DETAILED ACTION
The following NON-FINAL Office action is in response to Application filed on September 24, 2024 for application 18850390
Acknowledgements
Claims 23 has been canceled.
Claims 1-9 are pending.
Claims 1-9 have been examined.
Notice of Pre-AIA or AIA Status
The present application, filed on or after December 13, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Claims 10-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species B, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/22/2026.
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-9 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
The claims recite facilitating creation of assets between a user and an individual/objective which is an abstract idea. Specifically, the claim recites “receiving images and documents associated with the art asset; digitizing the images and documents; converting a first format of digitized images and documents to a second format to generate a digital representation of the images and documents, wherein the first format is incompatible with one or more data structures being used by a platform cryptographic asset; generating based on a digital representation of the images and documents, the platform cryptographic asset associated with an authenticity of the art asset; authenticating the platform cryptographic asset using a proof-of-work consensus mechanism or a proof-of-stake consensus mechanism; generating, based on the authenticating being successful, a title cryptographic asset associated an ownership of the art asset and a copyright cryptographic asset associated with a copyright of the art asset that includes royalty rights and reproduction rights; generating, based on the platform cryptographic asset and the title cryptographic asset, a contract for a transaction involving the art asset between the seller and a buyer; verifying a transfer of funds from a buyer to a seller; and transferring the title cryptographic asset to a digital wallet associated with the buyer.” which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test, classified under “commercial or legal interactions”, specifically “business relations” as part of a transaction (See MPEP 2106, specifically 2106.04(a)) because – for example, in this case, the claims involve a series of steps for protecting and managing art data and art assets by facilitating the generation of non-interchangeable cryptographic assets (e.g., NFTs) that represent physical items and enabling their transactions as digital assets. Accordingly, the claim recites an abstract idea (See MPEP 2106, specifically 2106.04(a)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional elements of the claims such as the use of a processor, a computing system, and a smart contract merely involves using a computer as a tool to perform an abstract idea and/or generally links the use of a judicial exception to a particular technological environment. The use of a processor, a computing system, and a smart contract to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment] does not render the claim patent eligible because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Specifically, a processor, a computing system, and smart contract perform the steps or functions of “receiving images and documents associated with the art asset; digitizing the images and documents; converting a first format of digitized images and documents to a second format to generate a digital representation of the images and documents, wherein the first format is incompatible with one or more data structures being used by a platform cryptographic asset; generating based on a digital representation of the images and documents, the platform cryptographic asset associated with an authenticity of the art asset; authenticating the platform cryptographic asset using a proof-of-work consensus mechanism or a proof-of-stake consensus mechanism; generating, based on the authenticating being successful, a title cryptographic asset associated an ownership of the art asset and a copyright cryptographic asset associated with a copyright of the art asset that includes royalty rights and reproduction rights; generating, based on the platform cryptographic asset and the title cryptographic asset, a contract for a transaction involving the art asset between the seller and a buyer; verifying a transfer of funds from a buyer to a seller; and transferring the title cryptographic asset to a digital wallet associated with the buyer”. The additional claim elements are not indicative of integration into a practical application, because the claims do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106, specifically 2106.05), the additional elements of the processor, a computing system, and a smart contract, to perform the steps amounts to no more than using the processor, a computing system, and a smart contract to automate and/or implement the abstract idea of facilitating creation of assets. As discussed above, taking the claim elements separately the processor, a computing system, and a smart contract perform the steps of Claim 1. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of facilitating creation of assets. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of the processor, a computing system, and a smart contract to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims further describe the characteristics of the assets being generated and details regarding validating the assets further elaborate on the abstract idea of facilitating creation of assets. The dependent claims recite additional elements such as “proof-of- work consensus mechanism and the proof-of-stake consensus mechanism”, however, they do not integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
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 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 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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Code et al. (US 2017/0214522 A1) in view of Maj et al. (US 2022/0006642 A1) and in further view of Gaur et al. (US 2021/0350458 A1)
Regarding Claim 1, Code discloses: a method of protecting an art asset, implemented on a processor, the method comprising:
receiving, from at least a computing system associated with a seller of the art asset, images and documents associated with the art asset; (¶0016, ¶0019, ¶0021)
digitizing the images and documents; (¶0020 “the units of tokenized value embedded with the tokenized digital media file may function as a reward to incentivize transactional commerce”, ¶0021)
converting a first format of digitized images and documents to a second format to generate a digital representation of the images and documents, wherein the first format is incompatible with one or more data structures being used by a platform cryptographic asset; (¶0014)
generating, based on a digital representation of the images and documents, the platform cryptographic asset associated with an authenticity of the art asset; (¶0023-¶0024)
generating, based on the platform cryptographic asset and the title cryptographic asset, a smart contract for a transaction involving the art asset between the seller and a buyer; (¶0014, ¶0020)
verifying a transfer of funds from a buyer to a seller; and (¶0026, ¶0031 “Upon confirmation of the transactional payment the tokenized digital media can be transferred to a user profile or electronic wallet as a reward for the transaction)
Code does not disclose: generating, based on the authenticating being successful, a title cryptographic asset associated an ownership of the art asset and a copyright cryptographic asset associated with a copyright of the art asset that includes royalty rights and reproduction rights and transferring the title cryptographic asset to a digital wallet associated with the buyer.
