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 .
DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The following is a FIRST, NON-FINAL OFFICE ACTION for Application #18/864, 844, filed on 11/11/2024. This application is a 371 National Stage Application of PCT/US2023/021490, filed on 05/09/2023, and claims priority to Provisional Application 63/339,816, filed on 05/09/2022.
Claims 1-20 are pending and have been examined.
Claim Objections
Claim 20 is objected to for a typographical error. Claim 20 depends from the “non-transitory…media of claim 1.” But claim 1 is a method. Claim 14 is the independent medium claim. Therefore, appropriate correction is required, and for examination purposes it will be assumed that claim 20 depends from claim 14.
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 1-20 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. Claims 1 and 10 claim a method, or process. A process is a statutory category for patentability. Claim 14 claims “one or more non-transitory computer-readable media.” Therefore, the media is interpreted as an article of manufacture, which is a statutory category for patentability. Further, the claim is in conformity with the Kappos Memorandum of 2010 regarding medium claims, as it includes the phrase “non-transitory.”
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 are directed towards an abstract idea. Specifically, independent claim 10 recites “digital assets representing one or more physical properties, determining the one or more respective physical properties associated with the user, retrieving the one or more digital assets representing the one or more respective physical properties, and presenting the one or more digital asserts representing the one or more physical properties.” Therefore, the claims are directed to an abstract idea, namely “certain methods of organizing human activity.” Specifically, the claims are directed at “commercial interactions, business relations.” Presenting a user with various assets associated with a building in response to a user request in order for the user to consider them for lease is considered a commercial or business interaction. Claims 1 and 14 recite “creating primary digital assets associated with a physical building, creating level digital assets associated with a physical building, wherein each of the level digital assets represents a sub-portion of the physical building, and providing use of a level of the plurality of level digital assets to a tenant n conjunction with lease of the sub-portion of the physical building.” Therefore, the claims are directed to an abstract idea, namely “certain methods of organizing human activity.” Specifically, the claims are directed at “commercial or interactions including agreements in the form of contracts.” Creating digital assets representing primary buildings and levels of a building and facilitating lease to a tenant of a portion of the building using the digital assets is considered a commercial interaction such as facilitating an agreement in the form of a contract. The processor in claim 14 simply automates the abstract idea using a computer. Therefore, the claims are determined to be directed to an abstract idea.
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 14 includes “non-transitory computer readable media,” and “one or more processors.” However, these additional elements are considered generic recitations of a technical element and are recited at a high level of generality. These additional elements 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 claim 10 also include “receiving from a user a request to access a portal” and “displaying at the user portal.” Absent further detail, these additional elements are considered “receiving and/or transmission of data over a network,” listed in the MPEP 2106.05 (d) (II) (i) as an example of conventional computer functioning- see “receiving or transmittal of data over a network,” citing TLI Communications, OIP Techs v Amazon.com, and buySAFE v Google. Therefore, these additional elements are not considered to integrate the abstract idea into a practical application. The additional elements of claims 1 and 14 also include the creating and providing of primary and level NFT’s. However, the use of NFT’s is considered a generic recitation of a technical element, the equivalent of “apply it,” or using a computer as a tool to automate the abstract idea. The NFT’s are used in place of other paper or digital files or assets to create and manage representations of ownership or lease rights for sub-portions of a physical building, more specifically creating tokens that represent ownership or lease rights, dividing assets into sub-portions, and associating the representations with real-world leasing There is no technical improvement to blockchain technology, NFTs, or digital asset management, only their application to real-estate leasing context. Therefore, these additional elements are not considered to 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 14 includes “non-transitory computer readable media,” and “one or more processors.” However, these additional elements are considered generic recitations of a technical element and are recited at a high level of generality. These additional elements are being used as “tools to automate the abstract idea” (see MPEP 2106.05 (f)), and therefore, these additional elements are not considered significantly more than the abstract idea. They are not recitations of a special purpose computer or transformation (see MPEP 2106.05 (b) and (c)). The additional elements of claim 10 also include “receiving from a user a request