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 .
Election/Restriction
Applicant has elected Invention I, Claims 1-10 for prosecution on the merits, without traverse, in its Response to Restriction Requirement submitted on July 9, 2026. Applicant reserves the right to file one or more divisional applications to pursue the non-elected subject matter.
Status of Application
This is a non-final rejection in response to Election / Restriction Requirement relating to U.S. Patent Application No. 18/856,350, filed on October 11, 2024, which is a National Stage Application, filed under 35 U.S.C. 371, of International Patent Application No. PCT/US2023/017911, filed on April 7, 2023, which claims the benefit of priority to U.S. Application No. 63/328,687, filed April 7, 2022. Claims 1-10 are pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statement submitted by the Applicant on October 11, 2024 is in compliance with the provisions of 37 CFR 1.97 and have been considered by the examiner.
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 are rejected pursuant to 35 USC § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 - Statutory Class
Claims 1-10 are directed to an apparatus. Therefore, on its face, each of Claims 1-10 is directed to a statutory class of invention.
Step 2A, Prong 1 – Abstract Idea
Claim 1 recites receive a request to generate an ownership interest in an asset, the request comprising elements of first data that characterize the ownership interest, receive elements of second data that characterize the ownership interest, based on a determined consistency between the elements of first and second data, generate and record information characterizing the ownership interest. The claim recites generating and recording an ownership interest in an asset, which amounts to commercial interactions falling under “Certain Methods of Organizing Human Activity” in MPEP 2106.04(a).
Step 2A, Prong 2 – Practical Application
Claim 1 recites a communications interface, a memory storing instructions, at least one processor coupled to the communications interface and to the memory, a device, a non-fungible token, a computing system, a distributed ledger and an application program. The additional elements are recited at a high level of generality and are being used as tools to implement the abstract idea, generally linking the abstract idea to blockchain technology. They do not integrate the abstract idea into a practical application. They do not provide a technical improvement such as an improvement to the functioning of a computer or to technology or to a technical field because they only manipulate data. The claims do not invoke a particular machine as our guidance is clear that a generic computer is not the particular machine envisioned, they do not transform matter as they only manipulate data which is not matter.
Step 2B – Significantly more
As set forth in the discussion in Step 2A, Prong 2, above, the additional elements are recited at a high level of generality and are used as tools to implement the abstract idea, generally linking the abstract idea to blockchain technology. They do not integrate the abstract idea into a practical application or add significantly more to the abstract idea.
Dependent claims
Claim 2 (the asset comprises a tangible asset or a digital asset, and the elements of first data characterize the ownership interest of a user associated with the device in the at least one of the tangible asset or the digital asset), Claim 3 (the tangible asset comprises at least one of a parcel of real property, a physical unit of gold, or a tangible representation of at least one of an intangible asset or a digital asset), Claim 4 (the computing system is associated with a third-party administrator, the third-party administrator maintaining the tangible asset in accordance with an agreement between the user and the third-party administrator; the elements of first data comprise documentary data that characterize the ownership interest of the user in the tangible asset; and the elements of second data comprise asset data that characterizes the tangible asset and agreement data that characterizes the agreement), Claim 5 (obtain a digital representation of the tangible asset, the digital representation characterizing a current physical condition of the tangible asset; and generate a hash value based on at least a portion of the digital representation of the tangible asset, and perform the operations that generate the non-fungible token based on the hash value, the non-fungible token comprising the hash value), Claim 6 (generate linking data that associates the non-fungible token and the digital representation; and perform the operations that generate the non-fungible token based on the hash value and the linking data, the non-fungible token comprising the hash value and the linking data), Claim 7 (perform operations that transmit, via the communications interface, the non-fungible token and the digital representation of the tangible asset to the device, the non-fungible token and the digital representation of the tangible asset being transmitted via a programmatic interface of the executed application program), Claim 8 (the digital representation comprises a three-dimensional graphical representation of the tangible asset; and the executed application program causes the device is configured to present the three-dimensional graphical representation of the tangible asset within an interactive digital environment), Claim 9 (the information characterizing the non-fungible token comprises an alphanumeric identifier of the non-fungible token) and Claim 10 (receive a request to redeem the non-fungible token from the device via the communications interface, the request comprising the non-fungible token; based on a verified ownership interest in the asset and on a determined availability of the non-fungible token, generate a hash value representative of at least a portion of the non-fungible token, and perform operations that record the hash value and information characterizing the non-fungible token within an additional element of a distributed ledger; and perform operations that provision encrypted data to the computing system, the computing system being configured to decrypt the encrypted data and perform operations that trigger a release of documentation data associated with the ownership interest) contain additional elements (underlined above) that are recited at a high level of generality and are used to implement the abstract idea and/or further define and merely add specificity to the abstract idea. Thus, the dependent claims also fail to add significantly more to the abstract idea.
As such, Claims 1-10 are not patent eligible.
