Acknowledgments
Claims 21-22, 24, 26-29, 31-32, 34, and 36-39 have been amended.
Claims 21-40 are pending and 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 .
Response to Arguments
Regarding applicant’s arguments:
Applicant’s arguments, see pg. 9, filed 12/15/2025, with respect to Claim Interpretation - 35 USC § 112(f) that removing the reference to “module” renders the claim interpretation moot are persuasive. Therefore, the claim interpretation has been withdrawn.
Applicant’s arguments, see pgs. 9-11, filed 12/15/2025, with respect to the rejections of instant claims 21-40 under Double Patenting that the claims contain differing subject matter and are patently distinct from claims 1-20 of US Patent Application 18/626,841 are not persuasive. Examiner respectively argues the instant claims are an obvious variant because each application comprises authenticating a membership issuer using a graphical user interface; issuing a membership to a user, over a distributed computing network on a server, to a user device associated with the user based on the authentication; generating a cryptographic digital asset associated with the membership; creating the software module including an agreement and one or more predetermined conditions, wherein the software module is programmed to automatically update ownership of the cryptographic digital asset upon completion of the one or more predetermined conditions; associating the cryptographic digital asset with the user…and sending for display to a user device, confirmation of the software module associated with the cryptographic digital asset. Further applicant’s argument that the rejection of instant claim 21 does not address the differences between the claims of the reference application and the patentably distinct amended claims, such as “creating an agreement application including an agreement and one or more predetermined conditions, wherein: the agreement application is programmed to automatically update ownership of the cryptographic digital asset upon completion of the one or more predetermined conditions and the agreement application is configured to contain information comprising at least one value associated with the cryptographic digital asset, an image associated with the cryptographic digital asset, and a unique identifier” is not persuasive because the amended claim is taught by Nahapetyan (US 20240370942) Paragraphs [0066-0068] and it would be obvious to combine the reference to the instant claim. More detail is provided below. Therefore, the rejection has been maintained.
Applicant’s arguments, see pgs. 11-13, filed 12/15/2025, with respect to the rejections of claim 1 under Claim Rejection - 35 USC § 102 that Nahapetyan does not anticipate amended claim 1, specifically the amended limitation “the agreement application contains one or more agreement attributes based on an agreement type, and the user” are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under Claim Rejection - 35 USC § 103 in view of Nam (WO 2023106581).
Priority
Applicant's claim for the benefit of a US Provisional Application No. 63/510,478 filed on 06/27/2023 is acknowledged. Applicant's claim for the benefit of a US Provisional Application No. 63/607,745 filed on 12/08/2023 is acknowledged. Applicant's claim for the benefit of a US Patent Application No. 18/626,841 filed on 04/04/2024 is acknowledged.
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 21-40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/626,841 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each application comprises authenticating a membership issuer using a graphical user interface; issuing a membership to a user, over a distributed computing network on a server, to a user device associated with the user based on the authentication; generating a cryptographic digital asset associated with the membership; creating the software module including an agreement and one or more predetermined conditions, wherein the software module is programmed to automatically update ownership of the cryptographic digital asset upon completion of the one or more predetermined conditions; associating the cryptographic digital asset with the user…and sending for display to a user device, confirmation of the software module associated with the cryptographic digital asset. However, claims 1-20 of copending 18/626,841 does not explicitly teach creating an agreement application including an agreement and one or more predetermined conditions, wherein: the agreement application is programmed to automatically update ownership of the cryptographic digital asset upon completion of the one or more predetermined conditions and the agreement application is configured to contain information comprising at least one value associated with the cryptographic digital asset, an image associated with the cryptographic digital asset, and a unique identifier. Nahapetyan (US 20240370942) from same or similar field of endeavor teaches creating an agreement application including an agreement and one or more predetermined conditions, wherein: the agreement application is programmed to automatically update ownership of the cryptographic digital asset upon completion of the one or more predetermined conditions and the agreement application is configured to contain information comprising at least one value associated with the cryptographic digital asset, an image associated with the cryptographic digital asset, and a unique identifier (Paragraphs 0066-0068). It would be obvious to combine Nahapetyan into the copending application 18/956,103 because unlike conventional applications, membership to the new club is automatically managed through ownership of the non-fungible tokens (Nahapetyan Paragraph 0130).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 21-40 are rejected under 35 U.S.C. 103 as being anticipated by Nahapetyan (US 20240370942) in view of Nam (WO 2023106581).
