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
This non-final action is responsive to communication filed on 05/18/2026. The applicant hereby elects, without traverse, the subject matter of group II originally set forth in claims 13-17. Claims 1-9, 11-12 and 18-20 have been amended to be directed to the elected subject matter and claims 1-9, 11-12 and 18-20 depend directly or indirectly from independent claim 13. Claims 1-9 and 11-20 are pending, with claim 13 being independent. The restriction requirement is hereby withdrawn. Applicant presents claims that could not have been restricted from the claims drawn to other elected invention had they been presented earlier.
Priority
This application is a continuation in part of Application 17/347,740 filed November 18, 2021. This application claims priority to Application 63/543,163 filed October 9, 2023. Application 17/347,740 is a continuation in part of Application 16/429,644 filed June 3, 2019. Application 16/429,644 claims priority to Application 62/679,041 filed June 1, 2018. Application 16/429,644 is a continuation in part of Application 15/790,328 filed October 23, 2017. Application 15/790,328 is a continuation in part of Application 14/699,460 filed April 29, 2015. Application 14/699,460 claims priority to Application 61/985,693 filed April 29, 2014.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/31/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 13, 14 and 17 are objected to because of the following informalities:
there is insufficient antecedent basis for:
the digital rights, the biometrics, and the creator in claim 13,
the new owner in claim 14,
the geo-location, the user, and the biometric characteristics in claim 17
Appropriate correction is required.
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.
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: “a one click non-fungible token forming component” in claims 1 and 18.
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 § 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 1-20 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 pre-AIA the applicant regards as the invention.
Claim 13 recites “wherein an L2 blockchain is configured…” It is not clear if the L2 blockchain is part of the claimed system. Examiner assumes it is an optional limitation, not part of the claimed system.
Claims 14-20 and 1-9 and 10-12 depending on claim 13 are rejected for the same reasons as detailed above.
In addition for claims 1 and 18, claim limitation “a one click non-fungible token forming component” invokes 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 provide the corresponding structure for “a one click non-fungible token forming component.” Therefore, the claim is indefinite and is 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.
Further for claims 1 and 18, the claims recite “wherein the system includes a one click non-fungible token forming component formed as a cellular communication network based non-fungible token creation system [ ] comprising [ ] a passive biometric user identification technology [ ]; and a one click non-fungible token forming component [ ]”. It is not clear how the one click non-fungible token forming component comprising other element and the one click non-fungible token forming component.
Claims 2-9 and 10-12, and 19-20 depending on claims 1 or 18, and are rejected for the same reasons as detailed above.
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 13-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter.
Claim 13 is a system claim without reciting any hardware component of the system. Since there is no positive recitation of “hardware” in the claim, the claim as a whole is directed towards software per se, which is one of the non-statutory categories.
Claims 14-17 depending on claim 13 do not further recite any hardware, and are rejected for the same reasons as detailed above.
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)(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.
(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 13 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Muller et al. (US 2018/0167198, published Jun. 14, 2018).
As per claim 13, Muller discloses a system for authenticating, accessing, acquiring, storing, transferring and managing digital assets (Muller par. 12, a system is provided for decentralized tracking of assets (hardware or software)) wherein an L2 blockchain is configured to create a digital asset and configured for simultaneously creating and authenticating the digital rights of the digital asset by linking the biometrics of the creator to the digital asset (as indicated above, this is optional limitation, thus, no mapping is presented here).
As per claim 17, Muller discloses the system for authenticating, accessing, acquiring, storing, transferring and managing digital assets of claim 13, wherein the authenticating the digital rights of the digital asset utilizes the geo-Iocation of a smartphone of the user and the biometric characteristics of the user taken within a preset proximity to the smartphone (as indicated above, this limitation is a detail of the optional limitation, thus, no mapping is presented here).
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Muller et al. (US 2018/0167198, published Jun. 14, 2018) and Pacella et al. (US 2020/0204545, filed Dec. 21, 2018).
As per claim 14, Muller discloses the system for authenticating, accessing, acquiring, storing, transferring and managing digital assets of claim 13, wherein the system updates the digital rights of that digital asset during a transfer of ownership by linking [the identifier] of the new owner to the digital asset (Muller par. 12, The blockchain client application is configured to add a new transaction to the blockchain to specify a new owner identifier when a particular asset is sold or transferred and to specify when an update or change is made to a particular asset).
Note: Muller discloses linking the identifier of the new owner to the digital asset, but does not explicitly disclose linking the biometrics of the new owner to the digital asset.
Pacella teaches personal identification information involve biometric and non-biometric information (see Pacella par. 71).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the method of Muller with the teaching of Pacella for using biometric personal identification information for linking to the digital asset (i.e., linking the biometrics of the new owner to the digital asset). One of ordinary skilled in the art would have been motivated because it offers the advantage of improving security and mitigating theft.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Muller et al. (US 2018/0167198, published Jun. 14, 2018) and AIRNFTS (npl: NFT Marketplace, published 05/20/2021).
As per claim 15, Muller discloses the system for authenticating, accessing, acquiring, storing, transferring and managing digital assets of claim 13, does not explicitly disclose wherein the digital asset is a non-fungible token.
AIRNFTS teaches:
the digital asset is a non-fungible token (AIRNFTS pg. 2, NFTs).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the method of Muller with the teaching of AIRNFTS for the digital asset is a non-fungible token. One of ordinary skilled in the art would have been motivated because it offers the advantage of tracking a non-fungible token.
As per claim 16, Muller discloses the system for authenticating, accessing, acquiring, storing, transferring and managing digital assets of claim 13, does not explicitly disclose wherein the system includes a one click non-fungible token forming component.
AIRNFTS teaches:
the system includes a one click non-fungible token forming component (AIRNFTS pg. 2, One click and your NFT is created).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the method of Muller with the teaching of AIRNFTS for the system includes a one click non-fungible token forming component. One of ordinary skilled in the art would have been motivated because it offers the advantage of creating NFT with ease.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20220343328 A1; Systems And Methods For Quality Control Related To Nft Purchase
The present invention relates generally to methods and systems that use tags for engaging with a non-fungible token (NFT). The present invention also relates generally to methods and systems that use tags to enable the creation of an NFT, purchase of an NFT and electronic delivery of an NFT created by accessing or scanning an encoded tag located in, on, or near a point of interest.
US 20190349346 A1; Registry Apparatus, Agent Device, Application Providing Apparatus And Corresponding Methods
The present technique relates to a method of establishing trusted communication between an agent device and an application providing apparatus using a registry apparatus.
US 20210248214 A1; Tokenized Media Content Management
The disclosed technology relates generally to media content files, and more particularly, some embodiments relate to containers for media content and associated content metadata.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHANG DO whose telephone number is (571)270-7837. The examiner can normally be reached Monday-Friday 8:00 - 5:00 EST.
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, RUPAL DHARIA can be reached at (571) 272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KHANG DO/Primary Examiner, Art Unit 2492
Prosecution Insights