to access a portal” and “displaying at the user portal.” Absent further detail, these additional elements are considered “receiving and/or transmission of data over a network,” listed in the MPEP 2106.05 (d) (II) (i) as an example of conventional computer functioning- see “receiving or transmittal of data over a network,” citing TLI Communications, OIP Techs v Amazon.com, and buySAFE v Google. Therefore, these additional elements are not considered significantly more than the abstract idea. The additional elements of claims 1 and 14 also include the creating and providing of primary and level NFT’s. However, the use of NFT’s is considered a generic recitation of a technical element, the equivalent of “apply it,” or using a computer as a tool to automate the abstract idea. The NFT’s are used in place of other paper or digital files or assets to create and manage representations of ownership or lease rights for sub-portions of a physical building, more specifically creating tokens that represent ownership or lease rights, dividing assets into sub-portions, and associating the representations with real-world leasing There is no technical improvement to blockchain technology, NFTs, or digital asset management, only their application to real-estate leasing context. Therefore, these additional elements are not considered significantly more than the abstract idea itself.
When considered as an ordered combination, the claim is still considered to be directed to an abstract idea as the claim steps in the ordered combination simply recite the logical steps for providing digital assets in response to a user request or collating the historical records, calculating probabilities, predicting a labor time, and outputting the results. Therefore, the ordered combination does not lead to a determination of significantly more.
When considering the dependent claims, claim 2 is considered part of the abstract idea. Claims 3-5 include the use of blockchain to record the NFT’s, creating NFT’s, and an NFT marketplace. However, these additional elements are considered generic recitations of technical elements, the equivalent of “apply it,” or using a computer as a tool to automate the abstract idea. The blockchain and NFT’s are used in place of other paper or digital files or assets and storage or databases to create and manage representations of ownership or lease rights for sub-portions of a physical building, more specifically creating tokens that represent ownership or lease rights, dividing assets into sub-portions, and associating the representations with real-world leasing There is no technical improvement to blockchain technology, NFTs, or digital asset management, only their application to real-estate leasing context. Claim 6 is considered part of the abstract idea. Claim 7 recites the digital assets including such as a BIM of the physical building. However, absent further detail, this additional element is considered conventional and well-understood, and the examiner takes Official Notice that it is old and well known that to use BIM models of physical buildings for electronic interaction. Claims 8 and 9 include the use of a portal to view digital assets. This is considered the equivalent of “apply it,” or using a computer as a tool to automate the abstract idea (see MPEP 2106.05 (f)). The portal is used to digitally show to the user what could be done manually as part of presentation of assets for lease when facilitating a lease or rental. Therefore, these additional elements are not considered significantly more than the abstract idea itself. Claims 11 and 12 are considered part of the abstract idea, as which assets are displayed does not change the analysis. The other dependent claims mirror those already discussed above.
Therefore, claims 1-20 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 § 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 10-11 are rejected under 35 USC 102 (a) (2) as being anticipated by Dedhia, et al. WIPO Publication WO 2015/148835 A1 (provided as a PDF with this office action).
Regarding Claim 10, Dedhia teaches:
A method comprising:
receiving, from a user, a request to access a user portal, wherein the user portal displays one or more digital assets representing one or more respective physical properties (see Figure 1 and [0025]-[0030] in which users can register with and log into a portal that displays digital assets representing physical properties)
determining the one or more respective physical properties associated with the user (see at least [0026] in which the user profile is used to determine properties associated with a user)
retrieving the one or more digital assets representing the one or more respective physical properties (see Figures 1-4, [0031]-[0034], and [0090]-[0093] in which listings for one or more non-fungible assets are retrieved)
displaying, at the user portal, the one or more digital assets representing the one or more respective physical properties (see Figures 1-4, [0031]-[0034], and [0090]-[0093] in which the digital assets representing physical properties are displayed to the user via the portal)
Regarding Claim 11, Dedhia teaches:
the method of claim 10
wherein displaying, at the user portal, the one or more digital assets corresponding to the one or more physical properties comprises displaying digital assets associated with a plurality of physical buildings owned by the user (see [0036] and [0080])
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 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 1-6 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Paulin, Pre-Grant Publication No. 2023/0237601 A1.
