DETAILED ACTION
Response to Amendment
The amendment filed on July 6, 2026, has been entered. Applicant has: amended claims 1, 2, 4-10, 13, 14, 17, and 19; and canceled claims 3 and 12. Claims 1, 2, 4-11, and 13-20 remain pending, have been examined and currently stand rejected.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claim Rejections - 35 USC § 112
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.
Claims 1, 2, 4-11, and 13-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 has two transferring steps (i.e., transferring the NFT and transferring the amount of fiat) that occur “in response to the determining.” Since the amended claims now have two different determining steps (i.e., determining that a volatility metric of an NFT indicates a lower volatility […], and determining that a modified valued property of the NFT […] satisfies a threshold […]), it is unclear which determining step, or steps, the transferring is based upon. As best understood, the transferring of the NFT and the transferring of the amount of fiat are both based on the determination that the NFT satisfies the threshold. In order to further prosecution, the claim(s) have been interpreted in this manner.
Independent claims 10 and 19 have the same issue as that found in claim 1. Accordingly, claims 10 and 19 are also rejected under 35 U.S.C. 112(b) for the same reasons and rational explained above. Claims 2, 4-9, 11, 13-18 and 20 are also rejected under 35 U.S.C. 112(b) based on their dependency to claim 1, 10 or 19.
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, 2, 4-11, and 13-20 are rejected under 35 U.S.C. 101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. MPEP §2106.
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined at Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter). MPEP §2106.03. Here, it is determined that claims 1, 2, and 4-9 are directed to the statutory category of a machine, claims 10, 11 and 13-18 are directed to the statutory category of a process and claim 19-20 are directed to the statutory category of a manufacture.
Under the Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. MPEP §2106.04. Independent Claim 1 is selected as being representative of the independent claims in the instant application. Claim 1 recites:
A computing system for transferring an NFT in a financial institution from a source account associated with a first customer computing device to a recipient account associated with a second customer computing device, the computing system comprising:
a database, wherein the database comprises an overlay ledger;
a memory configured to store instructions;
a processor, the instructions executable by the processor and that, when executed by the processor, cause the processor to:
register a non-fungible token (NFT) account to a customer associated with the first customer computing device;
receive, from the first customer computing device, a request to transmit an amount of fiat currency from the source account to the recipient account;
determine that a volatility metric of an NFT indicates a lower volatility than one or more corresponding volatility metrics of a plurality of NFTs, the plurality of NFTs including the NFT;
in response to determining that the volatility metric indicates the lower volatility, select the NFT from among the plurality of NFTs, the NFT being linked with a first public and private key pair associated with the source account, the NFT having a transfer property indicating that the NFT is transferable from the source account, the NFT having a value property denominated in fiat currency, and the NFT having the volatility metric based on one or more requests to transfer the NFT prior to or concurrently with the request;
determine that a modified value property of the NFT based on the value property and the volatility metric satisfies a threshold based on the amount of fiat currency;
transfer, in response to the determining, the NFT from the first public and private key pair to a second public and private key pair linked with an NFT transaction processor and associated with an institution account of the financial institution;
generate a third public and private key pair linked with the second customer computing device and associated with the recipient account; and
transfer, in response to the determining, the amount of fiat currency from the second public and private key pair to the third public and private key pair.
Here, the claims recite the abstract idea, or combination of abstract ideas, of identifying, liquidating and transferring assets that meet certain conditions based on a first users request to pay a second user in fiat currency. This concept/abstract idea, which is identified in the bolded sections seen above, falls within the Certain Methods of Organizing Human Activity grouping because it describes a fundamental economic practice (e.g., identifying and transferring assets, asset liquidation, selling assets to pay debts, asset to fiat currency conversion, etc.), and/or a commercial or legal interaction (e.g., a sales activity to sell an asset and pay a second user with proceeds of the sale, etc.), and/or managing interactions between people (e.g., between a payor, an NFT transaction processor and a payee). Accordingly, it is determined that the claims recite an abstract idea since they fall within one or more of the three enumerated categories of patent ineligible subject matter. MPEP §2106.04. It is further noted that the performance of the one or more process steps using a generic computer component (e.g., a computing system, a processor, etc.) does not preclude the claim limitation(s) from being in the certain methods of organizing human activity grouping.
