DETAILED ACTION
Status of the Claims
This office action is submitted in response to the application filed on 3/26/25.
Examiner notes that this application claims foreign priority from JP2022-152117.
Examiner further notes Applicant’s priority date of 9/26/22, which stems from the aforementioned Japanese application.
Claims 1-6 are currently pending and have been examined.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations include: an "issuing unit" for issuing virtual currency, an "advertisement display unit" for displaying an advertisement to a user who has uploaded videos, a "granting unit" for granting a first amount of virtual currency to the user, and a "purchasing unit" for purchasing a second amount of virtual currency at a virtual currency exchange, in claim 1. Since a "unit" can be a generic substitute for means, claim 1 meets the first prong of the analysis. Next, the generic placeholders are not modified by sufficient structure. Thus, Applicant appears to have effectively invoked 112(f).
Next, MPEP 2181 requires that the corresponding structure(s) must be disclosed in the specification in a way that one skilled in the art will understand what structure is performing the recited function. See Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1381, 53 USPQ2d 1225, 1230 (Fed. Cir. 1999). Paragraph [0014] discloses that all functional parts of the management server 2 are realized by the CPU 201 reading and executing programs stored in the storage device 203 to the memory 202. Thus, paragraph [0014] provides support for a CPU as the corresponding structure for each of the issuing unit (211), advertisement display unit (213), granting unit (214), and purchasing unit (215).
Finally, MPEP 2181 requires that the specification disclose an algorithm for performing the claimed specific computer function. See Net MoneyIN, Inc. v. Verisign. Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008) and In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011). Paragraphs [0022]-[0023] disclose an algorithm for the advertisement display unit 213, comprising: reading user information from the user information storage unit, searching the advertisement information storage unit for advertisement information matching attributes of the user, selecting a predetermined number from the searched advertisement information, and sending the advertisement data to the user terminal. Paragraph [0024] discloses an algorithm for the granting unit 214, comprising: issuing a transaction that transfers the first amount of virtual currency to the user's wallet in response to the user viewing an advertisement. However, the specification does not disclose a sufficient algorithm for the issuing unit 211 or the purchasing unit 215. With respect to the issuing unit, paragraph [0016] merely states that the issuing unit 211 "issues virtual currency on the blockchain network 3" via an ICO, IEO, or IDO, which restates the claimed function without describing the steps or algorithm by which the CPU performs the issuance. With respect to the purchasing unit, paragraph [0026] states that the purchasing unit 215 "can execute the virtual currency purchase process using known methods," which fails to describe any algorithm and instead relies upon undefined "known methods" to perform the function.
Therefore, because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. However, because the specification fails to disclose sufficient algorithms for the issuing unit and purchasing unit as identified above, claims 1-6 are rejected under 35 U.S.C. 112(a) and 112(b) as set forth below.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As identified in the 35 U.S.C. 112(f) claim interpretation above, the specification fails to disclose a sufficient algorithm for the "issuing unit" and the "purchasing unit" of claim 1. With respect to the issuing unit, the specification merely states that it "issues virtual currency on the blockchain network 3" via an ICO, IEO, or IDO (paragraph [0016]), which restates the function without describing the specific steps performed by the computer to accomplish the issuance. With respect to the purchasing unit, the specification states that it "can execute the virtual currency purchase process using known methods" (paragraph [0026]), which fails to provide any algorithmic detail and instead relies on an undefined reference to "known methods." Because the specification does not describe the algorithms by which a general-purpose computer is programmed to perform the specialized functions of issuing virtual currency and purchasing virtual currency at an exchange, the specification fails to reasonably convey that the inventor had possession of the claimed invention with respect to these limitations. Claims 2-4 depend from claim 1 and inherit this deficiency.
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.
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.
As noted above, the “issuing unit” and “purchasing unit” of Claim 1 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. With respect to the issuing unit, paragraph [0016] merely restates the claimed function of issuing virtual currency without describing the steps by which the computer performs the issuance. With respect to the purchasing unit, paragraph [0026] states that the purchase is executed "using known methods," which is not a disclosure of an algorithm. See Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1312, 102 USPQ2d 1410, 1417 (Fed. Cir. 2012) (the specification must explain how the function is achieved; simply reciting the claimed function in the specification does not satisfy the corresponding structure requirement). Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2-4 depend from claim 1 and inherit this deficiency.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
First, claims 1-4 recite a machine/system and claim 5 recites a process, and are thus deemed to fall within a statutory category. Claim 6, however, describes a “program,” and is thus deemed to be ineligible due to the fact that under the broadest reasonable interpretation, a “program” covers a signal per se unless defined otherwise.
Independent claims 1 and 5-6, in part, describe an invention comprising: (1) "issuing virtual currency"; (2) "granting a first amount of the virtual currency to the user"; and (3) "purchasing a second amount of the virtual currency at a virtual currency exchange." As such, the invention is directed to the abstract idea of issuing a virtual currency, granting amounts of it to users who upload video content, and purchasing additional amounts of the virtual currency at an exchange to fund such rewards, which is aptly categorized as a method of organizing human activity (commercial or legal interactions — specifically, advertising, marketing, and sales activities, as well as managing personal behavior or relationships between people by incentivizing user video uploads through virtual currency rewards). Therefore, under Step 2A, Prong One, the claims recite a judicial exception.