Claim Rejections - 35 USC § 102
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)(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.
Claims 1-7 and 10 are rejected under 35 U.S.C. 102 as being anticipated by Tran et al., US 2021/0256070 A1, (“Tran”).
Claim 1:
Tran teaches:
An apparatus comprising: a communications interface; (See Tran, Par. 20 (In Fig. lA, the monitoring device used for a sport device 9 includes an interface with a radio transmitter for forwarding the result of the comparison to a remote device.))
a memory storing instructions; and at least one processor coupled to the communications interface and to the memory, the at least one processor being configured to execute the instructions to: receive, from a device via the communications interface, a request to generate a non-fungible token associated with an ownership interest in an asset, the request comprising elements of first data that characterize the ownership interest; (See Tran, Par. 175 (As described above, in various embodiments, the system generates Blockchain token transactions based on the wallet's content.))
receive, from a computing system via the communications interface, elements of second data that characterize the ownership interest; (See Tran, Par. 176 (Regardless of the coordinator, after each node is committed, appropriate transaction messages are broadcast to transfer Blockchain token ownership.))
based on a determined consistency between the elements of first and second data, perform operations that generate the non-fungible token and that record information characterizing the non-fungible token within an element of a distributed ledger; and (See Tran, Par. 376 (In one embodiment, the blockchain address is used to replace the databases holding registration information for trademarks, patents, designs and copyright. By registering IP rights on a distributed ledger, the IP provides smart intellectual property rights, providing a robust and trustworthy proof of record.))
perform operations that provision the non-fungible token to an application program executed by the device. (See Tran, Par. 375 (In another aspect of the invention, a system for recording ownership rights in an asset includes: a client
computing device configured for generating an asset record having a fingerprint comprising a hash of a digital representation of the asset, a public key of a client who generates the asset record, and a digital signature comprising a private key of the creating client; a peer-to-peer network in communication with the client computing device to generate an entry in a public ledger.))
Claim 2:
Tran teaches each and every element of Claim 1 above.
Tran further teaches:
the asset comprises a tangible asset or a digital asset, and the elements of first data characterize the ownership interest of a user associated with the device in the at least one of the tangible asset or the digital asset. (See Tran, Par. 778 (The UCC tangible collateral category are used against 1) inventory, 2) equipment, 3) consumer goods, and 4) farm products. The system includes attachment code with 1) a security smart contract, 2) debtor agent has rights in the collateral, and 3) creditor agent gives value.))
Claim 3:
Tran teaches each and every element of Claim 2 above.
Tran further teaches:
the tangible asset comprises at least one of a parcel of real property, a physical unit of gold, or a tangible representation of at least one of an intangible asset or a digital asset. (See Tran, Par. 778 (The existence of that transaction in the blockchain proves that the digital asset (or intellectual property) existed
at the time the transaction got included into a block.))
Claim 4:
Tran teaches each and every element of Claim 2 above.
Tran further teaches:
the computing system is associated with a third-party administrator, the third-party administrator maintaining the tangible asset in accordance with an agreement between the user and the third-party administrator; the elements of first data comprise documentary data that characterize the ownership interest of the user in the tangible asset; and the elements of second data comprise asset data that characterizes the tangible asset and agreement data that characterizes the agreement. (See Tran, Par. 107 (Since most agreements involve the exchange of economic value, or have economic consequences, categories of public and private law are implemented using Ethereum. An agreement involving transfer of value can be precisely defined and automatically enforced with the same script.), Par. 111 (The functionality of system in accordance with one embodiment is detailed when creating a contract/deal sheet template that can be used for authoring a contract. The system receives user attribute requests from the contract administrator and modifies the contract template accordingly. The attribute requests are generated by the contract administrator through various actions in the designer tool. The modified contract template is stored in data catalog for later use in order to create the contract))
Claim 5:
Tran teaches each and every element of Claim 2 above.
Tran further teaches:
at least one processor is further configured to execute the instructions to: obtain a digital representation of the tangible asset, the digital representation characterizing a current physical condition of the tangible asset; and generate a hash value based on at least a portion of the digital representation of the tangible asset, and perform the operations that generate the non-fungible token based on the hash value, the non-fungible token comprising the hash value. (See Tran, Par. 191 (The physical goods and materials are identified and linked with their digital representation on the blockchain using a label (e.g., serial numbers, bar codes, digital tags like RFID and NFC, genetic tags) that uniquely identifies a physical good with its digital counterpart. Alternatively, active memory can be formed using roll-to-roll electronic printing onto a tag and the app can store the position information and additional information to a circuit such as flexible circuit, a printed circuit, or an
electronic tag with memory, and the tag can be associated with a product 3 as it moves through production and shipping processes. In one embodiment, the circuit can be "printed memory" that can collect and store information about the authenticity and condition of products.))
Claim 6:
Tran teaches each and every element of Claim 5 above.