Regarding Claims 21 and 31, Nahapetyan teaches authenticating a membership issuer using a graphical user interface (Paragraphs 0173-0174 teach if an invitee user elects or chooses to join a community to which she/he/they has been invited, then the systems and methods of the present disclosure may query the user for an invitation code or ID passphrase; after the user enters the code on her/his/their user device, the user device sends a request back up to a web server with the user account information and the invite ID passphrase; the web server uses this information to authenticate the invitee, for example, by verifying that the user is in possession of the key that grants her/him/them access to the invited DAO or community); issuing a membership to a user, over a distributed computing network on a server, to a user device associated with the user based on the authentication (Paragraph 0175 teaches the server then generates or mints a new non-fungible token, for example, by using a secret key to execute a command to the blockchain; the system may also create an active membership card for the user for the respective community); generating a cryptographic digital asset associated with the membership (Paragraph 0175 teaches the server then generates or mints a new non-fungible token, for example, by using a secret key to execute a command to the blockchain; the token is owned or possessed by the authenticated invitee and grants her/him/them access into the decentralized community; the minted token comprises or is embedded, incorporated, or associated with the membership card); creating an agreement application including an agreement and one or more predetermined conditions, wherein: the agreement application is programmed to automatically update ownership of the cryptographic digital asset upon completion of the one or more predetermined conditions and the agreement application is configured to contain information comprising at least one value associated with the cryptographic digital asset, an image associated with the cryptographic digital asset, and a unique identifier (Paragraphs 0066-0068 and 0119 teach non-fungible tokens are “minted,” and their ownership assigned, using smart contracts; smart contracts are computer code capable of automatically executing actions based on if/then statements; at a basic level, smart contracts act as a tool to implement some kind of agreement associated with the token; when a new non-fungible token is minted, the smart contract automatically sets the creator, which can be the administrator or operator for ecosystem, as the owner; after that, smart contracts can transfer the non-fungible tokens to new owners, such as various users, when such users agree to join as members of a community; smart contracts implement actions, transactions, administration, governance, and the like in connection with the activity of members in their communities; for example, a smart contract can implement gate-keeping for the community, checking whether users have the appropriate token for a club and allowing or granting only those users with the appropriate tokens access to the on-line or virtual space or the community; the application uses non-fungible tokens specifically to maintain membership within decentralized communities; a non-fungible token can function to represent a user or member's identity, property rights, privileges, etc. for the community; non-fungible tokens are represented, e.g., on a user interface associated with the application, through algorithmically generated images that resemble a uniquely editioned “membership card;” when creating a club, the application provides an option to add in photos and generate the NFT membership card design algorithmically and/or through neural networks; the received parameters are used to generate or mint non-fungible tokens that may be used for membership in the new community; membership tokens can be generated using one of the images provided by the user; the image is processed or transformed into a “membership card;” when the club creator uploads an image to use as the basis for the membership card NFT, the image is sent through an image processing pipeline; the image is scaled to the appropriate starting size; the features of the image are softened and blurred; a metallic sheen is added; club metadata is added to the appearance of the card, such as the club name and NFT edition number); associating the cryptographic digital asset with the user (Paragraph 0161 teaches when that person clicks on that link, the token or tokens are seamlessly created (minted) and deposited into that person's wallet (or a custodial wallet is created for her/him/them if she/he/they do not already have one on the application); the digital wallet allows a user to quickly view of all of her/his/their digital memberships); enforcing the agreement and the one or more predetermined conditions using the agreement application (Paragraphs 0095 and 0122 teach a smart contract can implement or execute a purchase of a product or service by one member from another-such as a fan member buying the latest song track from an artist member; the smart contracts can implement the policies, processes, procedures, rules, bylaws, etc. for the DAO or community as the members interact); and sending for display to a user device, confirmation of the agreement application associated with the cryptographic digital asset (Paragraph 0172 teaches FIG. 10 shows an example of a screenshot of a user interface for a digital wallet with one or more membership cards; the digital wallet may include active membership cards for each community to which a user is already a member and open membership cards for each community to which a user has been invited; each membership card(whether active or open) can be associated with an active element or icon that can be “pushed” or activated by the user; upon activation of the respective active element by the user, the systems and methods (e.g., application) will present an interface showing the membership card virtually being removed from the digital wallet and presented in full or complete form on the screen (e.g., of user device)).