Maj however discloses:
generating, based on the authenticating being successful, a title cryptographic asset associated an ownership of the art asset and a copyright cryptographic asset associated with a copyright of the art asset that includes royalty rights and reproduction rights (¶0054, ¶0058 “the new token is marked as a derivative”, ¶0063, ¶0084, ¶0095 “Tokens that are updated versions of the original master token or marked as derivatives to be included as part of the group with separate attribute fields are designated” )
transferring the title cryptographic asset to a digital wallet associated with the buyer (¶0047, ¶0058)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Code to include “generating, based on the authenticating being successful, a title cryptographic asset associated an ownership of the art asset and a copyright cryptographic asset associated with a copyright of the art asset that includes royalty rights and reproduction rights and transferring the title cryptographic asset to a digital wallet associated with the buyer”, as disclosed in Maj, in order to provide a platform to simplify and ensure proper execution of data that that seamlessly binds metadata and content on a decentralized platform that enhances engagement and ownership rights (see Maj ¶0009).
The combination of Code and Maj does not disclose: authenticating the platform cryptographic asset using a proof-of-work consensus mechanism or a proof-of-stake consensus mechanism.
Gaur however discloses: authenticating the platform cryptographic asset using a proof-of-work consensus mechanism or a proof-of-stake consensus mechanism (¶0083)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Code to include “authenticating the platform cryptographic asset using a proof-of-work consensus mechanism or a proof-of-stake consensus mechanism”, as disclosed in Gaur, in order to provide a system to transfer, via a blockchain, a digital value from a sender to a receiver (see Gaur abstract).
Regarding Claim 2, The combination of Code, Maj and Gaur disclose the invention as above.
Maj further discloses: rescinding, subsequent to transferring the title cryptographic asset, a validity of the platform cryptographic asset (¶0059)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Code to include “rescinding, subsequent to transferring the title cryptographic asset, a validity of the platform cryptographic asset”, as disclosed in Maj, in order to provide a platform to simplify and ensure proper execution of data that that seamlessly binds metadata and content on a decentralized platform that enhances engagement and ownership rights (see Maj ¶0009).
Regarding Claim 3, The combination of Code, Maj and Gaur disclose the invention as above.
Gaur further discloses: selecting, based on computational resources associated with the processor, the proof-of- work consensus mechanism or the proof-of-stake consensus mechanism (¶0083)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Code to include “selecting, based on computational resources associated with the processor, the proof-of- work consensus mechanism or the proof-of-stake consensus mechanism”, as disclosed in Gaur, in order to provide a system to transfer, via a blockchain, a digital value from a sender to a receiver (see Gaur abstract).
Regarding Claim 4, The combination of Code, Maj and Gaur disclose the invention as above.
while Code discloses: validate the copyright cryptographic asset (¶0025).
Code does not disclose: receiving, from an owner of the title cryptographic asset, an indication of a creation of a derivative work based on the art asset and and in response to the copyright cryptographic asset being valid, create a new title cryptographic asset associated with ownership data of the derivative work and a new smart contract associated with one or more transactions involving the derivative work.
Maj however discloses:
receiving, from an owner of the title cryptographic asset, an indication of a creation of a derivative work based on the art asset and (¶0059, ¶0096)
in response to the copyright cryptographic asset being valid, create a new title cryptographic asset associated with ownership data of the derivative work and a new smart contract associated with one or more transactions involving the derivative work (¶0059, ¶0064, ¶0068, ¶0096)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Code to include “receiving, from an owner of the title cryptographic asset, an indication of a creation of a derivative work based on the art asset and and in response to the copyright cryptographic asset being valid, create a new title cryptographic asset associated with ownership data of the derivative work and a new smart contract associated with one or more transactions involving the derivative work”, as disclosed in Maj, in order to provide a platform to simplify and ensure proper execution of data that that seamlessly binds metadata and content on a decentralized platform that enhances engagement and ownership rights (see Maj ¶0009).
Regarding Claim 5, The combination of Code, Maj and Gaur disclose the invention as above.
while Code discloses: wherein the copyright cryptographic asset and wherein the platform cryptographic asset is a non-transferable asset. (¶0017, ¶0019).
Code does not disclose: the title cryptographic asset are transferable assets.