Tran further teaches:
at least one processor is further configured to execute the instructions to: generate linking data that associates the non-fungible token and the digital representation; and perform the operations that generate the non-fungible token based on the hash value and the linking data, the non-fungible token comprising the hash value and the linking data. (See Tran, Par. 220 (The location of the user is verified, based on a second location detection method, using the computerized device. A blockchain hash or security key is established with a registration authority according to the location, using the computerized device.))
Claim 7:
Tran teaches each and every element of Claim 5 above.
Tran further teaches:
at least one processor is further configured to execute the instruction to perform operations that transmit, via the communications interface, the non-fungible token and the digital representation of the tangible asset to the device, the non-fungible token and the digital representation of the tangible asset being transmitted via a programmatic interface of the executed application program. (See Tran, Par. 856 (In another implementation, the Provider may price offerings and make them available to an intermediary Distributor entity, who may provide them to a
Purchaser market and interface with Purchasers for offer purchases and exercises.))
Claim 10:
Tran teaches each and every element of Claim 1 above.
Tran further teaches:
at least one processor is further configured to execute the instructions to: receive a request to redeem the non-fungible token from the device via the communications interface, the request comprising the non-fungible token; based on a verified ownership interest in the asset and on a determined availability of the non-fungible token, generate a hash value representative of at least a portion of the non-fungible token, and perform operations that record the hash value and information characterizing the non-fungible token within an additional element of a distributed ledger; and (See Tran, Par. 376 (In one embodiment, the blockchain address is used to replace the databases holding registration information for trademarks, patents, designs and copyright. By registering IP rights on a distributed ledger, the IP provides smart intellectual property rights, providing a robust and trustworthy
proof of record.))
perform operations that provision encrypted data to the computing system, the computing system being configured to decrypt the encrypted data and perform operations that trigger a release of documentation data associated with the ownership interest. (See Tran, Par. 138 (The service or item is not restricted to a media item and may be any item capable of being embedded with any form of data for the purpose of monitoring third party access to the service or item. The service or item may be a physical item such as a book, a compact disc, a physical document, or a work of art, an electronic item such as digital media, a biological item such as a genetic sequence or biological matter, or any other item capable of being embedded with data.))
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tran et al., US 2021/0256070 A1, (“Tran”), in view of Gagne-Keats et al., US 2024/0064019 A1, (“Gagne-Keats”).
Claim 8:
Tran teaches each and every element of Claim 5 above.
Tran does not expressly disclose, however, Gagne-Keats teaches:
the digital representation comprises a three-dimensional graphical representation of the tangible asset; and the executed application program causes the device is configured to present the three-dimensional graphical representation of the tangible asset within an interactive digital environment. (See Gagne-Keats, Par. 24 (For example, the first user can click on a graphical representation of the non-fungible physical asset 202 in the metaverse to present whether the graphical representation of the nonfungible physical asset 202 is linked to the NFT 203.))
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine with the teachings of Tran discussed above, a step where an application program causes the device is configured to present the three-dimensional graphical representation of the tangible asset within an interactive digital environment, as taught by Gagne-Keats. Tran teaches a device to securely access a digital asset with an asset blockchain address on a blockchain. It would be obvious for Tran as part of his system to include a step where an application program causes the device is configured to present the three-dimensional graphical representation of the tangible asset within an interactive digital environment so as to effectively present the asset in an interactive digital environment. Tran’s device to securely access a digital asset with an asset blockchain address on a blockchain and Gagne-Keats’ step for presenting the three-dimensional graphical representation of the tangible asset within an interactive digital environment, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art at the time of the invention would have recognized that the results of the combination were predictable.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tran et al., US 2021/0256070 A1, (“Tran”), in view of Regenor, US 2022/0351165 A1, (“Regenor”).
Claim 9:
Tran teaches each and every element of Claim 5 above.
Tran does not expressly disclose, however, Regenor teaches:
the information characterizing the non-fungible token comprises an alphanumeric identifier of the non-fungible token. (See Regenor, Par. 42 (In one embodiment, the token may include a 64-bit alphanumeric code that is sectioned into individual code segments where one or more or all of the code segments of the alphanumeric code may express data indicative of attributes of the physical asset or asset location or ownership.))
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine with the teachings of Tran discussed above, a step for characterizing the non-fungible token with an alphanumeric identifier, as taught by Regenor. Tran teaches a device to securely access a digital asset with an asset blockchain address on a blockchain. It would be obvious for Tran as part of his system to include a step characterizing the non-fungible token with an alphanumeric identifier so as to more effectively identify the asset. Tran’s device to securely access a digital asset with an asset blockchain address on a blockchain and Regenor’s step for characterizing the non-fungible token with an alphanumeric identifier, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art at the time of the invention would have recognized that the results of the combination were predictable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE PROIOS whose telephone number is (571)272-4573. The examiner can normally be reached M-F 8-5.
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/GEORGE N. PROIOS/Examiner, Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694
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