DETAILED ACTION
Acknowledgements
The amendment filed 3/11/2026 is acknowledged.
Claims 1-14 are pending.
Claims 2 and 9-12 are withdrawn
Claims 1, 3-8, and 13-14 have been examined.
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/Restrictions
Applicant’s election of Group 1 in the reply filed on 3/11/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 2 and 9-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/11/2026.
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, 3-8, and 13-14 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, 3-8, and 13-14 are directed to a portable computing device comprising means that invoke 112(f). Therefore, these claims fall within the four statutory categories of invention.
The claims recite creating a contract whitelist for authorizing use of a content item, and obtaining and using the content item if it is covered by a contract or license on the whitelist, which is an abstract idea. Specifically, the claims recite “means for generating a contract whitelist . . . comprising at least one [contract] for authorizing the display of creator-authorized digital content . . .,” “means for [obtaining] creator-authorized . . . content . . . and rendering the content . . . if the [contract] corresponds to the creator-authorized . . . content,” 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 (MPEP 2106.04 & 2106.04(a)) because describe a process of obtaining and using content according to authorized contracts for the content, which involves creating a contract whitelist including at least one contract or license for creator-authorized content, and obtaining and using the creator-authorized content if the whitelist includes a contract or license for the content, which is a commercial or legal interaction. Accordingly, the claims recite an abstract idea (See MPEP 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 a portable consumer device, a digital memory, a smart-contract, and electronically downloading the content, merely use a computer as a tool to perform an abstract idea. Specifically, these additional elements perform the steps or functions of “generating a contract whitelist . . . comprising at least one [contract] for authorizing the display of creator-authorized digital content . . .,” “[obtaining] creator-authorized . . . content . . . and rendering the content . . . if the [contract] corresponds to the creator-authorized . . . content.” Viewed as a whole, the use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), 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 claim(s) does/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 2106.05), the additional element(s) of using a portable consumer device, a digital memory, and a smart-contract, as well as electronically downloading the content, to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of creating a contract whitelist for authorizing use of a content item, and obtaining and using the content item if it is covered by a contract or license on the whitelist. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions of “generating a contract whitelist . . . comprising at least one [contract] for authorizing the display of creator-authorized digital content . . .,” “[obtaining] creator-authorized . . . content . . . and rendering the content . . . if the [contract] corresponds to the creator-authorized . . . content.” 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 creating a contract whitelist for authorizing use of a content item, and obtaining and using the content item if it is covered by a contract or license on the whitelist. 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 a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 3-8 and 13-14 further describe the abstract idea of creating a contract whitelist for authorizing use of a content item, and obtaining and using the content item if it is covered by a contract or license on the whitelist. Specifically, claims 3-4 describe characteristics of the device, but do not require the device to perform any additional functionality. Claim 5 describes the use of the content after it is sold, but does not require the device perform any additional functionality. Claim 6 describes obtaining the content using a wireless medium. The use of a wireless medium does not provide a practical application or significantly more than the abstract idea because it only involves using a computer as a tool to automate and/or implement the abstract idea. Claims 7-8 describe encryption and decryption of the content. This only involves performing mathematical calculations on the content to obtain access to it, and thus does not provide a practical application or significantly more than the abstract idea. Claims 13-14 describe the device as having either a means for enabling a user to wear the device as jewelry or to display the device as wall art. This describes a characteristic of the manner in which a user may use the device, but does not provide any additional technical functionality. The dependent claims do not include additional elements that 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 Interpretation
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.
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.
Specifically, the limitations “means for generating a contract whitelist . . .” and “means for electronically downloading . . .” in claim 1, as well as “means for downloading . . .” in claim 6, “means for enabling a user . . .” in claim 13, and “means for enabling a user . . .” in claim 14, are being interpreted under 35 U.S.C. 112(f) as each of these limitations uses the phrase “means for” coupled with functional language, and these limitations do not recite sufficient structure for performing the claimed functions.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-8, and 13-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitations “means for generating a contract whitelist . . .” and “means for electronically downloading . . .” in claim 1, “means for downloading . . .” in claim 6, “means for enabling a user . . .” in claim 13, and “means for enabling a user . . .” in claim 14 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification does not specifically identify any structure corresponding to each of the “means” recited in the claims. Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 3-8, and 13-14 are also rejected as each depends on claim 1.
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 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sehremelis (US 2023/0134118) in view of Jakobsson (US 2023/0086191).
Regarding claim 1, Sehremelis discloses a portable consumer device for displaying creator-authorized digital content comprising:
means for storing a contract whitelist in a digital memory comprising at least one smart-contract for authorizing the display of creator-authorized digital content on the device (Sehremelis ¶¶ 96, 104, 125);
means for electronically downloading creator-authorized digital content to the device and rendering the content on the device if the smart-contract corresponds to the creator-authorized digital content (Sehremelis ¶¶ 84, 96, 103-104, 107, 111, 124-125).