However, Nahapetyan does not explicitly teach the agreement application contains one or more agreement attributes based on an agreement type and the user.
Nam from same or similar field of endeavor teaches the agreement application contains one or more agreement attributes based on an agreement type and the user (Paragraphs 0013, 0068-0069, and 0086 teach the membership includes a plurality of types of memberships, the application for issuance of the memberships includes an application for issuance of at least one type of memberships among the plurality of types of memberships, and the remaining; the quantity is the quantity obtained by subtracting the issued quantity of each of the plurality of types of membership certificates from the specific quantity for each of the plurality of types of membership certificates, and the issuance of the membership certificates can be executed after checking the remaining quantity according to the type of membership certificate requested for issuance; when a member logged in with user ID sets the type of NFT membership (e.g., anonymous membership or a registered membership) and applies for sale, the NFT membership exchange determines the type of membership the user wants to sell; when a user registers as an integrated member, the type of user may be classified as an individual or a store owner, and the type of NFT membership is determined according to the type of user (e.g., a registered membership for individuals and an anonymous membership for stores); accordingly, the type of NFT membership can be divided and determined; when it is determined that the NFT membership application for sale is for a named membership, issuance of a named membership can be requested with the corresponding user ID; if it is determined that the NFT membership application for sale is for an anonymous membership, issuance of an anonymous membership can be requested with the corresponding user ID; according to the request for membership issuance, the membership DB of the screen golf company is searched, the memberships are classified, the number of issued memberships is determined, and whether membership can be issued can be determined; any user may sign up as an integrated member of the screen golf company in the NFT membership distribution system in order to receive membership rights; integrated members of the screen golf company can log in to the NFT membership distribution system, and users who cannot log in can sign up for membership (2301). A user who has successfully logged in as an integrated member of the screen golf company can apply for the sale of NFT membership rights; the determination of the remaining number of NFT memberships may be made by checking the issuance limit (N number) and the existing issuance quantity, and if the existing issuance quantity is less than the issuance limit, membership is issued through NFT minting After additional issuance, membership may be issued).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing data of the claimed invention to have modified Nahapetyan to incorporate the teachings of Nam for the agreement application to contains one or more agreement attributes based on an agreement type and the user.
There is motivation to combine Nam into Nahapetyan because it was difficult to realize the issuance of memberships for virtual sports facilities, as there was no appropriate means to sell a limited number of memberships for virtual sports facilities and to trade and monetize them. The NFT-based virtual sports facility membership issuance system includes an issuing server capable of issuing a membership that can use a virtual sports facility based on NFT. The issuing server issues the membership through NFT minting, receives an application for issuance of the membership, checks the remaining quantity of the membership according to the issuance request, and issues the membership if the remaining quantity is at least one or more (Nam Paragraphs 0003 and 0012).
Regarding Claim 21, Nahapetyan teaches a computer-implemented method executed by at least one processor, for management of user memberships (Paragraph 0162 teaches FIG. 8 is a simplified diagram of a method for receiving a non-fungible token through an invitation link, according to some embodiments).
Regarding Claim 31, Nahapetyan teaches a system for management of user memberships using a software module, comprising: a memory storing instructions; and at least one processor in electronic communication with the memory, the at least one processor configured to execute the instructions (Paragraph 0162 teaches one or more of the processes of method may be implemented, at least in part, in the form of executable code stored on non-transitory, tangible, machine-readable media that when run by one or more processors—such as may be present, for example, in user device shown in FIG. 1 or one or more servers, user computers, and mobile devices of the networked computing environment shown in FIG. 2 —may cause the one or more processors to perform one or more of the processes).
