DETAILED ACTION
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 .
Status of Claims
Office Action is in response to the Applicant's amendments and remarks filed1/20/2026. Claims 1, 10, 12, 17 and 19 were amended. Claims 1-20 are presently pending and presented for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/5/2025, 1/21/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Remarks/Arguments
In regards to rejection under 35 U.S.C. § 101: Applicant’s arguments, filed 1/20/2026, with respect to claims 1-20 have been fully considered and are not persuasive.
In regards to Applicant’s arguments that “Applicant respectfully disagrees with the 35 U.S.C. § 101 rejection, and submits that the pending claims, without amendments, are patent-eligible and allowable under 35 U.S.C. § 101. Nevertheless, solely for purposes of expediting prosecution, and without conceding the propriety of the Office Action's rejections, independent claims 1, 10, and 17 are amended, rendering the 35 U.S.C. § 101 rejection moot for at least the reasons outlined below… Applicant submits that the currently amended independent claims recite subject matter that is patent-eligible and non-abstract for at least similar reasons as the claims at issue in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) ("McRO"). In McRO, the Federal Circuit held that claims reciting "automatically animating lip synchronization and facial expression" based on a "set of rules that define output morph weight," with the "rules [being] applied to [a] timed transcript to determine the morph weight outputs" were non-abstract and patent-eligible because they were "limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques" by "incorporating the specific features of the rules as claim limitations." Id., at 1307 and 1316. Similarly, the independent claims as amended recite a specific computerized process that automatically generates a digital asset using parameters and tracked structural modifications to the physical feature of a property, which is analogous in certain respects to the "automatically animating lip synchronization and facial expression" based on a "set of rules that define output morph weight" ofMcRO. Id., at 1307… Applicant submits that the currently amended claims incorporate a practical application and are patent-eligible for at least similar reasons recited in claim 1 of Example 42 in the USPTO's Subject Matter Eligibility Examples 37-42. The USPTO's Subject Matter Eligibility Examples note that claim 1 of Example 42, which recited "converting [...] non-standardized updated information into the standardized format," storing the same updated information "in the collection of medical records in the standardized format," and "transmitting [a] message [...] so that each user has immediate access to up-to-date patient information" was deemed patent-eligible, because it "recite[d] a specific improvement over prior art systems by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user," and thus, integrated an abstract idea into a practical application… Applicant notes that MPEP § 2106.05(f) clarifies that "[w]hen determining whether a claim simply recites a judicial exception with the words 'apply it' (or an equivalent), ... examiners may consider [...] [w]hether the claim ... fails to recite details of how a solution to a problem is accomplished" (emphasis added). Applicant submits that the amended independent claims recite details of how the systems and methods accomplish "automatically tracking structural modifications to a physical feature of the property over time,""automatically generating the transferrable digital asset associated with the property based on ... the structural modifications," and "outputting an arrangement of... structural modification," among other details of how a solution to a problem is accomplished. Applicant further adds that additional elements, considered together, represent an inventive concept ("something more") at least because they represent "[i]mprovements to the functioning of a computer" under MPEP § 2106.05(I)(A)(i)-(iii) for at least the reasons discussed above with respect to the considerations for Step 2A (prong 2)”, (see remarks pg. 7-9).
Examiner respectfully disagrees, the current claims are not statutory because they are directed towards an abstract idea without significantly more. The claims recite method for generating a transferrable asset associated with a property, which is a method of managing interactions between people, which falls into the methods of organizing human activity grouping as the individual utilizing a database can collect and transmit data with respect to physical property and maintain updates done to the physical features of the property. The computing elements such as “digital in claim 1; digital, memory, processor in claim 10; computer-readable storage medium, program, processor, digital in claim 17” are recited at a high level of generality and are generically recited computer elements. The generically recited computer elements amount to simply implementing the abstract idea on a computer. The combination of these additional elements are additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use. Also, with respect to technological improvement "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, elements being analyzed for significantly more are mere generic computer components being implemented to implement the abstract idea on a computer.
Response to Prior Art Arguments
Applicant's prior art arguments filed 1/20/2026 are moot in light of the newly cited Fakieh.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites method for generating a transferrable asset associated with a property.
Step 2A – Prong 1
Independent Claims 1, 10 and 17 as a whole recite a method of organizing human activity. The limitations from exemplary Claim 1 reciting “determining parameters associated with the property, wherein the parameters include fixed geographic location coordinates associated with the property; automatically tracking structural modifications to a physical feature of the property over time based on private information and public information associated with the property; automatically generating the transferrable asset associated with the property based on the parameters of the property and the structural modifications to the physical feature of property; and outputting an arrangement of the parameters and of the structural modifications” is a method of managing interactions between people, which falls into the certain methods of organizing human activity grouping. The mere recitation of a generic computer (digital in claim 1; digital, memory, processor in claim 10; computer-readable storage medium, program, processor, digital in claim 17) does not take the claim out of the methods of organizing human activity grouping. Thus, the claim recites an abstract idea.
