DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The Action is responsive to Applicant’s amendment, filed on December 31, 2025
3. Claims 1-21 are pending.
Response to Arguments
4. Applicant’s arguments with respect to claims 1-21 have been considered but are not persuasive at least for the following reason: Applicant argues in substance that
“Applicant respectfully submits that the claims are directed to patent-eligible subject matter at least because the claims provide a technological solution to a problem that arises solely in technology (i.e., dynamic storage of digital assets based on ESG factors) and provides a practical application of any alleged judicial exception under Step 2A Prong 2. Applicant respectfully submits that aspect of moving the digital asset in claim 1 provides a sufficient practical application for patent eligibility, but, certainly, the aspect of moving the digital asset from the first storage medium to the second storage medium to reduce ESG costs for storage of the digital asset relative to continued storage of the digital asset in the first storage medium in claim 2 provides a sufficient practical solution for patent eligibility.” The Examiner respectfully submits that reciting a "computer implemented", nothing in the claim element precludes the step from practically being performed in a human mind or with the aid of pen and paper. For example, “monitoring” in the context of this claim encompasses a user mentally, and with the aid of pen and paper, grouping and evaluating data, according to costs. And also, as discussed the “moving”. The Examiner suggests to include further include the functionality of the ”cost” and also of the specifics of the storage with respect to the moving, why and how those functionalities are implemented as seen in paragraphs [0083], the moving “triggered by…” and par [0036], “moving digital assets to a lower-cost storage tier, deleting one or more digital copies of the asset to reduce storage cost and/or free up storage space for alternative uses (which under some conditions could leave only the original physical asset in storage), or changing the way that the digital assets are stored (e.g., changing from storage of two mirrored copies of a digital asset to a single copy, which removes redundancy but might maintain retrieval performance, or compressing the digital asset, which might reduce storage utilization but slow down retrieval performance).”.
Applicant argues in substance that “Claim 1 requires that a digital asset be stored in a first storage medium and further requires monitoring first costs for continued storage of the digital asset in the first storage medium, wherein the first costs are based on at least one ESG factor, monitoring second costs to store the digital asset in a second storage medium different than the first storage medium wherein the second costs are based on at least one ESG factor, and moving the digital asset from the first storage medium to the second storage medium based on the first and second costs. While McCarthy mentions an ESG confidence score that represents a measurement of sustainability of the digital asset based on ESG factors, this is different than what is claimed. Just to be clear, the concept of sustainability in McCarthy is not related to storage of the digital asset (i.e., it is not the cost of "sustaining" the digital asset in storage VS the cost of moving/storing the digital asset in a different storage medium) but instead is related to ESG compliance of the digital asset, e.g., "using ESG factors to evaluate the digital asset's sustainability (i.e., whether the digital asset is ESG compliant), such as how the digital asset was crypto mined)." However, even if the ESG factor in McCarthy is construed to include other ESG factors, McCarthy still does not disclose or suggest using an ESG factor to monitor the cost for continued storage of the digital asset in a first storage medium and using an ESG factor to monitor the cost to store the digital asset in a second digital storage medium and then moving the digital asset based on these costs, as in the claims.” The Examiner respectfully submits that the ESG factors in McCarthy includes (ESG) footprint (e.g., using ESG factors to evaluate the digital asset's sustainability; and it is based on a subscription based monitoring that includes “digital asset” storing, specifically may be charged a fee based on the pre-determined periodic basis selected. As part of it, using a machine learning to predict activity patterns of an owner or a custodian of a digital asset. As described in detail later herein, data maintained in the registry relating to ownership, provenance, and lineage of a digital asset is dynamically updated based on monitoring the digital asset (via the monitoring unit 230). As also cited in (Par [0091], “(e.g., digital asset verification, the registry 270, subscription-based monitoring service). For direct customers and family offices, the system 200 provides cost effective security (e.g., digital asset verification, the registry 270, subscription-based monitoring service),” The cost effective is based on a subscription-based service which is periodically monitored according to ownership, provenance, and lineage. The Examiner suggests to be more specific as to what “cost” is referring to in order to distinguish from the prior art of record. For example, various ESG factors and how those are implemented, see par [0034], “Additionally or alternatively, storage tiers could be defined in terms of the manner in which data is stored, e.g., different tiers associated with different storage redundancy schemes (e.g., a tier with no redundancy, a tier using mirroring, a tier using striping, etc.) or different tiers associated with compressed and uncompressed data. Additionally, or alternatively, storage tiers could take into account ESG factors such as, for example, prioritizing storage at a facility that employs renewable energy sources”. Also, the “predictive tired asset storage” and its physical artifact and how this will lower future costs regarding its representation and implementation.