Since it is determined that the claim(s) contain a judicial exception, it must then be determined, under Step 2A, Prong 2, whether the judicial exception is integrated into a practical application of the exception. MPEP §2106.04. In this instance, claim 1 recites the additional elements of: a computing system comprising: a database, wherein the database comprises an overlay ledger, a memory configured to store instructions, and a processor that executes the instructions; and a first customer computing device. Independent claim 10 recites the additional element of a first customer computing device. Independent claim 19 recites the additional elements of: at least one processor; and a first customer computing device. The computing system, database, memory, processor(s), and first customer computing device are all recited at a high-level of generality such they amount to no more than mere instructions to apply the exception, or a portion thereof, using a generic computer component. See MPEP 2106.05(f). The claims’ use of the system, processor(s) and/or computing device(s) does not transform the claimed subject matter into a patent-eligible application because the claims do not require any nonconventional computer components, or even a “non-conventional and non-generic arrangement of known, conventional pieces,” but merely call for the performance of the abstract idea on a generic computing/processing device. Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, No. 2015-1763, 2016 WL 3514158, at *6-7 (Fed. Cir. June 27, 2016). Additionally, Examiner finds no indication in the Specification that the operations recited in the independent claims require any specialized computer hardware or other inventive computer components (i.e., a particular machine, invoke any specialized programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions). See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible."). There is no indication in the claim(s) that the computing components in combination with the abstract idea leads to an improvement of the computing components, or another technology, or to a technical field. Additionally, the tying of this concept to a particular environment (e.g., an NFT environment, a financial institution environment, etc.) fails to move the claims beyond a general link of the use of the abstract idea in a particular environment. Accordingly, 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. Looking at the elements as a combination does not add anything more than the elements analyzed individually.
Under the Step 2B analysis, it is determined whether the recited additional elements amount to something “significantly more” than the recited abstract idea to which the claims are directed (i.e., provide an inventive concept). MPEP §2106.05. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a generic computing component (e.g., a system, a processor, a computing device, etc.) to implement the abstract idea amounts to no more than mere instructions to apply the exception using a generic computer component and/or system. Mere instructions to apply an exception using a generic computer component and/or system cannot provide an inventive concept. That is, simply implementing the abstract idea on a generic computer or merely using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Accordingly, taken alone, the additional elements do not amount to significantly more than a judicial exception. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
Therefore, independent claims 1, 10 and 19 are rejected under 35 U.S.C. §101 and are not patent eligible. Dependent claims 2, 4-9, 11, 13-18 and 20 when analyzed are held to be patent ineligible under 35 U.S.C. §101 because the additional recited limitation(s) fail to establish that the claim(s) is/are not directed to an abstract idea.
Dependent claims 2, 11 and 20 refine the abstract idea by describing where a difference (i.e., change) is returned from the intermediary to the first customer after liquidating the asset and paying the second customer. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 4 and 13 recite the additional abstract idea of determining the volatility of an asset based on one or more transfer requests. This concept/abstract idea falls within the Certain Methods of Organizing Human Activity grouping because it describes a fundamental economic practice. Additionally, these claims fail to include any additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 5 and 14 refine the abstract idea by describing how a particular asset is chosen to liquidate (e.g., by determining its value). These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 6 and 15 refine the abstract idea by generating an indication that the asset is transferable from the source account (i.e., an indication that the asset is eligible to liquidate). These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 7 and 16 refine the abstract idea by describing, at a high level of generality, how the value of the asset that is liquidated is determined (e.g., by scaling the value property by the volatility metric). These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 8 and 17 refine the abstract idea by describing how and when transfer requests are received (e.g., via a communications interface prior to or concurrently with the request). Claims 8 and 17 recite the additional element of a communication interface compatible with an NFT transfer system external to the NFT transaction processor. The communication interface is recited at a high level of generality and is merely used to implement a portion of the abstract idea. As indicated above, simply implementing the abstract idea on a generic computer or merely using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Accordingly, the additional element, whether considered alone or in combination, fails to integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 9 and 18 refine the abstract idea by describing why a particular asset is not chosen to liquidate (e.g., because it is restricted and blocked). These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, the dependent claims are also not patent eligible.
Accordingly, it is determined that all claims are directed to non-statutory subject matter under 35 U.S.C. 101 and are ineligible.
Relevant Prior Art Not Relied Upon
Examiner has performed a thorough search of the prior art based on the claimed subject matter and is unable to find any references that would reasonably teach the combination of features recited in independent claims 1, 10 and 19.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure is cited in the Notice of References Cited (PTO-892). The additional cited art further establishes the state of the art prior to the effective filling date of Applicant’s claimed invention.
