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 .
DETAILED ACTION
1. This action is responsive to: an original application filed on 26 February 2025.
2. Claims 1-20 are currently pending and rejected.
Information Disclosure Statement
3. No IDS filed.
Priority
4. Priority date claimed considered by the examiner.
Drawings
5. The drawings filed on 26 February 2025 are accepted by the examiner.
Double Patenting
6. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents /process/ file/efs/guidance /eTD-info-I.jsp.
Claims 1-19 are rejected under the grounds of non-statutory obviousness-type double patenting, as they are deemed unpatentable over claims 1-20 of US Patent application No. 18/321,324. Although the conflicting claims are not identical, they are considered not patentably distinct from one another, as they convey the same inventive concept. Specifically, both sets of claims disclose a method digital/virtual rights management of real property by linking unique identifier. Furthermore, it would have been obvious to one of ordinary skill in the art, at the time of the invention’s filing, to provide a simple digital marketplace for tangible assets and digital real property rights, thereby rendering the claims unpatentable.
DOUBLE PATENETING
Statutory type (35 U.S.C. 101) double patenting rejection
7. A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Therefore, claim 20 is rejected on the ground of statutory double patenting as being unpatentable over claim 20 of US Patent application No. 18/321,324.2100
Claim Rejections - 35 USC § 101
8. 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 and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. an abstract idea) without significantly more.
Following the decision in the claims are analyzed where the abstract idea judicial exception to the categories of statutory subject matter is at issue using the following two-part analysis set forth in Mayo: 1) Determine whether the claim is directed to an abstract idea; and 2) if an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. at 2350.
Claims 1, 8 and 20 are directed to the abstract idea of boot loader to load Operating system (OS) by reciting steps of preventing loading, identifying a operating system, retrieving context in formation, step of authorizing loading information found to be an abstract idea by the courts (Cyberfone: see Section IV.B.5).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.
Above limitations are generic computing operation that does not enhance the functionality of the computer. Further, the claim does not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
Claim Rejections - 35 USC §112
9. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
In claims 1, 5 and 9, the phrase “assertive entity” renders the claim vague and indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 112 (f)
8. “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”
Claim 1-20 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The word "means/configure to/step of" is preceded by the word(s) “configure to for maintain a database, configure to generate a notice, in an attempt to use a " means/configure to " clause to recite a claim element as a means for performing a specified function. However, since no function is specified by the word(s) preceding "means," it is impossible to determine the equivalents of the element, as required by 35 U.S.C. 112, (f) sixth paragraph. See Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967). Examiner could not determine the proper structure and algorithm for each limitations of “means for” in the claims as it is required if applicant invoking 112/6th (f) paragraph.
The examiner notes to the applicant that can overcome the rejection by executing one of the following options: 1) point the examiner where in applicants specification applicant structure and algorithm for invoking the means plus function rule, 2) strike the means plus function claim language from the claim, 3) cancel the claim.
Claim Rejections - 35 USC § 102
9. 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 –
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.
(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.
Claims 1-19 are rejected 35 U.S.C §102 (a)(1) as being anticipated by Cella et al. (US Publication No. 20220198562), hereinafter Cella.
Regarding claim 1:
A computing system for facilitating an assertion of virtual rights associated with a parcel of real property for an assertive entity (Cella, abstract), the computing system comprising:
a processing element configured to (Cella, ¶222): maintain a database of virtual rights associated with parcels of real property including the parcel of real property (Cella, ¶921-922, ¶610), marketplace system 16854 configured to establish and maintain a digital marketplace 16856. In embodiments, the digital marketplace 16856 provides an environment that allows knowledge providers and potential recipients to engage in commerce relating to the transfer of digital knowledge 16804. For example, the digital marketplace may be configured to allow one or more users and/or third parties to search for one or more pieces of digital knowledge 16804 similar to a digital storefront, transact for one or more pieces of the digital knowledge 16804 (e.g., buy, sell, license, lease, bid on, and/or give away the digital knowledge), receive recommendations for digital knowledge 16804, review one or more pieces of the digital knowledge 16804, verify source information and/or other information related to one or more pieces of the digital knowledge 16804, transact for one or more pieces of the digital knowledge
and generate a notice representing an assertion of ownership of virtual rights by the assertive entity (Cella, ¶1853, ¶1044, ¶283), a real property environment, a commercial facility, a warehousing facility, a transportation environment, a manufacturing environment, a storage environment, a home, a vehicle, and the like. The system may include an automated agent 12026 structured to process an event relevant to a value, a condition and an ownership of the asset and undertake an action related to the subsidized loan transaction to which the asset is related, wherein the action may be a subsidized loan transaction, underwriting a subsidized loan transaction, setting an interest rate, deferring a payment requirement, modifying an interest rate, validating a title, managing an inspection, recording a change in a title, assessing the value of an asset, calling a loan, closing a transaction, setting terms and conditions for a transaction, providing notices required to be provided.