The Examiner suggests incorporating the specifics of the mentioned components in order to make the claim definite with respect to the "cost" and the "ESG factor”. The Examiner also invites the applicant to request an interview in order to discuss the mentioned issues, potential distinguishable subject matter, and any other potential uses in order to advance prosecution prior to issuing any additional action. In order to enhance compact prosecution and clarity of record.
For the above reasons, the Examiner believes that the rejections of the last Office action were proper.
Terminal Disclaimer
5. The terminal disclaimer filed on December 31, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 12135684 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 101
6. 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.
7. Claims 1-21 are rejected under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Step 1: Claim 1 recites “A system for…”; therefore, the claim is a machine. Claim 8 recites a method, the claim recites a series of steps and therefore is a process. Claim 8 recites. Claim 15 recites “A computer program product comprising at least one tangible, non-transitory computer-…”, for digital asset storage management based on environmental, social, and governance (ESG) factors.
Step 2A Prong One: Claims 1, 8, and 15 recite the limitations "monitoring" and specifically “monitoring first costs for continued storage of the digital asset in the first storage medium, wherein the first costs are based on at least one ESG factor; monitoring second costs to store the digital asset in a second storage medium different than the first storage medium, wherein the second costs are based on at least one ESG factor”
These limitations are processes that, under their broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components, and doing data observation.
That is, other than reciting a "computer implemented", nothing in the claim element precludes the step from practically being performed in a human mind or with the aid of pen and paper. For example, “monitoring” in the context of this claim encompasses a user mentally, and with the aid of pen and paper, grouping and evaluating data, according to costs.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgment, and opinion).
Step 2A Prong Two: The judicial exception is not integrated into a practical application. The claim recites the additional elements “moving"; “moving the digital asset from the first storage medium to the second storage medium based on the first and second costs..” And The “storing” based on a determination of the costs, this limitation is a mere generic transmission and presentation of collected and analyzed data (MPEP 2106.05(g).
A claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they are considered insignificant extra-solution activity. Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);
Step 2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The insignificant extra-solution activities listed above, including “moving the digital asset..” this limitation is a mere generic transmission and presentation of collected and analyzed data. The limitations performed by a “moving” from one to another storage based on “costs” still based on comparison of data ( it is recognized by the courts as well-understood, routine, and conventional activities when they are claimed in a merely generic manner. (see MPEP 2106.04(a)(2). There are no additional elements that amount to significantly more than the above-identified judicial exception (abstract idea).
Koninklijke KPN N.V. v.Gemalto M2M GmbH, 942 F.3d 1143, 1149 (Fed. Cir.2019) (quoting Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)). In the context of software patents (which includes machine learning patents), the step-one inquiry determines “whether the claims focus on ‘the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an abstract idea for which computers are invoked merely as a tool.’” Id. (alteration in original) (quoting Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018)).
As per Claims 2 , The claims recite the additional limitations “wherein the digital asset is moved from the first storage medium to the second storage medium to reduce ESG costs for storage of the digital asset relative to continued storage of the digital asset in the first storage medium..”
The claim does not include additional elements that are sufficient to amount to significantly more than the abstract idea, under their broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components, specifically doing comparison of data, from different sources, monitoring costs, to reduce costs. (See COFFELT V. NVIDIA CORPORATION, The calculations claimed can be done by a human mentally or with a pen and paper.” It further added that “analyzing information by steps people [can] go through in their minds, or by mathematical algorithms, without more . . . [are] mental processes within the abstract-idea category.
As per Claim 3, costs for deleting the digital asset from the first storage medium based on at least one ESG factor; or costs for adding the digital asset to the second storage medium based on at least one ESG factor. The claim does not include additional elements that are sufficient to amount to significantly more than the abstract idea, under their broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components, specifically doing comparison of data, from different costs or factors, which recites a mere mental step or an abstract idea.
As per Claim 4, wherein the first costs and the second costs are based on at least one ESG factor related to anticipated user accesses to the digital asset. The claim does not include additional elements that are sufficient to amount to significantly more than the abstract idea, under their broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components, specifically doing comparison of data, from different sources. Merely observing costs, again these limitations are processes that, under their broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components, without more . . . [are] mental processes within the abstract-idea category.
As per Claim 5, wherein monitoring the first and second costs is based on a set of stored storage management rules that define the storage cost based on the at least one ESG factor. The user can identify based on different sources, observing second cost and storage, based on monitoring, which again is comparing data, without more . . . [are] mental processes within the abstract-idea category.
