DETAILED ACTION
Status of Application
This action is a Non-Final Rejection. This action is in response to the application filed on March 26, 2025.
Claim 1 has been canceled.
Claims 2-23 have been added.
Claims 2-23 are 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 September 29, 2025; January 26, 2026; and March 24, 2026 have been considered by the examiner.
Claim Objections
Claim 16 is objected to for the following reason: Claim 16 recites “wherein the asset protocol automatically translating, by the asset protocol,….” This limitation includes a typographical error. For purposes of examination, “wherein the asset protocol” is interpreted as “further comprising.” 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 7 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 7 recites “the asset pool manager.” There is a lack of antecedent basis for “the asset pool manager.” 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 2-23 are 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 claims 2-23, which recite a method and, therefore, are directed to the statutory class of process.
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a))
The following claims identify the limitations that recite the abstract idea in regular text and that recite additional elements in bold:
2. A method for providing a tokenization platform, comprising:
generating one or more general asset tokens for a general asset pool on an administration server by a token manager, the one or more general asset tokens based on an asset protocol, the asset protocol stored in a distributed ledger, the asset protocol defining asset attributes and including token status data, the token status data including a general asset token status of active or frozen;
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 the distributed ledger, each of the one or more smart contract protocols validating the one or more general asset tokens within the general asset pool,
wherein the one or more general asset tokens are associated with a plurality of users of the tokenization platform, mapped by an application to a general asset pool, the one or more general asset tokens created by the application representing ownership interest in the general asset pool and stored in the distributed ledger, each of the one or more general asset tokens having a first value;
updating at least one general asset token of the one or more general asset tokens on the distributed ledger, the updating including a lifespan of the at least one general asset token and an indication if the at least one general asset token is one of transferred, frozen or burned, the update controlled by data within at least one of the one or more smart contracts stored on the distributed ledger; and
storing a record of the generated one or more general asset tokens and a status of the one or more general asset tokens, the record stored as a digital asset and including tasks and data interactions between the plurality of users, wherein each user in the plurality of users is associated with a remote client device, the general asset pool and the one or more general asset tokens stored as data on the distributed ledger.
3. The method of claim 2, further comprising:
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 portions of specific assets from the general asset pool, each of the subscription requests including asset ownership data for a user associated with the one or more client devices making the request to the distributed ledger, wherein each of the one or more client devices associated with one of the plurality of users associated with one of the one or more general asset tokens to be used for creating the one or more specific asset tokens.
4. The method of claim 3, further comprising:
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 a specific asset within the general asset pool, the first specific asset token based at least in part on the request data; and
storing, as a digital asset, a record of the generated specific asset token and the updated status of the at least one general asset token, 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 at least one general asset token and the one or more specific asset tokens stored as data on the distributed ledger.
5. The method of claim 3, further comprising:
associating, by an application on the administration server, each specific asset token with one or more smart contract protocols, the one or more smart contract protocols stored in the distributed ledger, each of the one or more smart contract protocols validating the one or more specific asset tokens.
6. The method of claim 3, further comprising:
transferring the portion of the specific asset that maps to the first specific asset token to a repository, the transfer controlled by data within the smart contract or logic associated with the specific asset.
7. The method of claim 6, further comprising:
updating a repository by the asset pool manager stored in memory on the administration server to include the one or more general asset tokens or the one or more specific asset tokens.
8. The method of claim 6, further comprising
unassociating the one or more general asset tokens from the repository and associating the one or more general asset tokens with an updated general asset pool with different member and value attributes, the one or more general asset tokens having a second value based on the prior general asset pool augmented by newly added assets or changes in pool composition or changes in underlying asset values.
9. The method of claim 3, wherein a first specific asset of the specific assets is mapped by a second mapping to a first specific asset token, wherein the first specific asset token maps to a portion of specific asset that is less than a specific asset.
10. The method of claim 3, wherein the value of the specific asset token is equivalent to the one or more general asset tokens associated with the specific asset portion and a transactional fee.
11. The method of claim 3, wherein the specific asset and all specific asset tokens mapped to the specific asset are associated with an asset that is a financial asset or a physical asset.
12. The method of claim 3, further comprising:
storing specific asset token information in the distributed ledger by the application, the distributed ledger maintained by one or more distributed machines.
13. The method of claim 12, further comprising:
receiving a request by the application stored on the administration server to transfer ownership of a specific asset token between a client device associated with a first user and a second client device associated with a second user of the plurality of users; and
updating the distributed ledger based on the transfer of ownership of the specific asset token between the first user and the second user.
14. The method of claim 3, wherein a specific asset token of the one or more specific asset tokens can be acquired using currency.
15. The method of claim 3, further comprising:
creating, by a general asset token of the one or more general asset tokens, a specific asset token of the one or more specific asset tokens through an auction administered through the administration server.
16. The method of claim 3, wherein the asset protocol
automatically translating, by the asset protocol, the asset valuation data and updates into one or more elements that are encoded into the one or more general asset tokens.