Regarding Claims 1 and 14, Paulin teaches:
A method (media) comprising:
creating a primary non-fungible token (NFT), wherein the primary NFT represents digital assets associated with a physical building (see [0037], [0039], [0042]-[0043], [0056], and [0064] in which a user first purchases a full piece of real estate such as a building using a smart contract and an associated NFT that represents the purchased asset)
creating a plurality of parcel NFTs from the digital assets associated with the physical building, wherein each of the parcel NFTs represent digital assets associated with a sub-portion of the physical building (see [0042]-[0043], [0054], [0056]-[0057], [0060], [0065], and [0073] in which a plurality of fractional NFT’s are created that represent divided portions of a building, and specifically [0056] which teaches that the building could be divided into 10x10 parcels and “into parcels of other sizes and arrangements”)
providing use of a parcel NFT of the plurality of parcel NFTs to a tenant in conjunction with lease of the sub-portion of the physical building represented by the parcel NFT (see [0057]-[0061] in which a parcel NFT is rented or purchased and transferred to the renter)
Paulin, however, does not appear to specify:
level NFT’s
Paulin does however teach various fractional configurations of parcel NFT’s in [0056] such as 10x10 parcels and “into parcels of other sizes and arrangements.” Therefore, it would be obvious to one of ordinary skill in the art at the time of filing of the application to combine level NFT’s with Paulin because Paulin already teaches other configurations of parcel NFT’s that are fractional portions of buildings, and level NFT’s would allow for modifying the teachings of Paulin to be even better applied when a building has individual units that span an entire level, such as penthouse type buildings.
Regarding Claims 2 and 15, Paulin teaches:
the method of claim 1…
wherein providing use of the level NFT comprises providing access to the digital assets associated with the sub-portion of the physical building represented by the level NFT for a period of time of a lease of the sub-portion of the physical building by the tenant (see [0057]-[0061] in which a parcel NFT is rented or purchased and transferred to the renter; see also [0060]-[0065] and [0073] in which the rental NFT for the parcel is for a specific period of time)
Regarding Claims 3 and 16, Paulin teaches:
the method of claim 1…
wherein creating the primary NFT comprises utilizing an NFT marketplace to record the primary NFT on a blockchain and conferring ownership of the primary NFT to an owner of the physical building (see [0030]-[0034]; see also [0037], [0039], [0042]-[0043], [0056], and [0064] in which a user first purchases a full piece of real estate such as a building using a smart contract and an associated NFT that represents the purchased asset)
Regarding Claims 4 and 17, Paulin teaches:
the method of claim 1…
wherein creating the plurality of level NFTs comprises dividing the digital assets associated with the physical building into a plurality of level digital assets, wherein each of the plurality of level digital assets are associated with a respective sub- portion of the physical building (see [0042]-[0043], [0054], [0056]-[0057], [0060], [0065], and [0073] in which a plurality of fractional NFT’s are created that represent divided portions of a building, and specifically [0056] which teaches that the building could be divided into 10x10 parcels and “into parcels of other sizes and arrangements”)
Paulin, however, does not appear to specify:
level NFT’s
Paulin does however teach various fractional configurations of parcel NFT’s in [0056] such as 10x10 parcels and “into parcels of other sizes and arrangements.” Therefore, it would be obvious to one of ordinary skill in the art at the time of filing of the application to combine level NFT’s with Paulin because Paulin already teaches other configurations of parcel NFT’s that are fractional portions of buildings, and level NFT’s would allow for modifying the teachings of Paulin to be even better applied when a building has individual units that span an entire level, such as penthouse type buildings.