As per Claim 6, herein the at least one ESG factor is based on at least one scope defined by World Resources Institute GHG Protocol Initiative.
The user can identify based on different sources, which again is comparing data, without more . . . [are] mental processes within the abstract-idea category.
As per Claim 7, wherein the processes further comprise: creating and storing an artifact identifier record; and using the artifact identifier record to track the storage costs for the digital asset based on the at least one ESG factor.
Further elaborates on the idea of a person doing comparison of costs based on the sources, does not amount to significantly more than an abstract idea, without more . . . [are] mental processes within the abstract-idea category.
As per Claims 8-21, being the system and non-transitory computer readable media claims corresponding to the system claims 1-7 respectively and rejected under the same reason set forth in connection of the rejections of Claims 1-7.
The Examiner suggests to further describe how the mentioned functionality in the claim language is performed. Specifically, the “monitoring” "in order for the addition of a machine to impose a meaningful limit on the scope of a clam, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations".
Claim Rejections - 35 USC § 102
8. 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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
9. Claim(s) 1-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McCarthy (US 2022/0366021), “McCarthy”.
As per Claim 1, McCarthy discloses:
A system for digital asset storage management based on environmental, social, and governance (ESG) factors, the system comprising: at least one processor coupled to at least one memory containing instructions which, when executed by the at least one processor, cause the system to perform processes comprising: (Par [0042], “determining one or more attributes relating to the digital asset's environmental, social, and governance (ESG) footprint (e.g., using ESG factors to evaluate the digital asset's sustainability (i.e., whether the digital asset is ESG compliant)…”) causing storage of a digital asset in a first storage medium; (Par [0024], “The computing architecture 100 comprises an electronic device 110 including resources, such as one or more processor units 111 and one or more storage units 112” and see Figure 1) monitoring first costs for continued storage of the digital asset in the first storage medium, wherein the first costs are based on at least one ESG factor; (Par [0047], “As another example, a confidence score corresponding to a digital asset is an ESG confidence score, where the ESG confidence score represents a measurement of sustainability of the digital asset based on ESG factors.”) monitoring second costs to store the digital asset in a second storage medium different than the first storage medium, (Par [0060], “the monitoring unit 230 is configured to monitor a digital wallet storing the digital asset. The monitoring unit 230 allows for the system 200 to perform enhanced due diligence periodically. In one embodiment, a digital asset is monitored by the monitoring unit 230 on a continuing, ongoing basis or a pre-determined periodic basis” and see Figures 1-4).
wherein the second costs are based on at least one ESG factor; (Par [0042], “determining one or more attributes relating to the digital asset's environmental, social, and governance (ESG) footprint (e.g., using ESG factors to evaluate the digital asset's sustainability (i.e., whether the digital asset is ESG compliant), such as how the digital asset was crypto mined), etc.” and par [0081], “…With digital asset tokenization, some form of digital assets are converted into one or more digital tokens that can be moved, stored, or recorded on a blockchain.”) and moving the digital asset from the first storage medium to the second storage medium based on the first and second costs. (Par [0091], “(e.g., digital asset verification, the registry 270, subscription-based monitoring service). For direct customers and family offices, the system 200 provides cost effective security (e.g., digital asset verification, the registry 270, subscription-based monitoring service),” and Par [0081], “… of digital assets are converted into one or more digital tokens that can be moved, stored, or recorded on a blockchain.”).
As per Claim 2, the rejection of Claim 1 is incorporated and McCarthy further recites: wherein the digital asset is moved from the first storage medium to the second storage medium to reduce ESG costs for storage of the digital asset relative to continued storage of the digital asset in the first storage medium. (Par [0060], “In one embodiment, a digital asset is monitored by the monitoring unit 230 on a continuing, ongoing basis or a pre-determined periodic basis (e.g., weekly, monthly, quarterly, etc.). As described in detail later herein, data maintained in the registry 270 relating to ownership, provenance, and lineage of a digital asset is dynamically updated based on monitoring the digital asset (via the monitoring unit 230)”).
As per Claim 3, the rejection of Claim 1 is incorporated and McCarthy further recites: wherein the second costs include at least one of: costs for deleting the digital asset from the first storage medium based on at least one ESG factor; or costs for adding the digital asset to the second storage medium based on at least one ESG factor. (Par [0047], “As another example, a confidence score corresponding to a digital asset is an ESG confidence score, where the ESG confidence score represents a measurement of sustainability of the digital asset based on ESG factors.”).