17. The method of claim 2, further comprising:
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 the distributed ledger, each of the one or more smart contract protocols validating the one or more general asset tokens within the general asset pool.
18. The method of claim 2, further comprising
storing general asset token information in the distributed ledger by the application, the distributed ledger maintained by one or more distributed machines.
19. The method of claim 18, further comprising:
receiving a request by the application stored on the administration server to transfer ownership of a general asset token of the one or more general asset tokens between a client device associated with a first user and a second client device associated with a second user of the plurality of users; and
updating the distributed ledger based on a transfer of ownership of the general asset token of the one or more general asset tokens between the first user and the second user, the transfer of ownership performed in response to the ownership transfer request.
20. The method of claim 2, further comprising:
receiving an asset recommendation request by the application on the administration server from a client device associated with one of the plurality of users;
processing data associated with the user by a model for generating recommended asset information, the model having been trained with data; and
providing recommendation data by the application on the administration server to the client device associated with the one of the plurality of users based on an output of the model.
21. The method of claim 2, wherein the datastore is implemented at least in part by the distributed ledger on one or more remote machines with respect to the administration server.
22. The method of claim 2, wherein the update includes one or more of a change in value of an updated general asset token of the one or more general asset tokens, a change in ownership of the updated general asset token, a change in the composition of the general asset pool, or a change in the value of the general asset pool.
23. The method of claim 2, wherein a general asset token of the one or more general asset tokens can be acquired using currency.
Yes. But for the recited additional elements as shown above in bold, the remaining limitations of the claims recite certain methods of organizing human activity. The claims are directed to generating asset tokens for 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 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 claims as a whole merely use 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 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 claims, 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 claims do not provide an inventive concept.
As such, the claims are not patent eligible.
35 USC §§ 102 and 103
Claims 2-23 are not rejected under 35 U.S.C. 102 or 103 in light of the determination of novelty and non-obviousness in Application Number 17/985,697 and an updated search of the prior art. Instant Claim 2 is a method claim that corresponds to allowed claim 1 in Application Number 17/985,697.
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 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,288,197 B2.
Instant Application – Claim 2
Patent Number 12,288,197 B2 (Application Number 17/985,697) – Claim 1
2. A method for providing a tokenization platform, comprising:
generating one or more general asset tokens for a general asset pool on an administration server by a token manager, the one or more general asset tokens based on an asset protocol, the asset protocol stored in a distributed ledger, the asset protocol defining asset attributes and including token status data, the token status data including a general asset token status of active or frozen;
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 the distributed ledger, each of the one or more smart contract protocols validating the one or more general asset tokens within the general asset pool,
wherein the one or more general asset tokens are associated with a plurality of users of the tokenization platform, mapped by an application to a general asset pool, the one or more general asset tokens created by the application representing ownership interest in the general asset pool and stored in the distributed ledger, each of the one or more general asset tokens having a first value;
updating at least one general asset token of the one or more general asset tokens on the distributed ledger, the updating including a lifespan of the at least one general asset token and an indication if the at least one general asset token is one of transferred, frozen or burned, the update controlled by data within at least one of the one or more smart contracts stored on the distributed ledger; and
storing a record of the generated one or more general asset tokens and a status of the one or more general asset tokens, the record stored as a digital asset and including tasks and data interactions between the plurality of users, wherein each user in the plurality of users is associated with a remote client device, the general asset pool and the one or more general asset tokens stored as data on the distributed ledger.
1. A system for providing a tokenization platform, comprising:
a server having memory and a plurality of processors;
one or more modules stored on said memory and executed by the plurality of processors, the one or more modules executable to generate one or more general asset tokens for a general asset pool on an administration server, the one or more modules implementing a token manager which generates 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, each general asset token associated, by an application on the administration server, with one or more smart contract protocols, the one or more smart contract protocols stored in the distributed ledger, each of the one or more smart contract protocols validating the one or more general asset tokens within the general asset pool;
the token status data including a general asset token status of active or frozen, wherein the one or more general asset tokens are associated with a plurality of users of the tokenization platform, mapped by an application to a general asset pool, the one or more general asset tokens created by the application representing ownership interest in the general asset pool and stored in the distributed ledger, each of the one or more general asset tokens having a first value;
wherein at least one general asset token of the one or more general asset tokens are updated on the distributed ledger, the update including a lifespan of the at least one general asset token and an indication if the at least one general asset token is one of transferred, frozen or burned, the update controlled by data within at least one of the one or more smart contracts stored on the distributed ledger; and
a record of the generated one or more general asset tokens and a status of the one or more general asset tokens, the record stored as a digital asset and including tasks and data interactions between the plurality of users, wherein each user in the plurality of users is associated with a remote client device, the general asset pool and the one or more general 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 2 because each is drawn to the same invention. Claim 2 is anticipated by 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.
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, 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.
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.
/ELIZABETH H ROSEN/Primary Examiner, 3693
Prosecution Insights