (571)270-5880. The examiner can normally be reached M-F 9-5pm MT.
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/CHRISTINE DANG/Examiner, Art Unit 3698