Sehremelis does not specifically disclose generating the whitelist.
Jakobsson discloses generating a whitelist (Jakobsson ¶¶ 341, 348-349, 366).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Sehremelis to include generating the whitelist, as disclosed in Jakobsson, in order to allow for a content owner to control whether a user can display or use their content (Jakobsson ¶¶ 348-349).
Regarding claim 6, Jakobsson discloses that the means for electronically downloading step comprises a means for downloading the creator-authorized digital content via a wireless medium (Jakobsson ¶ 146).
Regarding claim 7, Jakobsson disclose that the creator-authorized digital content on the device is encrypted (Jakobsson ¶¶ 204-206, 271-274, 285-288, 333-334).
Regarding claim 8, Sehremelis discloses that the creator-authorized digital content is accessed only if the creator-authorized digital content is associated with the smart-contract (Sehremelis ¶¶ 84, 96, 103-104, 107, 111, 124-125).
Sehremelis does not specifically disclose that accessing the content involves decrypting it.
Jakobsson discloses accessing the content by decrypting it (Jakobsson ¶¶ 204-206, 271-274, 285-288, 333-334).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Sehremelis to include accessing the content by decrypting it, as disclosed in Jakobsson, in order to allow for a content owner to control whether a user can display or use their content (Jakobsson ¶¶ 348-349).
Claims 3-5 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Sehremelis in view of Jakobsson as applied to claim 1 above, and further in view of Andon, et al. (US 2024/0012915) (“Andon”).
Regarding claim 3, Sehremelis in view of Andon does not specifically disclose that the device is a facet.
Andon discloses that the device is a facet (Andon ¶¶ 24-25, 31-34, 45).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Sehremelis in view of Jakobsson to include the use of a device that is a facet, as disclosed in Andon, in order to provide an increased level of interactivity and participation with virtual items, and a new avenue for user participation by not limiting digital collectible to only digital environments (Andon ¶¶ 24-25).
Regarding claim 4, Sehremelis in view of Jakobsson does not specifically disclose that the facet is provided with a product being marketed using the facet.
Andon discloses that the facet is provided with a product being marketed using the facet (Andon ¶¶ 45, 49, 51-53, 59).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Sehremelis in view of Jakobsson to include the facet being provided with a product being marketed using the facet, as disclosed in Andon, in order to provide an increased level of interactivity and participation with virtual items, and a new avenue for user participation by not limiting digital collectible to only digital environments (Andon ¶¶ 24-25).
Regarding claim 5, Sehremelis in view of Jakobsson does not specifically disclose that the creator-authorized digital content is updated after the product is sold.
Andon discloses that the creator-authorized digital content is updated after the product is sold (Andon ¶¶ 52, 55-56).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Sehremelis in view of Jakobsson to include the creator-authorized digital content being updated after the product is sold, as disclosed in Andon, in order to provide an increased level of interactivity and participation with virtual items, and a new avenue for user participation by not limiting digital collectible to only digital environments (Andon ¶¶ 24-25).
Regarding claim 13, Sehremelis in view of Jakobsson does not specifically disclose a means for enabling a user to wear the device as jewelry.
Andon discloses a means for enabling a user to wear the device as jewelry (Andon ¶¶ 24, 30).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Sehremelis in view of Jakobsson to include a means for enabling a user to wear the device as jewelry, as disclosed in Andon, in order to provide an increased level of interactivity and participation with virtual items, and a new avenue for user participation by not limiting digital collectible to only digital environments (Andon ¶¶ 24-25).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Sehremelis in view of Jakobsson as applied to claim 1 above, and further in view of Ferenczi (US 2023/0198760).
Regarding claim 14, Sehremelis in view of Jakobsson does not specifically disclose the portable consumer device comprising means for enabling a user to display the device as wall art.
Ferenczi discloses a portable consumer device comprising means for enabling a user to display the device as wall art (Ferenczi ¶¶ 1, 10).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Sehremelis in view of Jakobsson to include a means for enabling a user to display the device as wall art, as disclosed in Ferenczi, in order to allow the user flexibility by allowing them to display the content on a variety of ways (Ferenczi ¶ 10).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Vijayan, et al. (US 2023/0325814) (“Vijayan”) discloses an NFT platform that only accepts NFTs or smart contracts that are trusted and rejecting content that is known to be malicious, such as content on a ban-list (Vijayan ¶¶ 357, 370).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad A. Nilforoush whose telephone number is (571)270-5298. The examiner can normally be reached Monday-Friday 12pm-7pm.
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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.
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/Mohammad A. Nilforoush/Primary Examiner, Art Unit 3697
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