DETAILED ACTION
Status of Application
This action is a Non-Final Rejection. This action is in response to the response to the Restriction filed on June 26, 2026. Applicant’s election without traverse of claims 14-20 in the reply filed on June 26, 2026 is acknowledged. Claims 1-13 have been withdrawn from consideration.
Claims 1-20 are pending and claims 14-20 are rejected.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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 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.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on November 20, 2024, May 15, 2025, and October 28, 2025 have been considered by the examiner.
Priority
This application was filed on November 20, 2024 and is a continuation of other applications, one of which is a continuation-in-part of Application No. 16/851,184, which claims priority to provisional application number 62/834,999. The earlier filed applications were reviewed to determine whether the instant claims are entitled to the priority date of those applications. Claim 1 does not appear to be supported by the earlier filed applications. For example, Application No. 16/851,184 does not appear to support limitations from claim 14 such as an asset pair and a wallet that is owned by a liquidity token. If Applicant believes that the instant claims are entitled to an effective filing date earlier than April 29, 2020, Applicant should provide a statement regarding the priority date for the claims and show where support is found in the priority document.
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 14-20 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03)
Yes, with respect to claims 14-20, which recite a system and are therefore directed to the statutory class of machine or manufacture.
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a))
The following claims identify the limitations that recite additional elements in bold and the abstract idea without bold:
14. A computer system for creating a data structure representing a tokenized pair of assets comprising:
at least one computer processor;
at least one memory; and
a data structure recorded on a non-transient media;
wherein the at least one computer processor creates a digital token for each side of an asset pair;
wherein the at least one computer processor assigns ownership of each of the digital tokens to a wallet that is owned by a smart contract;
wherein a fungible digital token wraps a non-fungible token through an ownership assignment of the non-fungible token to a wallet associated with the fungible digital token to thereby create the data structure;
wherein the at least one computer processor creates non-fungible asset tokens; and
wherein the at least one computer processor assigns ownership of each of the asset tokens to a wallet that is owned by a liquidity token.
15. The system of claim 14, wherein an elastic securitization algorithm is applied to allocate resources invested in the assets of the asset pair to meet underlying liquidity needs.
16. The system of claim 14, wherein the system is operable to receive a request to deposit one or more assets to at least one asset pool or withdraw one or more assets from the at least one asset pool and wherein the at least one computer processor is operable to cause the one or more assets to be deposited into the at least one asset pool or the one or more assets to be withdrawn from the at least one asset pool.
17. The system of claim 14, wherein each digital token is created in accordance with a class definition, wherein the class definition provides properties and functions of the non-fungible token.
18. The system of claim 14, wherein the data structure permits fractional ownership of the assets.
19. The system of claim 14, further comprising a communication interface associated with the digital token in accordance with the class definition, wherein the communication interface is compliant with a communication specification implemented by an asset registry and which is configured to expose a set of predefined functions, wherein the set of predefined functions include asset ownership transfer functions, asset valuation publication functions, asset attribute determination functions, and/or asset specific processing logic.
20. The system of claim 19, wherein the asset ownership transfer functions are operable to be executed and, include at least one of a Create Sell Order function, a Cancel Sell Order function, an Accept Sell Order Function, a Create Purchase Order function, a Cancel Purchase Order Function, an Accept Purchase Order Function, and/or a Reject Purchase Order Function.
Yes. But for the recited additional elements as shown above in bold, the remaining limitations of the claim recite certain methods of organizing human activity. The claim limitations identified as abstract idea are directed to creating a tokenized pair of assets. This type of method of organizing human activity is a fundamental economic practice and it is a commercial or legal interaction such as a legal obligation, sales activity or behavior, or business relation. Thus, the claims recite an abstract idea.
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d))
No. The claims as a whole merely use a computer as a tool to perform the abstract idea. The technology related components (i.e., additional elements that are in bold above) are recited at a high level of generality and are merely invoked as tools to perform the abstract idea. For example, the recited additional elements involve digital data that requires a programmed general purpose computing device. Simply implementing the abstract idea using generic computers or devices is not a practical application of the abstract idea. Furthermore, the abstract idea is merely being linked to a particular technological environment, i.e., a blockchain environment. Employing well known technology within a blockchain environment to execute the abstract idea, even when limiting the use of the abstract idea to this environment, does not integrate the exception into a practical application or add significantly more. Additionally, there is no improvement to the functioning of a computer or technology. Therefore, the abstract idea is not integrated into a practical application.
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05)
No. As discussed with respect to Step 2A, Prong 2, the additional elements in the claims, both individually and in combination, amount to no more than tools to perform the abstract idea. Merely performing the abstract idea using a computer cannot provide an inventive concept. Therefore, the claims do not provide an inventive concept.
As such, the claims are not patent eligible.
