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 .
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. In the instant case, claim 1 is directed to a “method”.
Claim 1 is directed to the concept of “processing a transaction with a coupon or discount” which is grouped under “organizing human activity… f fundamental economic practice (purchasing a product or service) and commercial or legal interactions (such as sales activities or behaviors, business relations and agreements)” in prong one of step 2A (See MPEP 2106.04(a)(2)). Claim 1 recites minting a non-fungible token (NFT) on a blockchain network, associating a dynamic value with the NFT, the dynamic value configured to change as a function of time according to an algorithm, automatically transferring possession and/or ownership of the NFT to a user, the NFT comprising a smart contract executable with a blockchain address of the user to confirm possession and/or ownership of the NFT by the user, receiving a redemption request from a user device of the user, the redemption request received in connection with a payment transaction associated with a transaction amount; in response to receiving the redemption request, validating the redemption request by confirming possession and/or ownership of the NFT by the user based on the smart contract; in response to validating of the redemption request, determining an instant value of the dynamic value associated with the NFT; and processing the payment transaction by applying the instant value to the transaction amount. Accordingly, the claim recites an abstract idea (See MPEP 2106.04(a)(2)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See MPEP 2106.04(d)), the additional elements of the claim such as at least one processor represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use (MPEP 2106.05(f)&(h)). Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. implement) the acts of processing a transaction with a coupon or discount.
When analyzed under step 2B (See MPEP 2106.05), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of processing a transaction with a coupon or discount using computer technology (e.g. at least one processor). Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Dependent claims 2-8, 10-16, and 18-20 do not remedy the deficiencies of the independent claims and are rejected accordingly. The dependent claims further refine the abstract idea of the independent claims and do not integrate the abstract idea into a practical application In this case, all claims have been reviewed and are found to be substantially similar and linked to the same abstract idea (see Content Extraction and Transmission LLC v. Wells Fargo (Fed. Cir. 2014)).
Claim Interpretation
In the interest of compact prosecution, Applicant should be aware that there is claim language that does not serve to differentiate the claims from the prior art and/or or provide an additional element that can be a consideration for eligibility1. See MPEP 2103(c).
Contingent/Optional Limitations
Contingent and optional limitations are generally not given patentable weight. For example, if a claim states that a step occurs if a condition is met, the broadest reasonable interpretation of the claim does not require that the contingent step occurs because the condition may not be satisfied. System claims differ in that even if a condition that is required to perform a function is not met, the structure for performing the contingent limitation is given patentable weight. See MPEP 2111.04(II); see also Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016); MPEP 2103(I)(C) (“Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation.”).
The following limitations are contingent and/or optional:
Claim 1 in response to a user completing a trigger action, automatically transferring, with at least one processor, possession and/or ownership of the NFT to a user, the NFT comprising a smart contract executable with a blockchain address of the user to confirm possession and/or ownership of the NFT by the user” and the following method steps of “receiving”, “validating”, “determining”, and “processing”.
Not Positively Recited
The following limitations are not positively recited and, therefore, do not differentiate the claims from the prior art:
Claims 1, 9, and 17 recite “in response to a user completing a trigger action”, “automatically transferring, with the at least one processor, possession and/or ownership of the NFT to a user”.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fowler US 2022/0253902 in view of Narayanaswami US 2015/0100398.
As per claim 1:
Fowler discloses a method comprising: minting, with at least one processor, a non-fungible token (NFT) on a blockchain network (¶¶ [0116], [0118], [0141], with [0098] NFT);
in response to a user completing a trigger action, automatically transferring, with at least one processor, possession and/or ownership of the NFT to a user, the NFT comprising a smart contract executable with a blockchain address of the user to confirm possession and/or ownership of the NFT by the user (¶ [0117] “NFT includes the contract and subject matter associated with the NFT and can also mean semi-fungible token or fractional NFT. Non-limiting examples of the smart contracts that could govern a NFT include (i) 1/1 NFTs—known as ERC-721 tokens on Ethereum and Polygon, KIP17 on the Klatyn blockchain; (ii) Semi-fungible NFTs—known as ERC-1155 tokens on Ethereum and Polygon, KIP37 on Klatyn”; Fig 5 ‘520’ and ‘524’, [0170] “send content to a digital wallet’ when metric/trigger is met);
receiving, with at least one processor, a redemption request from a user device of the user, the redemption request received in connection with a payment transaction associated with a transaction amount (¶ [0190]);
in response to receiving the redemption request, validating, with at least one
processor, the redemption request by confirming possession and/or ownership of the NFT by the user based on the smart contract (¶ [0117]; Fig 5, [0172]);
in response to validating of the redemption request, determining, with at least one processor, an instant value of the dynamic value associated with the NFT (¶ [0190]); and
processing, with at least one processor, the payment transaction by applying the
instant value to the transaction amount (¶ [0190]).
Folwer fails to explicitly disclose but Narayanswami does disclose associating, with at least one processor, a dynamic value with the NFT, the dynamic value configured to change as a function of time according to an algorithm (abstract, ¶ [0035]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the feature of dynamic coupon pricing as taught in Narayanaswami in Fowler since the claimed invention is merely a combination of old elements, and in 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. Fowler is in the art of digital coupon distribution, specifically dynamic content based upon predetermined thresholds and it would have been obvious to a person skilled in the art to combine the art of Narayanaswami to improve Fowler in order to offer time limited coupons/offers that would further increase user redemption levels. Additionally, typical coupons (digital and paper) have an expiration date which decreases the value of the coupon over time to zero.