Next, the aforementioned claims recite additional elements that are associated with the judicial exception, including: "an advertisement display unit that displays an advertisement to a user who has uploaded videos." Examiner understands this limitation to be insignificant extrasolution activity. (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Cf. Diamond v. Diehr, 450 U.S. 175, 191-192 (1981) ("[I]nsignificant post-solution activity will not transform an unpatentable principle in to a patentable process.”).
The aforementioned claims also recite additional elements including: (1) an "issuing unit" (claim 1); (2) an "advertisement display unit" (claim 1); (3) a "granting unit" (claim 1); and (4) a "purchasing unit" (claim 1). Claim 2 further discloses a "blockchain" for storing and managing virtual currency. These limitations are recited at a high level of generality, and appear to be nothing more than field-of-use limitations (applying the abstract idea of issuing virtual currency and rewarding users to a computing environment), with generic computer components (the issuing unit, advertisement display unit, granting unit, purchasing unit, and blockchain) to automate the abstract process of managing virtual currency issuance, advertisement display, reward granting, and exchange purchasing. Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at 1983. See MPEP 2106.05(f).
Furthermore, looking at the elements individually and in combination, under Step 2A, Prong Two, the claims as a whole do not integrate the judicial exception into a practical application because they fail to: improve the functioning of a computer or a technical field; apply the judicial exception with a particular machine; effect a transformation or reduction of a particular article to a different state or thing; or apply the judicial exception beyond generally linking the use of the judicial exception to a particular technological environment. Rather, the claims merely use generic computing components to issue virtual currency, display advertisements, grant currency rewards, and purchase currency at an exchange.
Additionally, pursuant to the requirement under Berkheimer, the following citation is provided to demonstrate that the insignificant extra-solution activity identified above amounts to activity that is well-understood, routine, and conventional. See MPEP 2106.05(d).
Displaying advertisements to users via a computing platform. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014).
Thus, taken alone and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea), and are ineligible under 35 USC 101.
Claims 2-4 are dependent on claim 1 and further limit the abstract idea with non-functional descriptive features as follows: specifying that the virtual currency is managed via a proof of stake consensus mechanism and a staking reward is granted to the user in accordance with the amount of virtual currency held (claim 2); specifying that the purchasing unit purchases the virtual currency in response to uploading of the video (claim 3); and specifying that the purchasing unit purchases an amount of the virtual currency according to a charge amount for an advertiser of the advertisement (claim 4). These claims merely specify particular implementation details or variations on the fundamental commercial practice of issuing virtual currency rewards to users and purchasing virtual currency at an exchange. They do not recite any additional functional computer operations beyond generic data processing, and do not affect an improvement in the functioning of the computer itself or in any other technical field. The dependent claims merely add further detail to the abstract idea of virtual currency reward management without providing significantly more than the underlying abstract idea.
Therefore, claims 1-6 are not drawn to eligible subject matter, as they are directed to an abstract idea without significantly more.
Claim 6 is additionally rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. Claim 6 recites "[a] program that causes a computer to execute" certain steps. A claim to a computer program per se, without any structural recitations, does not fall within any of the four statutory categories of invention (process, machine, manufacture, or composition of matter). Software expressed as code or a set of instructions detached from any medium is an idea without physical embodiment. See MPEP 2106.03. A product claim to a software program that does not also contain at least one structural limitation has no physical or tangible form, and thus does not fall within any statutory category. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014). Examiner suggests amending claim 6 to recite a “non-transitory computer-readable medium,” or similar structural language, to overcome this rejection.
Claim Rejections - 35 USC § 102
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 –
(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 and 3-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burke (US 2021/0042830 A1).
Claims 1 and 5-6: Burke discloses a system, method, and program comprising:
“an issuing unit that issues virtual currency” (Paragraphs [0024], [0156]. Burke discloses a digital media system that issues its own digital currency ("RUON") stored within the system's blockchain, where "system tokens can be rewarded for the most viewed video of the day" and the system "can issue one or more system generated or provided rewards, assets, currency, coins, or tokens to one or more users," reading on an issuing unit that issues virtual currency.)