Regarding claim 2:
the processing element being further configured to assign a unique identifier to the parcel of real property (Cella, ¶921).
Regarding claim 3:
the processing element being further configured to generate a publicly-accessible computer record of the assertion of ownership of the virtual rights (Cella, ¶327).
Regarding claim 4:
the publicly-accessible computer record including a downloadable public notice document recordable in a government record (Cella, ¶327).
Regarding claim 5:
the processing element being further configured to receive a signal representative of a mobile computing device query of a physical sign present at the parcel of real property, the processing element being further configured to direct the query to a database entry associated with the parcel of real property (Cella, ¶359).
Regarding claim 6:
the computing system further comprising a processing element being configured to transmit a signal representative of the assertion of virtual rights to a third party website (Cella, ¶327).
Regarding claim 7:
the processing element being further configured to tokenize the notice into a nonfungible token (Cella, ¶913, ¶1000, ¶948).
Regarding claim 8:
A computer-implemented method of facilitating an assertion of virtual rights associated with a parcel of real property for an assertive entity, the computer-implemented method comprising steps of: maintaining a database of virtual rights associated with parcels of real property including the parcel of real property (Cella, ¶921-922, ¶610), marketplace system 16854 configured to establish and maintain a digital marketplace 16856. In embodiments, the digital marketplace 16856 provides an environment that allows knowledge providers and potential recipients to engage in commerce relating to the transfer of digital knowledge 16804. For example, the digital marketplace may be configured to allow one or more users and/or third parties to search for one or more pieces of digital knowledge 16804 similar to a digital storefront, transact for one or more pieces of the digital knowledge 16804 (e.g., buy, sell, license, lease, bid on, and/or give away the digital knowledge), receive recommendations for digital knowledge 16804, review one or more pieces of the digital knowledge 16804, verify source information and/or other information related to one or more pieces of the digital knowledge 16804, transact for one or more pieces of the digital knowledge
and generating a notice representing an assertion of ownership of virtual rights by the assertive entity (Cella, ¶1853, ¶1044, ¶283), a real property environment, a commercial facility, a warehousing facility, a transportation environment, a manufacturing environment, a storage environment, a home, a vehicle, and the like. The system may include an automated agent 12026 structured to process an event relevant to a value, a condition and an ownership of the asset and undertake an action related to the subsidized loan transaction to which the asset is related, wherein the action may be a subsidized loan transaction, underwriting a subsidized loan transaction, setting an interest rate, deferring a payment requirement, modifying an interest rate, validating a title, managing an inspection, recording a change in a title, assessing the value of an asset, calling a loan, closing a transaction, setting terms and conditions for a transaction, providing notices required to be provided.
Regarding claim 9:
further comprising a step of assigning a unique identifier to the parcel of real property (Cella, ¶921).
Regarding claim 10:
the step of generating a notice including generating a publicly-accessible computer record including the notice (Cella, ¶327).
Regarding claim 11:
the publicly-accessible computer record being a website (Cella, ¶48).
Regarding claim 12:
the step of generating a notice including generating a downloadable public notice document recordable in a government record (Cella, ¶327).
Regarding claim 13:
further comprising a step of retaining a copy of the public notice document in recorded form in the database as verification the public notice form has been recorded (Cella, ¶522).
Regarding claim 14:
further comprising directing a mobile computing device query of a physical sign present at the parcel of real property to a database entry associated with the parcel of real property (Cella, ¶1734).
Regarding claim 15:
further comprising a step of publicizing the assertion of virtual rights (Cella, ¶225, ¶228).
Regarding claim 16:
further comprising a step of providing the notice to a third party upon receiving a fee and verifying consent of the assertive entity asserting virtual rights (Cella, ¶1844).
Regarding claim 7:
further comprising a step of presenting a marketing platform for leasing, licensing, and selling the virtual rights (Cella, ¶924).
Regarding claim 18:
further comprising a step of tokenizing the notice into a nonfungible token (Cella, ¶899).
Regarding claim 19:
further comprising a step of presenting a decentralized marketplace for the nonfungible token (Cella, ¶238).
Conclusion
10. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Monjour Rahim whose telephone number is (571)270-3890.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shewaye Gelagay can be reached on 571-272-4219. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Monjur Rahim/
Patent Examiner
United States Patent and Trademark Office
Art Unit: 2436; Phone: 571.270.3890
E-mail: monjur.rahim@uspto.gov
Fax: 571.270.4890
Prosecution Insights