35 USC §§ 102 and 103
The claims are not rejected under 35 U.S.C. 102 or 103. Claim 14 as a whole was not found to be disclosed in or obvious in light of the prior art even though individual concepts are known in the art. For example, creating a digital token for each side of an asset pair, assigning ownership of each of the digital tokens to a wallet that is owned by a smart contract, having a fungible token wrap a nonfungible token through an ownership assignment of the nonfungible token to a wallet associated with the fungible token, creating nonfungible asset tokens, and assigning ownership of each of the asset tokens to a wallet that is owned by a liquidity token, is not obvious in light of the prior art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,190,385 B2. The following table shows similar claim language in bold.
Instant Application – Claim 14
Patent Number 12,190,385 B2 (Application Number 17/869,884) – Claim 13
14. A computer system for creating a data structure representing a tokenized pair of assets comprising:
at least one computer processor;
at least one memory; and
a data structure recorded on a non-transient media;
wherein the at least one computer processor creates a digital token for each side of an asset pair;
wherein the at least one computer processor assigns ownership of each of the digital tokens to a wallet that is owned by a smart contract;
wherein a fungible digital token wraps a non-fungible token through an ownership assignment of the non-fungible token to a wallet associated with the fungible digital token to thereby create the data structure;
wherein the at least one computer processor creates non-fungible asset tokens; and
wherein the at least one computer processor assigns ownership of each of the asset tokens to a wallet that is owned by a liquidity token.
13. A computer system for creating a data structure representing a tokenized pair of assets comprising:
at least one computer processor;
at least one memory; and
a data structure recorded on a non-transient media;
wherein the at least one computer processor creates a digital token for each side of an asset pair, wherein each digital token is created in accordance with a class definition, and wherein each digital token includes a unique token identifier that is registered in association with the corresponding asset as a unique record in the at least one memory;
wherein the at least one computer processor assigns ownership of each of the digital tokens to a respective wallet that is owned by a smart contract;
wherein a fungible digital token wraps a non-fungible token through an ownership assignment of the non-fungible token to a wallet associated with the fungible digital token to thereby create a data structure that represents revenue generated by providing liquidity between assets of the asset pair;
wherein the at least one computer processor creates non-fungible asset tokens, wherein each non-fungible asset token represents each asset pool in the asset pair in accordance with the class definition, wherein each non-fungible token includes a unique non-fungible token identifier; and
wherein the at least one computer processor assigns ownership of each of the asset tokens to a wallet that is owned by a liquidity token.
Although the claims at issue are not identical, the reference claim is not patentably distinct from instant claim 1 because each is drawn to the same invention. Claim 14 is anticipated by reference claim 13. To overcome this rejection, Applicant should file a Terminal Disclaimer or amend the claims. Upon double patenting being the only remaining rejection in this application, Examiner will review and update it, as appropriate, in light of the pending claims.
Relevant Prior Art
The following references are relevant to Applicant’s invention:
Hill et al., U.S. Patent Application Publication Number 2019/0287175 A1. Hill teaches a decentralized investment fund that issues ownership tokens on a shared ledger.
Pierce et al., U.S. Patent Application Publication Number 2019/0028276 A1. Pierce teaches a blockchain with digital tradeable tokens.
Chang, U.S. Patent Application Publication Number 2021/0097530 A1. Chang teaches a blockchain trading system platform that receives token liquidation requests. Tokens are liquidated and recorded on the blockchain.
Lohe et al., U.S. Patent Application Publication Number 2017/0085545 A1. Lohe teaches virtual currency transactions.
Wilson, JR. et al., U.S. Patent Application Publication Number 20170103385 A1. Wilson teaches a platform for settling transactions involving digital rights and memorializing the transactions on a distributed ledger.
Tilfors, U.S. Patent Application Publication Number 2020/0258153 A1. Tilfors teaches an electronic market platform that allows participants to transact and refine initially agreed-to matches.
de Jong et al., U.S. Patent Number 10,657,595 B2. This reference teaches a system and method for issuing, managing, and transferring asset-backed asset tokens.
Youb et al., U.S. Patent Application Publication Number 2019/0080392 A1. This reference teaches a method for creating an asset-backed distributed ledger token representing a smart contract.
Krishna, U.S. Patent Application Publication Number 2020/0226687 A1. This reference teaches systems and methods for liquidity transfer.
Wrapped Tokens (“Wrapped Tokens. A multi-institutional framework for tokenizing any asset.” Whitepaper v0.2, https://wbtc.network/assets/wrapped-tokens-whitepaper.pdf (Jan. 24, 2019).).
Konings, Herwig. “Security Tokens Explained in 4 Layers; A Guide for Investors and Issuers,” Security Token Market Blog, https://blog.stomarket.com/security-tokens-explained-in-4-layers-a-guide-for-investors-and-issuers-a58b53a8da30?gi=9bde01c298e8 (Nov. 27, 2018). Konings discusses exchanges and liquidity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH H ROSEN whose telephone number is (571) 270-1850. The examiner can normally be reached Monday - Friday, 10 AM ET - 7 PM ET.
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/ELIZABETH H ROSEN/Primary Examiner, 3693
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