DETAILED ACTION
Status of Application
This action is a Non-Final Rejection. This action is in response to the application filed on March 25, 2025.
Claim 1 is pending and rejected.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on October 30, 2025; January 27, 2026; and March 24, 2026 have been considered by the examiner.
Application Number 16/598,957
Claim 1 was previously examined in the non-final rejection mailed on January 20, 2022 in Application Number 16/598,957. The claim is examined based on that Office action, an updated review of the claim, and an updated search of the prior art.
Claim Objections
Claim 1 is objected to for the following reasons:
Claim 1 recites “receiving a request by the application to use one of the one or more general asset tokens to create one or more specific asset tokens that map to a portion of specific assets from the general asset pool, the one or more assets including the specific assets, the request initiated from a remote machine associated with one of the plurality of users associated which the one of the one or more general asset tokens to be used in the creation of specific asset tokens.” There appears to be a typographical error with respect to the term “which.” For purposes of examination, “which” is interpreted to be “with.”
Claim 1 recites “the general asset tokens” in the first and fourth limitations. There is a lack of antecedent basis for this limitation. For purposes of examination, “the general asset tokens” is interpreted to be “the one or more general asset tokens.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is 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 pre-AIA the applicant regards as the invention. Claim 1 recites “creating a first specific asset token that maps to a portion of a whole specific asset, the first specific asset token based at least in part on the request data.” There is a lack of antecedent basis for “the request data” and it is not clear what is being referenced. For purposes of examination, this limitation is interpreted as “creating a first specific asset token that maps to a portion of a whole specific asset.”
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.
Claim 1 is rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03)
Yes, with respect to claim 1, which recites a method and, therefore, is directed to the statutory class of process.
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a))
The following claim identifies the limitations that recite the abstract idea in regular text and that recite additional elements in bold:
1. A method for providing a multi-tier tokenization platform, comprising:
initializing one or more general asset tokens by an application on a first machine, the one or more general asset tokens associated with a plurality of users of the platform, each of the general asset tokens having a first value, the one or more general asset tokens mapped, by the application, to a value of one or more assets in a general asset pool;
receiving a request by the application to use one of the one or more general asset tokens to create one or more specific asset tokens that map to a portion of specific assets from the general asset pool, the one or more assets including the specific assets, the request initiated from a remote machine associated with one of the plurality of users associated which the one of the one or more general asset tokens to be used in the creation of specific asset tokens;
creating a first specific asset token that maps to a portion of a whole specific asset, the first specific asset token based at least in part on the request data; and
storing a record of the generated specific asset token and the updated status of the general asset token.
Yes. But for the recited additional elements as shown above in bold, the remaining limitations of the claim recites certain methods of organizing human activity. The claim is directed to investing in large scale and illiquid assets. This type of method of organizing human activity is a fundamental economic practice because it includes investing and a commercial interaction such as agreements in the form of contracts, legal obligations, marketing or sales activities or behaviors, and business relations. Thus, the claim recites an abstract idea.
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d))
No. The claim as a whole merely uses a computer as a tool to perform the abstract idea. The computing components (i.e., additional elements that are in bold above) are recited at a high level of generality and are merely invoked as a tool to implement the steps. For example, only a programmed general purpose computing device (i.e., the claimed application on the first machine) is needed to implement the claimed process. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. Additionally, there is no improvement to the functioning of a computer or technology. Therefore, the abstract idea is not integrated into a practical application.
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05)
No. As discussed with respect to Step 2A, Prong 2, the additional elements in the claim, both individually and in combination, amount to no more than tools to perform the abstract idea. Merely performing the abstract idea using a computer cannot provide an inventive concept. Therefore, the claim does not provide an inventive concept.
As such, the claim is not patent eligible.
35 USC §§ 102 and 103
Claim 1 is not rejected under 35 U.S.C. 102 or 103 in light of the determination in the non-final Office action mailed in Application Number 16/598,957 and an updated search of the prior art.
Double Patenting
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,514,411 B2.
Instant Application – Claim 1
Patent Number 11,514,411 B2 (Application Number 16/598,957) – Claim 1
1. A method for providing a multi-tier tokenization platform, comprising:
initializing one or more general asset tokens by an application on a first machine, the one or more general asset tokens associated with a plurality of users of the platform, each of the general asset tokens having a first value, the one or more general asset tokens mapped, by the application, to a value of one or more assets in a general asset pool;
receiving a request by the application to use one of the one or more general asset tokens to create one or more specific asset tokens that map to a portion of specific assets from the general asset pool, the one or more assets including the specific assets, the request initiated from a remote machine associated with one of the plurality of users associated which the one of the one or more general asset tokens to be used in the creation of specific asset tokens;
creating a first specific asset token that maps to a portion of a whole specific asset, the first specific asset token based at least in part on the request data; and
storing a record of the generated specific asset token and the updated status of the general asset token.