Regarding Claims 5 and 18, Paulin teaches:
the method of claim 4…
wherein creating the plurality of level NFTs further comprises utilizing an NFT marketplace to record each of the plurality of level NFTs on a blockchain and conferring ownership of each of the plurality of level NFTs to an owner of the building (see [0020]-[0021], [0042]-[0043], [0054]-[0057], and [0073])
Regarding Claim 6, Paulin teaches:
the method of claim 5
wherein providing use of the level NFT of the plurality of level NFTs to the tenant comprises maintaining, by the owner of the building, ownership of the level NFT (see [0056]-[0057], [0060]-[0061], [0065] and [0073] in which the parcel NFT’s are provided for use of the parcel by the tenant but the owner still maintains ownership)
Claims 7 and 19 are rejected under 35 USC 103 as being unpatentable over Paulin, Pre-Grant Publication No. 2023/0237601 A1 in view of Soflin, Patent No. 11,263,361 B1.
Regarding Claims 7 and 19, Paulin teaches:
the method of claim 1…
Paulin, however, does not appear to specify:
wherein the digital assets associated with the physical building include one or more of a building information model (BIM) of the physical building, a digital twin of the physical building, an engineering report for the physical building, and verified dimensions of the physical building
Soflin teaches:
wherein the digital assets associated with the physical building include one or more of a building information model (BIM) of the physical building, a digital twin of the physical building, an engineering report for the physical building, and verified dimensions of the physical building (see Figures 1-2B, Column 1, lines 17-30, and Column 2, line 64-Column 3, line 62 which clearly teach the digital assets associated with the physical building including a BIM Model or a digital twin)
It would have been obvious to one of ordinary skill in the art at the time of the filing of the application to combine Soflin with Paulin because in order to provide architects, designers, engineers, and other entities the ability to envision and generate 3-D models of a building or structure and its components and allow for non-graphical information to be accessed.
Claims 8-9 and 20 are rejected under 35 USC 103 as being unpatentable over Paulin, Pre-Grant Publication No. 2023/0237601 A1 in view of Dedhia, et al. WIPO Publication WO 2015/148835 A1 (provided as a PDF with this office action).
Regarding Claim 8, Paulin teaches:
the method of claim 1
Paulin further teaches:
viewing the digital assets associated with the physical building using a software application associated with an owner of the physical building (see [0050], [0052], [0061], and [0082])
Paulin, however, does not appear to specify:
viewing the digital assets associated with the physical building at a user portal associated with an owner of the physical building
Dedhia teaches:
viewing the digital assets associated with the physical building at a user portal associated with an owner of the physical building (see Figure 1 and [0025]-[0030] which teaches a user portal)
It would have been obvious to one of ordinary skill in the art at the time of the filing of the application to combine Dedhia with Paulin because Paulin already teaches building owners and prospective renters/tenants accessing digital assets such as parcel NFT’s online, but teaches at [0064] a virtual map through a software application, and does not specify a portal, and using a portal would allow for a dedicated and more secure way to access the digital assets.
Regarding Claim 9, Paulin teaches:
the method of claim 1
Paulin, however, does not appear to specify:
viewing digital assets associated with the sub-portion of the physical building at a user portal associated with the tenant
Dedhia teaches:
viewing digital assets associated with the sub-portion of the physical building at a user portal associated with the tenant (see Figure 1 and [0025]-[0030] in which users can register with and log into a portal that displays digital assets representing physical properties)
It would have been obvious to one of ordinary skill in the art at the time of the filing of the application to combine Dedhia with Paulin because Paulin already teaches prospective renters/tenants accessing digital assets such as parcel NFT’s online, but teaches at [0064] a virtual map through a software application, and does not specify a portal, and using a portal would allow for a dedicated and more secure way to access the digital assets.