Maj however discloses: the title cryptographic asset are transferable assets (¶0058)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Code to include “the title cryptographic asset are transferable assets”, as disclosed in Maj, in order to provide a platform to simplify and ensure proper execution of data that that seamlessly binds metadata and content on a decentralized platform that enhances engagement and ownership rights (see Maj ¶0009).
Claims 6 and 8 is rejected under 35 U.S.C. 103 as being unpatentable over Code in view of Maj in view of Gaur and in further view of Liberatori, Jr. (US 9,575,724 B1)
Regarding Claim 6, the combination of Code in view of Maj in view of Gaur does not disclose: generating, in response to the art asset being a physical art asset, an identification tag.
Liberatori, Jr. however discloses: generating, in response to the art asset being a physical art asset, an identification tag (abstract, Col. 2 lines 25-34, Col. 4 lines 27-30)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Code to include “generating, in response to the art asset being a physical art asset, an identification tag”, as disclosed in Maj, in order to provide a platform to simplify and ensure proper execution of data that that seamlessly binds metadata and content on a decentralized platform that enhances engagement and ownership rights (see Maj ¶0009).
Regarding Claim 8, the combination of Code in view of Maj in view of Gaur does not disclose: wherein the identification tag comprises a radio frequency identification (RFID) near-field communication (NFC) tag, or an RFID ultra- high frequency (UHF) tag.
Liberatori, Jr. however discloses: wherein the identification tag comprises a radio frequency identification (RFID) near-field communication (NFC) tag, or an RFID ultra- high frequency (UHF) tag (abstract, Col. 2 lines 25-52, Col. 4 lines 27-30)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Code to include “wherein the identification tag comprises a radio frequency identification (RFID) near-field communication (NFC) tag, or an RFID ultra- high frequency (UHF) tag”, as disclosed in Liberatori, Jr, in order to provide a verification system a collectible object and the use of unclonable RFID tagging in combination with an electronic clearinghouse facility to verify that a collectible object is a unique item (see Liberatori, Jr. Col. 1 lines 14-19).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Code in view of Maj in view of Gaur in view of Liberatori, Jr. and in further view of Harrison (US 2021/0217001 A1)
Regarding Claim 7, the combination of Code in view of Maj in view of Gaur in view of Liberatori, Jr. does not disclose: wherein the identification tag is attached to the physical art asset, and wherein the identification tag is activated prior to the generation of cryptographic assets associated with the art asset, thereby ensuring the physical art asset can be tracked if the generation of one at least one cryptographic asset is delayed.
Harrison however discloses: wherein the identification tag is attached to the physical art asset, and wherein the identification tag is activated prior to the generation of cryptographic assets associated with the art asset, thereby ensuring the physical art asset can be tracked if the generation of one at least one cryptographic asset is delayed (¶0080, ¶0093)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Code to include “wherein the identification tag comprises a radio frequency identification (RFID) near-field communication (NFC) tag, or an RFID ultra- high frequency (UHF) tag”, as disclosed in Harrison, in order to provide a blockchain asset management system to allow users to determine how and when asset token evaluation is performed (see Harrison abstract).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Code in view of Maj in view of Gaur and in view of Liberatori, Jr. and in further view of YANTIS et al. (US 2022/0058630 A1)
Regarding Claim 9, the combination of Code in view of Maj in view of Gaur and in view of Liberatori, Jr. does not disclose: wherein the platform cryptographic asset comprises one or more of (i) a gallery cryptographic asset that is configured to display the at least one image in a digital wallet, (ii) a mandate cryptographic asset that is issued by an owner of the art asset to a dealer or seller agent for consignment purposes, or (iii) a due diligence cryptographic asset configured to provide an initial authentication or validation of the at least one document or the at least one image.
YANTIS however discloses: wherein the platform cryptographic asset comprises one or more of (i) a gallery cryptographic asset that is configured to display the at least one image in a digital wallet, (ii) a mandate cryptographic asset that is issued by an owner of the art asset to a dealer or seller agent for consignment purposes, or (iii) a due diligence cryptographic asset configured to provide an initial authentication or validation of the at least one document or the at least one image (¶0014, ¶0028, ¶0053, ¶0072)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Code to include “wherein the identification tag comprises a radio frequency identification (RFID) near-field communication (NFC) tag, or an RFID ultra- high frequency (UHF) tag”, as disclosed in YANTIS, in order to provide a platform that effectuates transactions involving tokens that correspond to instances of linkage among physical and/or digital items and corresponding virtual representations of the physical and/or digital items (see YANTIS ¶0002).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZEHRA RAZA whose telephone number is (571)272-8128. The examiner can normally be reached 10AM-6:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at (571) 272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ZEHRA RAZA/Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
Prosecution Insights