Zhou et al. (US 2021/0326844 A1), for example, discloses where a user registers with a system, such as via creating an online account with a server of the system (i.e., register an account to a customer associated with the first customer computing device). Zhou [0056]; [0065]. Upon registration, the user may provide the system with information that enables a system to process a transaction to or from the user. Zhou [0065]. Zhou discloses that the user may select between a fiat currency and a digital token in order to conduct a funds transfer (i.e., receive, from the first customer computing device, a request to transmit an amount of fiat currency from the source account to the recipient account). Zhou [0004]; [0070]; [0114]; Fig. 2. Zhou indicates that a fund transfer system may obtain an exchange rate between the fiat currency and the digital token via a token pricing provider (i.e., determine a modified value property of the token), and that the user may select digital token currency or a combination of fiat currency and digital currency to conduct the transfer. Zhou [0070]. Upon receiving instructions from the first user to use digital token currency to conduct the transfer, the fund transfer system may (i) transfer, in the blockchain network, digital tokens from the first user's digital account (e.g., digital wallet) to a digital account of a central entity (i.e., transfer the token from the first public and private key pair to a second public and private key pair linked with an transaction processor and associated with an institution account of the financial institution), (ii) instruct the central entity to transfer a fiat currency equivalent (per the exchange rate obtained from the token pricing provider) of the digital token amount from its account to a clearing account, and (iii) instruct a clearing financial institution having the clearing account to schedule a payment in fiat currency to the second user's account in the second user's financial institution (i.e., transfer, in response to the determining, the amount of fiat currency from the second public and private key pair to the third public and private key pair). Zhou [0004]; [0071].
Zhou differs, in part, from the claimed invention because Zhou does not explicitly disclose where the token that is transferred is an NFT. Zhou also fails to explicitly disclose identifying an NFT linked with a first public and private key pair associated with the source account, having a transfer property indicating that the NFT is transferable from the source account, having a value property denominated in fiat currency, and having a volatility metric based on one or more requests to transfer the NFT prior to or concurrently with the request; determining that a modified value property of the NFT based on the value property and the volatility metric satisfies a threshold based on the amount of fiat currency; or transferring, in response to the determining, the NFT.
Brock et al. (US 10,621,561 B1) discloses a method that includes receiving a request for payment associated with a transaction between a merchant and a customer, where a payment amount is specified in a fiat currency, determining a preference of the customer to pay for the transaction using a security asset, and verifying that a value of the security asset held by the payment system and assigned to the customer is sufficient to satisfy the payment amount. The method also includes initiating a transfer of at least a portion of the value of the security asset from a customer balance of the customer to a service balance of the payment service, initiating a transfer of a value in the fiat currency from the service balance of the payment service to a merchant balance of the merchant, and storing a record of the transaction between the customer and the merchant. Brock Abstract; Col. 15 line 4 – Col. 17 line 5; Fig. 5. Brock also indicates that the payment service may make one or more recommendations regarding which security asset to use to fulfil the payment (e.g., a last-purchased stock, stocks with the most gain/losses). The customer may provide an input selecting one of the security assets. Brock Col. 15 line 67 – Col. 16 line 4.
Brock fails to explicitly disclose where the asset that is identified and transferred is an NFT. Brock also fails to explicitly disclose identifying an NFT linked with a first public and private key pair associated with the source account, having a transfer property indicating that the NFT is transferable from the source account, having a value property denominated in fiat currency, and having a volatility metric based on one or more requests to transfer the NFT prior to or concurrently with the request; determining that a modified value property of the NFT based on the value property and the volatility metric satisfies a threshold based on the amount of fiat currency; or transferring, in response to the determining, the NFT.
Stipech et al. (US 2022/0309493 A1) discloses a payment service system that facilitates payments using security assets as the form of payment. A customer may use the payment service system to pay for a product or service provided by a merchant (e.g., in-store or online purchase). The customer may opt to make the payment using security assets held by the payment service system and owned by the customer rather than a fiat currency. The request for payment may specify a payment amount in a fiat currency. The payment service system may provide the customer multiple payment options. The customer may select an option to pay using security assets. The payment service system may calculate a quantity of a security asset of an equal value to the payment amount based on a current price of the security asset. The payment service system may then initiate a transfer of the determined amount of the security asset from the customer to the payment service system and a transfer of fiat currency of the payment amount from the payment service system to the merchant. In this manner, the payment service system may allow the customer to pay in security assets and the merchant to be paid in a fiat currency. Stipech [0021]; [0117]; [0119]; Fig. 6. Stipech also discloses that the payment service system may recommend the user to select one or more additional or alternative security assets for the sale to improve the customer's yield on transaction. The payment service system may recommend one or more additional or alternative security assets for the sale to minimize the capital loss experienced by the user due to the sale. Stipech [0022].