As per claim 2:
Fowler further discloses the method of claim 1, wherein, in response to applying the instant value to the transaction amount, deactivating, with at least one processor, the NFT from being used as a coupon in a future payment transaction (¶ [0223]).
As per claim 3:
Fowler fails to explicitly disclose but Narayanswami does the method of claim 1, wherein the algorithm comprises at least one variable, and wherein determining the instant value of the dynamic value associated with the NFT comprises inputting at least one corresponding variable associated with the redemption request to the at least one variable of the algorithm (¶ [0036] “the value of the coupon may depend on: a) time decay—the value may increase or decrease over time; b) inventory; c) how many others are redeeming the coupon; d) mentions in a social network; e) a score in a multi-player game; f) weather; g) time of day; h) arbitrary business rules; i) post redemption re-evaluation”).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the feature of dynamic coupon pricing as taught in Narayanaswami in Fowler since the claimed invention is merely a combination of old elements, and in 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. Fowler is in the art of digital coupon distribution, specifically dynamic content based upon predetermined thresholds and it would have been obvious to a person skilled in the art to combine the art of Narayanaswami to improve Fowler in order to offer time limited coupons/offers that would further increase user redemption levels. Additionally, typical coupons (digital and paper) have an expiration date which decreases the value of the coupon over time to zero.
As per claim 4:
Fowler further discloses the method of claim 1, wherein initiating redemption of the NFT comprises scanning a machine readable code corresponding to the NFT, and wherein the method comprises identifying, with at least one processor, the NFT based on the machine readable code (¶ [0101], [0114], [0117], [0237]).
As per claim 5:
Fowler further discloses the method of claim 4, wherein the machine readable code is scanned during processing of the payment transaction (¶¶ [0189]-[0190]).
As per claim 6:
Fowler fails to explicitly disclose but Narayanswami does disclose the method of claim 1, wherein the dynamic value associated with the NFT decreases over time (¶ [0036] “the value of the coupon may depend on: a) time decay—the value may increase or decrease over time; b) inventory; c) how many others are redeeming the coupon; d) mentions in a social network; e) a score in a multi-player game; f) weather; g) time of day; h) arbitrary business rules; i) post redemption re-evaluation”).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the feature of dynamic coupon pricing as taught in Narayanaswami in Fowler since the claimed invention is merely a combination of old elements, and in 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. Fowler is in the art of digital coupon distribution, specifically dynamic content based upon predetermined thresholds and it would have been obvious to a person skilled in the art to combine the art of Narayanaswami to improve Fowler in order to offer time limited coupons/offers that would further increase user redemption levels. Additionally, typical coupons (digital and paper) have an expiration date which decreases the value of the coupon over time to zero.
As per claim 7:
Fowler fails to explicitly disclose, but Narayanswami does disclose the method of claim 1, wherein the smart contract specifies a date by which the NFT automatically expires (¶ [0048]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the feature of dynamic coupon pricing as taught in Narayanaswami in Fowler since the claimed invention is merely a combination of old elements, and in 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. Fowler is in the art of digital coupon distribution, specifically dynamic content based upon predetermined thresholds and it would have been obvious to a person skilled in the art to combine the art of Narayanaswami to improve Fowler in order to offer time limited coupons/offers that would further increase user redemption levels. Additionally, typical coupons (digital and paper) have an expiration date which decreases the value of the coupon over time to zero.
As per claim 8:
Fowler further discloses the method of claim 1, wherein the trigger action comprises an eligible transaction (¶ [0135]), the method comprising:
monitoring, with at least one processor, an electronic payment processing network for completion of the eligible transaction (Fig 5, ¶¶ [0020] “trigger”, [0135] “a single user completing a certain task” includes an eligible transaction; [0169] monitoring “the metric or trigger of the rule can be monitored (step 516) such as by directly sending a request or query to a data source (at 512) via the interface server (at 510), receiving data from the data source (at 512) on a regular basis such as every 5 seconds, 5 minutes, or the like (via the interface sever [at 510]), or combinations of both”).As per claims 9-16: Claims 9-16 are rejected under the rationales of claims 1-8, respectively.As per claims 17-20: Claims 17-20 are rejected under the rationales of claims 1-4, respectively.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rice US 2021/0279695 Wolinsky US 2015/0112790
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P SHARVIN whose telephone number is (571)272-9863. The examiner can normally be reached M-F 9 am - 5 pm EST.
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, Ryan Donlon can be reached at 571-270-3602. 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.
/DAVID P SHARVIN/Primary Examiner, Art Unit 3692
1 See MPEP 2106.04(d)(2) (“Examiners should keep in mind that in order to qualify as a "treatment" or "prophylaxis" limitation for purposes of this consideration, the claim limitation in question must affirmatively recite an action that effects a particular treatment or prophylaxis for a disease or medical condition. An example of such a limitation is a step of "administering amazonic acid to a patient" or a step of "administering a course of plasmapheresis to a patient." If the limitation does not actually provide a treatment or prophylaxis, e.g., it is merely an intended use of the claimed invention or a field of use limitation, then it cannot integrate a judicial exception under the "treatment or prophylaxis" consideration. For example, a step of "prescribing a topical steroid to a patient with eczema" is not a positive limitation because it does not require that the steroid actually be used by or on the patient, and a recitation that a claimed product is a "pharmaceutical composition" or that a "feed dispenser is operable to dispense a mineral supplement" are not affirmative limitations because they are merely indicating how the claimed invention might be used.”)
Prosecution Insights