As per Claim 4, the rejection of Claim 1 is incorporated and McCarthy further recites: wherein the first costs and the second costs are based on at least one ESG factor related to anticipated user accesses to the digital asset. (Par [0047], “As another example, a confidence score corresponding to a digital asset is an ESG confidence score, where the ESG confidence score represents a measurement of sustainability of the digital asset based on ESG factors.” And par [0079], “The digital tokens provide access to the smart contract. In one embodiment, an entry of the registry 270 corresponding to the underlying digital asset further maps ownership of the digital tokens to a digital asset holder 10 of the underlying digital asset.” And see figures 2-3)
As per Claim 5, the rejection of Claim 1 is incorporated and McCarthy further recites: wherein monitoring the first and second costs is based on a set of stored storage management rules that define the storage cost based on the at least one ESG factor. (Par [0047], “As another example, a confidence score corresponding to a digital asset is an ESG confidence score, where the ESG confidence score represents a measurement of sustainability of the digital asset based on ESG factors.” And see Figures 6-7).
As per Claim 6, the rejection of Claim 1 is incorporated and McCarthy further recites: wherein the at least one ESG factor is based on at least one scope defined by World Resources Institute GHG Protocol Initiative. (Par [0042], (e.g., using ESG factors to evaluate the digital asset's sustainability (i.e., whether the digital asset is ESG compliant), such as how the digital asset was crypto mined), etc.” and see Figures 1 and 6-7 and par [0029], “…may be operative to interface with a communications network using any suitable communications protocol such as, for example, Wi-Fi (e.g., an IEEE 802.11 protocol), Bluetooth high frequency systems (e.g., 900 MHz, 2.4 GHz, and 5.6 GHz communication systems), infrared, GSM, GSM plus EDGE, CDMA, quadband, and other cellular protocols, VOIP, TCP-IP, or any other suitable protocol.”).
As per Claim 7, the rejection of Claim 1 is incorporated and McCarthy further recites: wherein the processes further comprise: creating and storing an artifact identifier record; and using the artifact identifier record to track the storage costs for the digital asset based on the at least one ESG factor. (Par [0064-0065], “Therefore, the registry 270 identifies a digital asset as distressed in response to an adverse event involving the digital asset (e.g., private key lost, theft, fraud, hacked, etc.). As the registry 270 maintains records of ownership of digital assets (i.e., distressed and non-distressed), the registry 270 may be used to trace back where a distressed asset that is stolen originates from. Each record of ownership maintained in the registry 270 corresponds to a digital asset, and maps ownership of the digital asset to a digital asset” and see Figures 6-7).
As per Claims 8-21, being the method claims corresponding to the system claims 1-7 respectively and rejected under the same reason set forth in connection of the rejections of Claims 1-7 and further McCarthy discloses: (Par [0091]).
Conclusion
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sarode; Prashant (US-20230376363-A1), relates to Example models include one or more portfolio allocation models configured to match a risk profile of an investor with an investment goal of the investor, such as an environmental social, and governance (ESG) model, a Retirement Income that Lasts model, a Growth model, and a Fixed Income model.
Spangenberg; Erich Lawson (US-20230230186-A1), relates to An Asset Documentation Array, or containers representing this Array or sub-arrays of it—as disclosed in FIGS. 4A and 4B—can be referenced by multiple NFTs (or their underlying metadata documents) avoiding redundant data storage, which preferable from an environmental and cost perspective, and to provide flexibility to the creator in case the development/maturing process of multiple assets is captured in one chain of custody which is later referenced by more than one NFT.
Greene; William (US-20210065304-A1), relates to the network virtualizer 212 can include a VMware® NSX Manager™. The NSX Manager can be the centralized network management component of NSX, and is installed as a virtual appliance on any ESX™ host (e.g., the hypervisor 210, etc.) in a vCenter Server environment to provide an aggregated system view for a user. For example, an NSX Manager can map to a single vCenterServer environment and one or more NSX Edge, vShield Endpoint, and NSX Data Security instances. For example, the network virtualizer 212 can generate virtualized network resources such as a logical distributed router (LDR) and/or an edge services gateway (ESG).
SRIDHAR; Thayumanavan (US-20190227845-A1), relates to a cloud computing environment or adding resources to an already established cloud computing environment, data center operators struggle to offer cost-effective services while making resources of the infrastructure (e.g., storage hardware, computing hardware, and networking hardware) work together to achieve simplified installation/operation and optimize the resources for improved performance.
11. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELICA RUIZ whose telephone number is (571)270-3158. The examiner can normally be reached M-F 10:00 am to 6:00 pm.
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, Pierre M Vital can be reached on (571) 272-4215. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANGELICA RUIZ/Primary Examiner, Art Unit 2154 May 18, 2026
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