Sharda et al. (US 2023/0093031 A1) discloses a method of generating predicted values of digital assets to be offered for sale via accompanying NFTs. Sharda indicates that an asset (e.g., an NFT) is classified in order to generate data representative of the asset. That data/information is then inputted into a value model, which outputs predicted value(s) for each asset. Sharda [0045]; [0049].
Albin et al. (US 2017/0372420 A1) discloses a system that attempts to generate more profitable trades by assessing the historic volatility of an asset. Albin [0029-0030]; [0062-0064]. After an asset has been assessed (e.g., based on the volatility), the system provides a user with one or more recommended trading strategies. Albin [0092-0095].
Cella (US 2024/0070236 A1) discloses analyzing the behavior of assets in order to preserve capital. Cella indicates that assets may be chosen for a capital preserving strategy based on the asset having a historically low volatility and/or a forecasted lower volatility. Cella [0045-0046].
Nichani (US 2023/0116401 A1) discloses a system that accesses and processes real-time data feeds to determine pricing or decipher the valuation of any real asset (e.g., an NFT). Nichani [0002]; [0069]. Nichani indicates that the disclosed system allows various types of tokens and non-fungible tokens (NFTs) to be constantly priced and valued. Nichani [0069].
While certain aspects of claims 1, 10 and 19 appear to be known in the art, the prior art, taken either individually or in reasonable combination with other prior art, fails to disclose, suggest, teach, or render obvious the particular combination of steps or elements as recited in claims 1, 10 and 19.
Examiner notes that the claims would still need to overcome any other outstanding rejections (e.g., 35 U.S.C. 112, 35 U.S.C. 101) before a notice of allowance could be issued.
Response to Arguments
Claim Objection
Claim 8 was objected to for a minor informality. Applicants’ amendment has corrected the previously cited issue; accordingly, the prior objection is withdrawn.
Claim Rejections – 35 U.S.C. § 112(b)
Claims 8 and 17 were rejected under 35 U.S.C. 112(b) as being indefinite. Applicants’ amendments have corrected the previously cited issues; accordingly, the prior 112(b) rejections are withdrawn.
Claim Rejections – 35 U.S.C. § 101
Applicant argues that the claims integrate any alleged judicial exception into a practical application because the claims recite a technical improvement to "format transformation of Non-Fungible Token (NFT) via transfer by containerized data structures." Amendment, pp. 10-12. This argument is unpersuasive. Examiner contends that the claims fail to recite any format transformation (e.g., transformation of an NFT). Rather, the claimed invention is merely selecting a particular NFT based on attributes (e.g., volatility attributes), transferring the selected NFT from a first wallet/account to a wallet/account of a third party (i.e., an NFT transaction processor associated with an institution account of the financial institution), and then having the third party pay the second customer’s wallet/account in fiat. There is no requirement in the claim that the NFT is actually converted/transformed into fiat. The NFT transaction processor could merely receive the NFT from the first customer and subsequently pay the second customer with other fiat funds (e.g., reserved fiat).
Applicant also points to Specification paragraphs [0034] and [0073] and suggests that the claimed invention provides a technical improvement to way NFT metrics are detected and transmitted. Amendment, pp. 12-13. This argument is unpersuasive. While the claimed invention now determines a lower volatility metric from a plurality of volatility metrics and selects an NFT based on those metrics, the claimed invention fails to provide any indication that there is an improvement to the way these metrics are determined, detected and/or transmitted. At best, the claimed invention is using metrics that are typically used to evaluate, and/or select, assets (e.g., stocks, securities, real estate, etc.) and applying those same principles to an NFT and/or NFT exchange environment. Merely confining the abstract idea to a particular environment without providing details of how the solution to the problem (e.g., detecting/transmitting NFT metrics) is accomplished is not an indication of a technological improvement.
For the above reasons, and for those set forth in the 35 U.S.C. § 101 rejection seen above, all claims remain rejected under 35 U.S.C. § 101.
Conclusion
Applicants’ 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.
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/J.F./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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