Regarding Claim 20, Paulin teaches:
the… media of claim 1
provide a first software application associated with the owner of the physical building, wherein the first software application allows the owner of the physical building to view the digital assets associated with the physical building (see [0050], [0052], [0061], and [0082])
Paulin, however, does not appear to specify:
provide a first user portal associated with the owner of the physical building, wherein the first user portal allows the owner of the physical building to view the digital assets associated with the physical building
provide a second user portal associated with the tenant, wherein the second user portal allows the tenant to view the digital assets associated with the sub-portion of the physical building
Dedhia teaches:
provide a first user portal associated with the owner of the physical building, wherein the first user portal allows the owner of the physical building to view the digital assets associated with the physical building (see Figure 1 and [0025]-[0030] which teaches a user portal)
provide a second user portal associated with the tenant, wherein the second user portal allows the tenant to view the digital assets associated with the sub-portion of the physical building (see Figure 1 and [0025]-[0030] in which users can register with and log into a portal that displays digital assets representing physical properties)
It would have been obvious to one of ordinary skill in the art at the time of the filing of the application to combine Dedhia with Paulin because Paulin already teaches building owners and prospective renters/tenants accessing digital assets such as parcel NFT’s online, but teaches at [0064] a virtual map through a software application, and does not specify a portal, and using a portal would allow for a dedicated and more secure way to access the digital assets.
Claims 12-13 are rejected under 35 USC 103 as being unpatentable over Dedhia, et al. WIPO Publication WO 2015/148835 A1 (provided as a PDF with this office action) in view of Soflin, Patent No. 11,263,361 B1.
Regarding Claim 12, Dedhia teaches:
the method of claim 10
Dedhia, however, does not appear to specify:
wherein displaying, at the user portal, the one or more digital assets corresponding to the one or more physical properties comprises displaying digital assets associated with a plurality of sub-portions of physical buildings leased by the user
Soflin teaches:
wherein displaying, at the user portal, the one or more digital assets corresponding to the one or more physical properties comprises displaying digital assets associated with a plurality of sub-portions of physical buildings leased by the user (see Figure 2A, Column 4, line 31-Column 5, line 9 in which show sub-portions of the leased properties; see also Column 5, lines 11-24)
It would have been obvious to one of ordinary skill in the art at the time of the filing of the application to combine Soflin with Dedhia because in order to provide a means of inventory assessment for the invention of Dedhia for such as a building wide, floor-wide, or suite-wide level to assist in maintenance and repurposing of a structure or portion or for leasing and rental purposes.
Regarding Claim 13, Dedhia teaches:
the method of claim 10
Dedhia, however, does not appear to specify:
wherein the one or more digital assets comprise one or more of building information models (BIMs) of the one or more physical properties, digital twins of the one or more physical properties, engineering reports for the one or more physical properties, and verified dimensions of the one or more physical properties
Soflin teaches:
wherein the one or more digital assets comprise one or more of building information models (BIMs) of the one or more physical properties, digital twins of the one or more physical properties, engineering reports for the one or more physical properties, and verified dimensions of the one or more physical properties (see Figures 1-2B, Column 1, lines 17-30, and Column 2, line 64-Column 3, line 62)
It would have been obvious to one of ordinary skill in the art at the time of the filing of the application to combine Soflin with Dedhia because in order to provide architects, designers, engineers, and other entities the ability to envision and generate 3-D models of a building or structure and its components and allow for non-graphical information to be accessed.
Conclusion
The following prior art references were not relied upon in this office action but are considered pertinent to the applicant’s invention:
Tran, Pre-Grant Publication No. 2022/0040557 A1- NFT’s used for smart contracts for various purposes including building leases
Luo, et al., Pre-Grant Publication No. 2025/0095056 A1- teaches an owner of a property or other item that rents the item and the system mints multiple item period rental NFT’s that are given to a renter, but the owner still maintains ownership of the item
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 Monday-Friday 8:30am-5:00pm 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