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
Claims 1-20 are pending.
Claim Interpretation
I. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
II. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
III. CLAIMS 1, 9, 16-17 and 19 of this application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are: “wherein the third-party component is configured to run a third-party application”, “wherein the digital item is configured to adjust a digital appearance” in Claims 1, 9 and 17; “wherein the digital activation layer is configured to” in Claim 9; “wherein the system is further configured to” in Claim 16; and “wherein the digital item is further configured to” in Claim 19.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
CLAIM REJECTIONS - 35 USC § 103
IV. 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.
V. CLAIMS 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over ANDON et al (USPN 11,295,318) in view of AUERBACH et al (USPN 11,522,700).
Per claim 1, ANDON et al teach a method for securely distributing a plurality of digital assets via a digital activation layer implemented within an enterprise network, wherein the enterprise network is in communication with a third-party component, the method comprising:
receiving, from a user device, a request to transfer a digital asset from the enterprise network to the third-party component, wherein the third-party component is configured to run a third-party application (Abstract, col.3 line 20-col.4 line 48, col.5 lines 6-27, col.6 lines 11-65, col.12 lines 57-60—receiving from a user a request to transfer a digital asset to a third-party which includes a third-party sponsor host);
identifying one or more characteristics of the digital asset (col.6 lines 11-44, col.13 line 8-col.14 line 17, col.37 lines 45-51, col.38 line 48-col.39 line 3—identifying attributes and features of the digital assets);
identifying a type of the third-party application, wherein the type of the third-party application identifies a digital item for integration with the third-party application (col.3 lines 20-51, col.18 lines 18-34, col.22 line 65-col.23 line 61, col.26 line 56-col.27 line 13, col.33 lines 39-56—third-party integration service operating as an API on user device, identifying a genotype and phenotype expression of an object via the integrated software and type of digital asset);
converting the digital asset into the digital item based on the type of the third-party application and the one or more characteristics of the digital asset (col.7 lines 24-44, col.20 lines 37-64, col.22 lines 61-64, col.27 lines 24-55—processing the digital asset to produce virtual representation of the new asset, web server hosting GUI operable to translate data to visual image); and
importing the digital item into the third-party application, wherein the digital item is configured to adjust a digital appearance within the third-party application (col.2 lines 25-38, col.8 lines 52-57, col.13 lines 40-57, col.20 lines 37-64, col.23 lines 17-40—digital asset manipulation and posting to online marketplace, altering genotype and phenotype characteristics of the digital asset, importing into one or more digital platforms, visual expression of displayed digital object altered by user’s uses of the object used in a related retail app).
ANDON et al teach the claimed limitation, as applied above, yet fail to explicitly teach identifying “a digital item that is compatible for integration with the third-party application”. However, AUERBACH et al teach obtaining data from web APIs are parsed to provide data compatible with the smart contract associated with the digital assets and formatting transaction data to be compatible with the digital wallet system (col.137 lines 21-36, col.174 lines 18-36, col.249 lines 37-45, col.252 lines 46-56) and converting a starting digital asset to one or more intermediate denominations (col.256 line 48-67, col.273 lines 23-43).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed the invention to combine the teachings of ANDON et al with AUERBACH et al for the purpose of identifying compatible digital items for integration in the third-party application, which is well-known in the art to ensure the stability of the system to employ data that is compatible with the format of the third-party.
Claims 9 and 17 contain limitations that are substantially equivalent to the limitations of claim 1 and are therefore rejected under the same basis.
Per claim 2, ANDON et al and AUERBACH et al teach the method of claim 1, ANDON et al further teach the method wherein the third-party component comprises a gamification component and the third-party application comprises a video game application (col.2 lines 25-38, col.13 lines 40-57, col.18 lines 18-34, col.26 lines 42-55—third-party comprises video game context and video game interface).
Claims 10 and 18 contain limitations that are substantially equivalent to the limitations of claim 2 and are therefore rejected under the same basis.
Per claim 3, ANDON et al and AUERBACH et al teach the method of claim 2, ANDON et al further teach the method wherein the digital item is further configured to adjust one or more parameters of the video game application, and wherein the one or more parameters are associated with a video game capability of an avatar in the video game application (col.2 lines 39-62, col.13 lines 47-57, col.18 lines 18-34, col.26 lines 42-55, col.27 lines 24-39, col.37 liens 55-59—digital representation includes an avatar, altering and manipulating video game characters and attributes using the video game interface).
Claims 11 and 19 contain limitations that are substantially equivalent to the limitations of claim 3 and are therefore rejected under the same basis.
Per claim 4, ANDON et al and AUERBACH et al teach the method of claim 3, ANDON et al further teach the method wherein adjusting the digital appearance comprises adjusting one or more visual parameters of the avatar in the video game application (col.20 lines 37-64, col.26 lines 42-55, col.27 lines 24-39, col.37 lines 39-51—digital asset manipulation of attributes associated with attributes of digital representation used in video games).
Claims 12 and 20 contain limitations that are substantially equivalent to the limitations of claim 4 and are therefore rejected under the same basis.
Per claim 5, ANDON et al and AUERBACH et al teach the method of claim 1, ANDON et al further teach the method wherein the third-party component comprises a social media component and the third-party application comprises a social media application (col.17 line 66-col.18 line 17, col.21 lines 23-47—social media platform and implementation; AUERBACH et al: col.40 lines 1-7—social media blockchain system).
Claim 13 contains limitations that are substantially equivalent to the limitations of claim 5 and are therefore rejected under the same basis.
Per claim 6, ANDON et al and AUERBACH et al teach the method of claim 5, ANDON et al further teach the method wherein the social media component provides one or more images from the social media application, and wherein adjusting the digital appearance comprises displaying the digital item as an overlay in the one or more images (col.17 line 66-col.18 line 17, col.21 lines 23-47, col.23 line 41-col.24 line 12, col.24 lines 13-41, col.26 lines 27-41—social media platform and implementation, customizing, editing and altering attributes of digital assets).
Claim 14 contains limitations that are substantially equivalent to the limitations of claim 6 and are therefore rejected under the same basis.
Per claim 7, ANDON et al and AUERBACH et al teach the method of claim 1, ANDON et al further teach the method wherein the enterprise network comprises a distributed ledger, and wherein the digital asset is transferred from the enterprise network to the third-party component via the distributed ledger (col.16 line 58-col.17 line 14, col.34 line 59-col.35 line 7—digital asset transferred to third-party via distributed ledger).
Claim 15 contains limitations that are substantially equivalent to the limitations of claim 7 and are therefore rejected under the same basis.
Per claim 8, ANDON et al and AUERBACH et al teach the method of claim 1, ANDON et al further teach the method further comprising: retrieving the adjusted digital appearance form the third-party application; and updating the digital asset based on the retrieved adjusted digital appearance (col.3 lines 20-51, col10 lines 5-14, col.23 line 41-col.24 line 12, col.24 lines 13-41, col.27 lines 40-55—third-party entity modifying digital asset attributes).
Claim 16 contains limitations that are substantially equivalent to the limitations of claim 8 and are therefore rejected under the same basis.
Conclusion
VI. The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure: US 2020/0273048, US 2024/0249324, US 2023/0088936.
VII. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTIE D SHINGLES whose telephone number is (571)272-3888. The examiner can normally be reached on Monday-Thursday 10am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kamal Divecha can be reached on 571-272-5863. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTIE D SHINGLES/
Primary Examiner, Art Unit 2453