“an advertisement display unit that displays an advertisement to a user who has uploaded videos” (Paragraphs [0155], [0186], [0215], [0231]. Burke discloses a social media platform in which users upload content including images and videos (Paragraph [0155]). Burke further discloses that the platform application supports "in-application promotions, including, but not limited to, banners, advertising space, or other similar methods for displaying advertisements to users" (Paragraph [0231]). Burke also discloses an optional "ad-free functionality where ads are not displayed to a user during use" (Paragraph [0186]), establishing that, by default, advertisements are displayed to users during their use of the platform. Burke additionally discloses that users can use system rewards to "pay to 'turn on' ads for a post" (Paragraph [0215]), directly connecting user-uploaded content with the advertisement display system. Because users of the platform upload videos and the platform displays advertisements to those users by default, Burke reads on an advertisement display unit that displays an advertisement to a user who has uploaded videos.);
“a granting unit that grants a first amount of the virtual currency to the user” (Paragraph [0156]. Burke discloses that "system tokens can be rewarded for the most viewed video of the week" and that users earn coins and tokens for uploading content including images and videos, reading on a granting unit that grants a first amount of virtual currency to the user.); and
“a purchasing unit that purchases a second amount of the virtual currency at a virtual currency exchange” (Paragraphs [0172], [0174]. Burke discloses that "all revenue and money that is awarded to users for top and most popular posts, most watched videos and most liked pictures, etc., can be used for the system to purchase system cryptocurrency and/or any other cryptocurrency from the exchange for the user and then deposited into the user's system crypto wallet" (Paragraph [0172]), and that the system allows for "fees or charges when purchasing tokens or cryptocurrency from an exchange" (Paragraph [0174]), reading on a purchasing unit that purchases a second amount of virtual currency at a virtual currency exchange.)
Claim 3: Burke further discloses a system “wherein the purchasing unit purchases the virtual currency in response to uploading of the video” (Paragraph [0172]. Burke discloses that "all revenue and money that is awarded to users for top and most popular posts, most watched videos and most liked pictures, etc., can be used for the system to purchase system cryptocurrency and/or any other cryptocurrency from the exchange for the user," establishing that the system's purchase of virtual currency from the exchange occurs as a consequence of user video upload activity that generates popular content and revenue, reading on the purchasing unit purchasing virtual currency in response to uploading of the video.).
Claim 4: Burke further discloses a system “wherein the purchasing unit purchases an amount of the virtual currency according to a charge amount for an advertiser of the advertisement” (Paragraphs [0172], [0215], [0231]. Burke discloses that the platform supports advertisements and banners (Paragraph [0231]) and that users can use system rewards to "pay to 'turn on' ads for a post" (Paragraph [0215]), generating advertising revenue from charges to advertisers. Burke further discloses that revenue is used for the system to purchase cryptocurrency from the exchange for the user (Paragraph [0172]), tying the amount of virtual currency purchased to the charges associated with advertising activity on the platform, reading on the purchasing unit purchasing an amount of virtual currency according to a charge amount for an advertiser.)
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Burke (US 2021/0042830 A1) in view of Saponaro (US 2021/0099311 A1).
Burke discloses those limitations cited above. Burke further discloses that the platform's virtual currency ("RUON") is stored within the system's blockchain (Paragraph [0024]) and that the system is built on sovereign blockchain networks for transferring digital data including currency (Paragraph [0163]). However, Burke does not appear to explicitly describe “wherein the virtual currency is managed in a blockchain where consensus is formed by proof of stake, and a staking reward related to the virtual currency is granted to the user in accordance with the amount of the virtual currency held by the user.”
Saponaro, however, discloses “wherein the virtual currency is managed in a blockchain where consensus is formed by proof of stake, and a staking reward related to the virtual currency is granted to the user in accordance with the amount of the virtual currency held by the user” (Paragraphs [0005], [0034], [0038], [0068], [0080]. Saponaro discloses a blockchain system using a proof-of-stake consensus mechanism in which "stakers" replace miners to produce new blocks by risking blockchain funds, and where the staker "receives a staking reward for protecting the chain"; Saponaro further discloses that the system offers "a larger masternode reward, such as a larger percentage of the amount of funds locked" as an economic incentive, and that the "ROI (return on investment) of the locked funds in percentage terms rises as the masternode operator moves up the tier ranking," establishing that staking rewards are granted to users in accordance with the amount of virtual currency held, reading on a virtual currency managed in a blockchain where consensus is formed by proof of stake and a staking reward is granted in accordance with the amount of virtual currency held by the user.)
Therefore, it would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to combine this feature of Saponaro with those of Burke. One would have been motivated to do this in order to implement the virtual currency of Burke on a proof of stake blockchain that grants staking rewards proportional to the amount of currency held, thereby providing an energy-efficient consensus mechanism that incentivizes users to hold the virtual currency and increases the security and stability of the blockchain network.
Other Relevant Prior Art
Though not relied upon in the above rejections, the following references are nevertheless deemed to be relevant to Applicant’s disclosures:
Gainsley et al. (20240420099), directed to the automatic staking of crypto tokens.
Mossoba et al. (12141768), directed to a semi-private blockchain virtual currency exchange system.
Binn et al. (20230177493), directed to a method for an electronic wallet with enhanced cryptocurrency handling and security for debit cards.
リ，スン フ (JP2023507546), directed to a blockchain-based virtual currency intermediation and distribution system with point rewards.
Iervolino et al. (20200090143), directed to a method for online content platform and related cryptocurrency.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BUSCH whose telephone number is (571)270-7953. The examiner can normally be reached M-F 10-7.
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/CHRISTOPHER C BUSCH/Examiner, Art Unit 3621
/WASEEM ASHRAF/Supervisory Patent Examiner, Art Unit 3621