Step 2A - Prong 2: Claims 1-20 and their underlining limitations, steps, features and terms, are further inspected by the Examiner under the current examining guidelines, and found, both individually and as a whole, not to include additional elements that are sufficient to integrate the abstract idea into a practical application. The limitations are directed to limitations referenced in MPEP 2106.05 that are not enough to integrate the abstract idea into a practical application. Limitations that are not enough include, as a non-limiting or non-exclusive examples, such as: (i) adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions, (ii) insignificant extra solution activity, and/or (iii) generally linking the use of the judicial exception to a particular technological environment or field of use.
This judicial exception is not integrated into a practical application because the claim recites the additional elements of (digital in claim 1; digital, memory, processor in claim 10; computer-readable storage medium, program, processor, digital in claim 17). The digital in claim 1; digital, memory, processor in claim 10; computer-readable storage medium, program, processor, digital in claim 17, are recited at a high level of generality and are generically recited computer elements. The generically recited computer elements amount to simply implementing the abstract idea on a computer. The combination of these additional elements are additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use. Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above, the additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use. Thus, even when viewed as an ordered combination, nothing in the claims add significantly more (i.e. an inventive concept) to the abstract idea. The claims are ineligible.
Dependent claims 2-9, 11-16 and 18-20 are also directed to same grouping of methods of organizing human activity. The additional elements of the digital in claim 2, 11 and 18; computer-readable storage medium in claims 18-20; GNSS in claims 4, 13 and 20; virtual property in claim 9, are additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use. Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
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, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating
obviousness or nonobviousness.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Branscomb et al (US Patent Application Publication No. 20150087263 - hereinafter Brans) in view of Fakieh et al (US Patent Application Publication No. 20250078183 - hereinafter Fakieh).
Re. claims 1, 10 and 17; Brans teaches:
A method for generating a transferrable digital asset associated with property, the method comprising:
determining parameters associated with the property, wherein the parameters include fixed geographic location coordinates associated with the property; [Brans; ¶14, ¶26 and ¶31-¶32 such as for example “the customer may set up checkpoints by drawing multiple small geo-fences for a scavenger hunt where users complete each checkpoint by taking a picture there, scanning a barcode, shaking the mobile device at the proper location, simply arriving in the geo-fence area, or any other mobile device activity”].
tracking structural modifications to the property over time based on private information and public information associated with the property; [Brans; Abstract, ¶31-¶41 and ¶51 as the ability to modify or pre-draw path vectors for geo-fence area such as “invention adds a motion component to a geo-fence or a vector with an area. The system permits the planner of a promotion to pre-draw the path vectors for the geo-fence. So, the promotion planner may create a geo-fence area on a displayed map, and then create a path or vector on the map over which the center of the geo-fence will traverse”].
generating the transferrable digital asset associated with the property, wherein the transferrable digital asset includes the parameters of the property and the structural modifications to the property; and [Brans; ¶38-¶50 and ¶55].
outputting an arrangement of the parameters and of the structural modifications. [Brans; ¶31].
Brans doesn’t teach, Fakieh teaches:
automatically tracking structural modifications to a physical feature of the property over time based on private information and public information associated with the property; [Fakieh; ¶174 shows identification of a change that detects changes to the property site, such as new structures, vegetation removal, both elements are physical changes to the property].
It would have been obvious to one of ordinary skill in the art before the effective filing date to include limitation(s) as taught by Fakieh in the system of Brans, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Re. claims 2, 11 and 18; Brans in view of Fakieh teaches method of claim 1.
Brans teaches:
wherein the transferrable digital asset has an ownership attribute, and wherein the ownership attribute can be modified to transfer ownership of the transferrable digital asset from a first owner to a second owner. [Brans; ¶46-¶49].
Re. claims 3, 12 and 19; Brans in view of Fakieh teaches method of claim 1.
Brans teaches:
wherein the parameters include materials used in association with the property, and wherein at least one structural modification of the structural modifications to the property is a modification to the materials used in association with the property. [Brans; ¶14 and ¶23].
Re. claims 4, 13 and 20; Brans in view of Fakieh teaches method of claim 1.
Brans teaches:
wherein the fixed geographic location coordinates are Global Navigation Satellite System (GNSS) coordinates. [Brans; ¶15 and ¶23].
Re. claims 5 and 14; Brans in view of Fakieh teaches method of claim 1.
Brans teaches:
wherein the fixed geographic location coordinates are associated with a boundary of the property. [Brans; ¶47].
Re. claims 6 and 15; Brans in view of Fakieh teaches method of claim 1.
Brans teaches:
wherein the parameters further include information of human experiences associated with the fixed geographic location coordinates. [Brans; ¶32-¶41].
Re. claims 7 and 16; Brans in view of Fakieh teaches method of claim 1.
Brans teaches:
wherein the fixed geographic location coordinates are also mapped through time. [Brans; ¶25 and ¶42].
Re. claims 8; Brans in view of Fakieh teaches method of claim 1.
Brans teaches:
wherein the property is real property. [Brans; Abstract, ¶47 and ¶62].
Re. claims 9; Brans in view of Fakieh teaches method of claim 1.
Brans teaches:
wherein the property is virtual property. [Brans; ¶51 and ¶53-¶55].
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IBRAHIM EL-BATHY whose telephone number is (571)272-7545. The examiner can normally be reached Monday - Friday 9am - 7pm.
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/IBRAHIM N EL-BATHY/Primary Examiner, Art Unit 3628