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 .
Election/Restrictions
In response to restriction requirement mailed 1/30/2026, Applicant has elected to prosecute claims 1-8, directed to Invention I, without traverse.
Claim Objections
Claim 8 is objected to because of the following informalities: “an” service. Appropriate correction is required.
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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03) Claim 1 recites a system, which is a statutory category of invention (Step 1: YES).
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a)). Yes.
The claims are analyzed to determine whether it is directed to a judicial exception. The following claims identify the limitations that recite additional elements in bold and the abstract idea without bold. Underlined claim limitations denote newly added claim limitations:
Claim 1 recites a processor; and a memory coupled with the processor, the processor configured to: create a token that is stored on a blockchain and associated with a digital content item; and emit one or more events associated with the digital content item that store a document that includes information identifying rights to the digital content item to the blockchain. These limitations, as drafted, under its broadest reasonable interpretation, covers performance of the limitations in the via manual human activity, but for the recitation of generic computer components. Under human activity, more specifically, the limitations are a commercial interaction (business relations) and managing interactions between people. Accordingly, the claim recites an abstract idea. The mere recitation of generic computer components in the claims do not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: Yes. 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 above judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of a processor, memory, token, blockchain, and a digital content item. The additional elements of processor, memory, are just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)). The additional elements of token, digital content item, and blockchain are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of blockchain (MPEP 2106.05(h)). The computer components are recited at such a high-level of generality (i.e. as a generic computer components) such that it amounts to no more than mere instructions to apply the exception using generic computer components, and the claims fail to recite technological detail as to how the step of the judicial exception is accomplished. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. (Step 2A-Prong 2: NO. The judicial exception is not integrated into a practical application).
The claims are next analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements of (a processor, memory, token, blockchain, and a digital content item) in the claims amount to no more than mere instructions to apply the exception using a generic computer component and generally linking the use of blockchain to judicial exception. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component and generally linking the use of blockchain to judicial exception cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claims do not amount to significantly more than the recited abstract idea (Step 2B: NO; The claims do not provide significantly more, and are not patent eligible).
Claim 2 recites wherein the processor is configured to: mint a non-fungible token (NFT) using an Ethereum standard to store the NFT to an Ethereum platform; and emit the one or more events based on a smart contract event mechanism of the Ethereum platform. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of Ethereum platform are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of non-fungible token (NFT), and smart contract are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of blockchain (MPEP 2106.05(h)), and the claim fails to recite technological detail as to how the step of the judicial exception is accomplished. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 3 recites wherein the one or more events include: a contract event that stores a digital contract for the digital content item to the blockchain; and a location event that stores information identifying an online location of the digital content item to the blockchain. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of digital contract, digital content item and blockchain are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of blockchain (MPEP 2106.05(h)), and the claim fails to recite technological detail as to how the step of the judicial exception is accomplished. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 4 recites wherein the one or more events include a log written to the blockchain by a smart contract associated with the digital content item. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of smart contract, digital content item and blockchain are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of blockchain (MPEP 2106.05(h)), and the claim fails to recite technological detail as to how the step of the judicial exception is accomplished. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 5 recites wherein the one or more events are emitted by a smart contract associated with the digital content item. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of smart contract and digital content item are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of blockchain (MPEP 2106.05(h)), and the claim fails to recite technological detail as to how the step of the judicial exception is accomplished. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 6 recites wherein the token is a non-fungible token (NFT) that represents the digital content item on the blockchain. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of NFT, digital content item and blockchain are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of blockchain (MPEP 2106.05(h)), and the claim fails to recite technological detail as to how the step of the judicial exception is accomplished. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 7 recites wherein the digital content item is a multimedia content item. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of digital content item are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of blockchain (MPEP 2106.05(h)), and the claim fails to recite technological detail as to how the step of the judicial exception is accomplished. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 8 recites wherein the digital content item is an service accessible via the token. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of digital content item and the token are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of blockchain (MPEP 2106.05(h)), and the claim fails to recite technological detail as to how the step of the judicial exception is accomplished. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
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.
The factual inquiries 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 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Goldston (US 20210248214), alone.
Regarding Claim 1,
a processor; and a memory coupled with the processor, the processor configured to:
create a token and associated with a digital content item (Paras. 109-111, artist creates content at 720 which is stored as metadata at 722 in container file; Para. 10, NFT memorializes sale to be distributed on blockchain).
and emit one or more events associated with the digital content item that store a document that includes information identifying rights to the digital content item (Transaction module 295, Para. 84, Used as an audit trail log or fingerprint documenting the secure asset; Para. Para. 51; Fingerprint element 1018, Para. 142, which contains an audit log; Para. 176, with transaction log with transaction log ledger, Para. 176).
Goldston fails to disclose the token that is stored on a blockchain. However, Goldston teaches that the NFT token can be stored on a blockchain. However, Goldston teaches that the NFT token can be stored on a blockchain following minting to an NFT (Para. 217, “stored on a blockchain;” Para. 10, “recorded against a blockchain”; Para. 206, distributed ledger to record the transaction).
