DETAILED ACTION
The present application is being examined under the first inventor to file provisions of the AIA .
This Office Action is in response Applicant communication filed on 1/15/2025.
Claims
Claim 3 has been amended.
Claims 1-3 are currently pending in the application.
Information Disclosure Statements
The Information Disclosure Statements (IDS) that were filed on 1/15/2025 and 7/8/2026 have been considered.
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 1-3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claim 1 is directed to a system, claim 2 is directed to a method, and claim 3 is directed to a non-transitory computer readable medium. Therefore, these claims fall within the four statutory categories of invention.
Claim 2 recites issuing an autographed item. Specifically, the claim recites “receiving an issuance operation by a creator of content; acquiring a handwritten… signature of the creator input in the issuance operation; and issuing an NFT to which the handwritten… signature is assigned, wherein the NFT and the handwritten… signature have a one-to-one correspondence”, which is grouped within the “mental processes” and “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test because the claims involve issuing an autographed item which falls under the category of “concepts performed in the human mind” and “managing personal behavior or relationships or interactions between people”. Accordingly, the claims recite an abstract idea (See MPEP § 2106.04(a)). Claim 1 is directed to a system that performs the same functions of claim 2 and claim 3 is directed to a non-transitory computer-readable medium that stores instructions that causes a computer to perform the same functions of claim 2. Therefore Claims 1 and 3 are also directed to the abstract idea of issuing an autographed item.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test, the additional element(s) of claims 1, 2, and 3, such as the use of the at least one processor, computer, and computer readable storage medium, merely use(s) a computer as a tool to perform an abstract idea. Specifically, the at least one processor, computer, and computer readable storage medium perform(s) the steps or functions of issuing an autographed item as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Further, the use of an electronic signature and NFT is generally linking the use of the judicial exception to a particular technological environment (e.g. computers and blockchain) or field of use. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP § 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP § 2106.05(b)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP § 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
Claims 1, 2, and 3 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP § 2106.05), the additional element(s) of using a at least one processor, computer, and computer readable storage medium to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of issuing an autographed item. As discussed above, taking the claim elements separately, the at least one processor, computer, and computer readable storage medium perform(s) the steps or functions of the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of issuing an autographed item. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Further, the use of the digital signature and NFT are recited at a high level and are used for generally linking the use of the judicial exception (e.g. issuing an autographed item) to a particular technological environment (e.g. computers and blockchain) or field of use and is not indicative of an inventive concept. Therefore, the claim is not patent eligible.
Rejections under 35 § U.S.C. 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.
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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as disclosed by US 20200272713 A1 to Black.
Per claims 1, 2, and 3, Black discloses:
receive an issuance operation by a creator of content (e.g. At block 420, the creator selects the digital media that is to be customized and provided to the follower. Examples of digital media may include, photos, videos, sounds, music, etc. In some embodiments, the digital media may be provided by the follower) and (e.g. At block 820, any restrictions that the creator or the follower may have placed on the customized media are determined) (Sections [0046, [0047], [0076], and [0077]);
acquire a handwritten electronic signature of the creator input in the issuance operation (e.g. At block 430, the creator customizes the digital media based at least on the interaction between the creator and the follower and provides the customized media to the follower, ending at 499. In some embodiments, the customization may be the annotation of a photograph with a message/dedication from the creator, such as “Thanks for being a fan!”, “SXSW 2019”, etc. In some embodiments, the customization may be a copy of the creator's physical signature) (Sections [0049] and [0077]);
issue an NFT to which the handwritten electronic signature is assigned, and the NFT and the handwritten electronic signature have a one-to-one correspondence (e.g. At block 830, a non-fungible token representing the customized media/digitally signed autograph is created. In some embodiments, the non-fungible token may be created to create and uniqueness of the customized media and to record ownership of the customized media. The autograph may be restricted to a single copy or the autograph may be restricted to a higher number of copies) (Sections [0077] and [0078]).
Black further discloses at least one processor (e.g. In some embodiments, device 200 comprises one or more processors 210 and one or more memory units 220. Memory units 220 may be configured to store instructions, and processors 210 may be configured to execute these instructions to facilitate the functionality of the devices) (Section [0028]).
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US Publication Number 20220058630 A1 to Yantis teaches a system and method for NFT based autographs and a marketplace to sell the NFTs. US Publication Number 20230119641 A1 to Meyers teaches a system and method that applies endorsement signatures to NFTs.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY P SAX whose telephone number is (571) 272-2935. The examiner can normally be reached on M-F 8-4:30.
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, Patrick McAtee can be reached at (571) 272-7575. 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.
/TIMOTHY PAUL SAX/Examiner, Art Unit 3698