Regarding Claims 22 and 32, the combination of Nahapetyan and Nam teaches all the limitations of claims 21 and 31 above; and Nahapetyan further teaches wherein the agreement application is embedded with the one or more predetermined conditions to ensure compliance with a membership regulation (Paragraphs 0087 and 0095 teach ecosystem for one or more non-fungible token (NFT)-gated communities is supported or implemented with computer hardware and software which together execute the necessary processes, algorithms, instructions, modules, and/or operations for ecosystem; these operations and processes include, for example, creating the on-line or virtual space for each community, creating a decentralized autonomous organization (DAO) for a community, generating non-fungible tokens for use by members, administering the communities (e.g., by checking tokens, hosting the on-line or virtual space, adding, storing, deleting, or removing content, executing smart contracts, administering voting and elections, admitting new members and removing existing members, maintaining or ensuring compliance with policies and processes), etc.; such smart contracts implement actions, transactions, administration, governance, and the like in connection with the activity of members in their communities; for example, a smart contract can implement gate-keeping for the community, checking whether users have the appropriate token for a club and allowing or granting only those users with the appropriate tokens access to the on-line or virtual space or the community; as another example, a smart contract can implement or execute a purchase of a product or service by one member from another-such as a fan member buying the latest song track from an artist member; as yet another example, a smart contract can implement voting or elections for the community, such as the members voting on new officers or the location of the next in-person meeting).
Regarding Claims 23 and 33, the combination of Nahapetyan and Nam teaches all the limitations of claims 22 and 32 above; and Nahapetyan further teaches wherein the membership regulation refers to at least one of a set of rules, a set of requirements, a set of regulations, or a set of qualifications associated with the membership issuer (Paragraph 0122 teaches the smart contracts can implement the policies, processes, procedures, rules, bylaws, etc. for the DAO or community as the members interact; for example, one or more smart contracts may provide or support the processes or procedures for electing officers for a community, including opening up the election, issuing ballots to voting members, receiving and counting votes, and announcing the winners; as another example, a smart contract may provide or support the processes or rules for admitting new members to a community (e.g., upon a majority vote of existing members); one or more smart contracts may relate to the policies or bylaws for how to disband or dissolve the community, and what happens to the community's assets and content in such situation; as yet another example, a smart contract may provide or support the sale or purchase of various goods or services between members of a community).
Regarding Claims 24 and 34, the combination of Nahapetyan and Nam teaches all the limitations of claims 21 and 31 above; and Nahapetyan further teaches wherein the agreement application is associated with each individual transaction between users (Paragraph 0122 teaches the smart contract causes the funds to be disbursed to the seller, and transfers rights from the seller to the purchaser).
Regarding Claims 25 and 35, the combination of Nahapetyan and Nam teaches all the limitations of claims 21 and 31 above; and Nahapetyan further teaches wherein the cryptographic digital asset is a non-fungible token (NFT) (Paragraphs 0063-0064 teach access to the on-line or virtual space of a community can be restricted or controlled by the use of non-fungible tokens (NFTs); each member of a community can be assigned, granted, or associated with her/his/their own unique non-fungible token for that community; each non-fungible token is a digital asset, similar to cryptocurrency, and can be owned by only one person at a time; unlike cryptocurrency tokens, which are fungible with many of the same token existing, non-fungible tokens are limited to a supply of one unique digital token).
Regarding Claims 26 and 36, the combination of Nahapetyan and Nam teaches all the limitations of claims 21 and 31 above; and Nahapetyan further teaches wherein the agreement application is linked to a template associated with the user (Paragraph 0121 teaches one or more parameters input by the creating user are converted into smart contracts for the DAO; for example, based on input or parameters provided by the user, systems and methods of the present disclosure identify appropriate or relevant forms of smart contracts; fill-in, modify, or complete the form smart contracts, e.g., for implementing or executing transactions, voting on action items, elections of new officers, admission of new members, deletion or removal of existing members, the deletion or removal of text, comments, discussion, images, audio or video content; and store, maintain, deploy, or execute the completed smart contracts in order to implement or support the DAO).