1. A method for providing a multi-tier tokenization platform, comprising:
generating one or more general asset tokens based on a general asset pool by a token manager on an administration server, the token manager stored on the administration server and generating the one or more general asset tokens which are based on an asset protocol, the asset protocol stored in a distributed ledger, the asset protocol defining asset attributes and including token status data;
associating, by an application on the administration server, each general asset token with one or more smart contract protocols, the one or more smart contract protocols stored in a distributed ledger, each of the one or more smart contract protocols validating one or more general asset tokens based on the general asset pool, wherein the one or more general asset tokens are associated with a plurality of users of the platform, each of the general asset tokens having a first value, the one or more general asset tokens mapped, by the application, to a value of one or more assets in a general asset pool;
receiving a subscription request from one or more client devices and by the application to use one of the one or more general asset tokens to create one or more specific asset tokens that map to a portion of specific assets from the general asset pool, each of the subscription requests including asset data or data for a user associated with the client device making the request to the administration server, the one or more assets in the general asset pool including the specific assets, wherein each of the one or more client devices is associated with one of the plurality of users associated with the one of the one or more general asset tokens to be used in the creation of specific asset tokens;
creating, by the token manager on the administration server in response to the at least one received subscription request, a first specific asset token that maps to a portion of the value of a specific asset within the general asset pool, the first specific asset token based at least in part on the request data and stored in the distributed ledger;
transferring from the general asset pool the portion of the value of the specific asset that maps to the first specific asset token to a repository within the distributed ledger, the transfer controlled by data within the smart contract or logic associated with the specific asset, and storing a record of the generated specific asset token and the updated status of the general asset token or general asset pool, the record including tasks and data interactions between plurality of users, wherein each of the plurality of users is associated with a remote client device, and the general asset and specific asset tokens stored as data on the distributed ledger.
Although the claims at issue are not identical, the reference claim is not patentably distinct from instant claim 1 because each is drawn to the same invention. Claim 1 is anticipated by or made obvious by reference claim 1 because the limitations in instant claim 1 that are not found in reference claim 1 are broader versions of what is claimed in reference claim 1. To overcome this rejection, Applicant should file a Terminal Disclaimer or amend the claims. Upon double patenting being the only remaining rejection in this application, Examiner will review and update it, as appropriate, in light of the pending claims.
Relevant Prior Art
The following references are relevant to Applicant’s invention:
RovelleQuartz, U.S. Patent Application Publication Number 2015/0081589 A1. This reference teaches an exchange that allows participants to generate tokens that can be exchanged by remitting assets into an asset pool.
Hurtado et al., U.S. Patent Application Publication Number 2020/0042908 A1. This reference teaches a method for managing digital tokens in a common risk mitigation mechanism. Data relating to a tender offer by a purchasing entity for an infrastructure project and data relating to a guarantee of required financing for the tender offer are received. Data pertaining to the tender offer is combined with data pertaining to the guarantee into a single cryptographically encrypted digital token.
Clark, U.S. Patent Application Publication Number 2017/0116671 A1. This reference teaches a method for leveraging business entities as real estate investment trusts. Shares in a REIT are sold.
Rohlfs, U.S. Patent Application Publication Number 2019/0095995 A1. This reference teaches a computerized exchange-controlled network based system that facilitates trading digitized asset-based mediums of exchange.
Arvanaghi et al., U.S. Patent Number 10,929,842 B1. This reference teaches an invention for depositing and withdrawing a stable value digital asset tied to a blockchain in exchange for fiat.
Doney, U.S. Patent Application Publication Number 2017/0213289 A1. This reference teaches a method of creating collateralized portfolios.
QuantmRE. “Why Asset-Backed Tokens could be a Better Investment than REITS or Rentals,” https://launch.quantmre.com/asset-backed-tokens-are-a-better-investment-than-reits-or-rentals/ (Oct. 3, 2018). QuantmRE teaches asset backed tokens that are tied to real estate.
Kauflin, Jeff. “This Startup Could Finally Bring Real Estate into the Blockchain Era,” Forbes, https://www.forbes.com/sites/jeffkauflin/2018/04/17/this-startup-could-finally-bring-real-estate-into-the-blockchain-era/?sh=6bac7fe43a4b (Apr. 17, 2018). This reference teaches using blockchain technology to turn hard-to-trade assets such as real estate and private equity into tokenized securities.
Trakx. “Overview of Asset-Backed Tokens,” Medium.com, https://medium.com/@Trakx.io/overview-of-asset-backed-tokens-90f1986de233 (Sep. 6, 2018). This reference teaches asset backed tokens.
Vidal, Maria T. “Tokenizing Real Estate on the Blockchain,” Medium.com, https://medium.com/@mariat.vidal/tokenizing-real-estate-on-the-blockchain-9a13ae99bf11 (Jul. 27, 2017). This reference teaches the tokenization of real estate.
“Applying Blockchain in Securitization: Opportunities for Reinvention,” Deloitte, https://www2.deloitte.com/content/dam/Deloitte/us/Documents/regulatory/us-sfig-report-applying-blockchain-in-securitization-opportunities-for-reinvention.pdf (2017). This reference discusses the use of blockchain for the global financial system, including securitization.
Email Communications
Per MPEP 502.03, Applicant may authorize email communications by filing Form PTO/SB/439, available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, via the USPTO patent electronic filing system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH H ROSEN whose telephone number is (571) 270-1850 and email address is elizabeth.rosen@uspto.gov. The examiner can normally be reached Monday - Friday, 10 AM ET - 7 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Anderson, can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH H ROSEN/Primary Examiner, 3693
Prosecution Insights