It would have been obvious to one of ordinary skill in the art, at the effective date of filing, to have modified Goldston with the blockchain element. Doing so allows the NFT content creator to safely and effectively trade and track their NFT item to a broader blockchain for distribution.
Regarding claim 4, modified Goldston discloses wherein the one or more events include a log written to the blockchain by a smart contract associated with the digital content item (Para. 84, audit trail (Fingerprint) with digital vault 295 and transaction module; Fingerprint element 1018 with audit log and activities documented on the log; Para. 195; Para. 63, system embeds with smart contract; Para. 66, container file with NFT metadata includes smart contract with ownership rights; Para. 111; Para. 122, smart contract; Para. 215-216, describing extent of smart contact with smart contract).
Regarding claim 5, modified Goldston discloses where the one or more events are emitted by a smart contract associated with the digital content item (According to applicants’ specification (Para. 173-174), emit events is “logging events”; Fingerprint element 1018, Para. 142; Transaction log on user devices 2220, Para. 176; Para. 195, example of transaction log with fingerprint element 1018, which includes digital content items).
Regarding claim 6, modified Goldston discloses wherein the token is a non-fungible token (NFT) that represents the digital content item on the blockchain (Goldston, throughout).
Regarding claim 7, modified Goldston disclose wherein the digital content item is a multimedia content item (Para. 70, repository stores media, such as streaming media, of a song, video, or playlist; Fig. 9, audio file 762, as part of container file 612; Fig. 8, Artists stores various types of creator content).
Regarding claim 8, modified Goldston discloses wherein the digital content item is an service accessible via the token (Goldston discloses where the content is a streaming service).
Claims 2 is rejected under 35 U.S.C. 103 as being unpatentable over Goldston (US 20210248214), in view of Chirtoaca, et al., in “A framework for creating deployable smart contracts for non-fungible tokens on the Ethereum blockchain.”
Regarding claim 2, modified Goldston disclose the system of claim 1, wherein the processor is configured to:
Emit an event based on a smart contract item (Para. 84, audit trail (Fingerprint) with digital vault 295 and transaction module; Fingerprint element 1018 with audit log and activities documented on the log; Para. 195; Para. 63, system embeds with smart contract; Para. 66, container file with NFT metadata includes smart contract with ownership rights; Para. 111; Para. 122, smart contract; Para. 215-216, describing extent of smart contact with smart contract; Transaction module 295, Para. 84, Used as an audit trail log or fingerprint documenting the secure asset; Para. Para. 51; Fingerprint element 1018, Para. 142, which contains an audit log; Para. 176, with transaction log with transaction log ledger, Para. 176), but fails to disclose mint a non-fungible token (NFT) using an Ethereum standard to store the NFT to an Ethereum platform. However, Chirtoaca teaches the ERC721 standard for Ethereum where an NFT token can be placed upon using the ERC721 interface (“The ERC721 standard introduced the concept of nonfungible tokens”) and propose a framework (NFTY) that provides a smart contract for the ERC721 standard when using NFT that have been minted (“Mintable is an in-development platform that provides the means to tokenize and manage digital assets (ERC721 tokens) on the Ethereum blockchain. It aims to simplify and streamline the interaction with ERC721 tokens. It supports a contract generator through which users create their own ERC721 compliant contracts, deploy them and mint tokens”; Section 3.1 describing ERC721 features and extensions, including token minting and placement on the Ethereum network).
It would have been obvious to one of ordinary skill in the art, at the effective date of filing, to have modified Goldston with the NFT minting and Ethereum platform of Chirtoaca. Doing so allows the user to safely mint the contract in an NFT token and easily deploy the contract in Ethereum, which increases transferability and security of the contract.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Goldston (US 20210248214), in view of Ho (KR 20220136850).
Regarding claim 3, modified Goldston disclose where the one or more events include:
a contract event that stores a digital contract for the digital content item to the blockchain (Para. 10, smart contract of the rights where NFT memorializes the sale based on the contract; Para. 66, container file includes NFT metadata which includes smart contract specifying ownership rights; Para. 122, rights specified in smart contract; Para. 143, metadata section 1020 with contract rights; Para. 215, smart contract definition; ;
Modified Goldston fails to disclose a location event that stores information identifying an online location of the digital content item to the blockchain. However, Ho teaches that an NFT can contain transaction details that include a location of the digital content item for use on the blockchain (The server 130 according to the embodiment of the present invention transfers a part of the NFT for owning the billboard to the address of the advertiser's electronic wallet 112 and transfers the information of the NFT for owning the billboard to the transaction details, information on the advertising area in the billboard ( That is, after generating the number of pixels, pixel location, etc.), ownership change information (that is, ownership change information changed from the server side to the advertiser side), etc., it is transmitted to the blockchain network 100 and recorded on the block).
It would have been obvious to one of ordinary skill in the art, at the effective date of filing, to have modified Goldston with Ho. Doing so allows the user or future users to better understand where the NFT was created, and increases the security and veracity of NFT ownership.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON M DUCK whose telephone number is (469)295-9049. The examiner can normally be reached 8am - 5pm.
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/BRANDON M DUCK/Examiner, Art Unit 3693
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