Regarding Claims 27 and 37, the combination of Nahapetyan and Nam teaches all the limitations of claims 21 and 31 above; and Nahapetyan further teaches wherein the agreement application is self-executing (Paragraph 0122 teaches the smart contracts are self-executing).
Regarding Claims 28 and 38, the combination of Nahapetyan and Nam teaches all the limitations of claims 21 and 31 above; and Nahapetyan further teaches wherein the agreement application is used to transfer ownership of the cryptographic digital asset from the user to another user (Paragraphs 0067 and 0122 teach after that, smart contracts can transfer the non-fungible tokens to new owners, such as various users, when such users agree to join as members of a community; the smart contract causes the funds to be disbursed to the seller, and transfers rights to the digital artwork from the seller to the purchaser).
Regarding Claims 29 and 39, the combination of Nahapetyan and Nam teaches all the limitations of claims 21 and 31 above; and Nahapetyan further teaches wherein the agreement application authenticates ownership of the membership (Paragraph 0095 teaches user computers, and mobile devices store and maintain one or more forms, code, or modules for smart contracts; such smart contracts implement actions, transactions, administration, governance, and the like in connection with the activity of members in their communities; for example, a smart contract can implement gate-keeping for the community, checking whether users have the appropriate token for a club and allowing or granting only those users with the appropriate tokens access to the on-line or virtual space or the community).
Regarding Claims 30 and 40, the combination of Nahapetyan and Nam teaches all the limitations of claims 21 and 31 above; and Nahapetyan further teaches wherein the membership issuer can track membership ownerships on a distributed cryptographic digital asset private key generator (Paragraphs 0067, 0069-0070, and 0072 teach when a new non-fungible token is minted, the smart contract automatically sets the creator, which can be the administrator or operator for ecosystem, as the owner; after that, smart contracts can transfer the non-fungible tokens to new owners, such as various users, when such users agree to join as members of a community; this governance and control of the community by members can be implemented or provided through smart contracts living on the blockchain that execute decisions automatically, for example, based on voting by token holders; communities of ecosystem are decentralized, leveraging peer-to-peer technologies such as layer one blockchains to maintain membership information; as such, membership for each community can be verified in a trust-less, distributed, and permanent way that cannot be tampered with by a third-party, such as the administrator or operator of ecosystem; a decentralized community, like any one or more of the communities of ecosystem, is managed through membership that is maintained using blockchain or distributed ledger technology, where members hold non-fungible tokens representing participation and ownership in this community; the distributed ledger prevents a single centralized service from removing members or shutting down the community; Furthermore, the distributed ledger gives the token owners the power to move from one platform to another at their will).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hu (US 20240202721) teaches a method performed by an NFT platform includes generating NFT secondary file information relating to a digital file and the NFT, wherein the NFT secondary file information comprises a content ID of the digital file stored in a data storage, wherein the data storage is a permanent and immutable data storage. The method may also include the NFT platform generating an NFT metadata file comprising the content ID of the digital file stored in the data storage, storing the NFT metadata file and the NFT secondary file information in the data storage, generating a smart contract of the NFT comprising a link to a content ID of the NFT metadata file stored in the data storage, and deploying the smart contact to a distributed ledger system.
Lee (US 20250254169) teaches methods and systems for access control in an online environment, such as an e-commerce platform. The system receives a designation of a non-fungible token (NFT) collection in connection with a merchant account, each NFT having a respective combination of attributes. An association is detected between a product record and a combination of two or more of the attributes and the system automatically generates an access rule with regard to the product record that is conditional on ownership of an NFT in the collection that has the combination of the two or more attributes. When a request for access is received, the access rule is applied to provide a user device with access to the one or more product records based on verification of the ownership by the user device of an NFT that meets the condition.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/COURTNEY P JONES/Primary Examiner, Art Unit 3699
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