DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed 03/03/2026.
Claims 1-14 are elected.
Claims 15-20 are withdrawn.
Claims 1-14 are pending.
Claims 1-14 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 .
Restriction/Election Acknowledgement
The Applicant’s election on claims 1-14 without traverse in the reply on 03/03/2026 is acknowledged. Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group(s).
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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (101 Analysis: Step 1). Even if the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (101 Analysis: Step 2a(Prong 1), and if so, Identify whether there are any additional elements recited in the claim beyond the judicial exception(s), and evaluate those additional elements to determine whether they integrate the exception into a practical application of the exception. (101 Analysis: Step 2a (Prong 2). If additional elements does not integrate the exception into a practical application of the exception, claim still requires an evaluation of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception. If the claim as a whole amounts to significantly more than the exception itself (there is an inventive concept in the claim), the claim is eligible. If the claim as a whole does not amount to significantly more (there is no inventive concept in the claim), the claim is ineligible. (101 Analysis: Step 2b).
The 2019 PEG explains that the abstract idea exception includes the following groupings of subject matter: a) Mathematical concepts b) Certain methods of organizing human activity and c) Mental processes
Analysis
In the instant case, claim 1 is directed to a method.
Step 2a.1– Identifying an Abstract Idea
The claims recite the steps of “encrypting an NFT … associating the at least partially obfuscated NFT with a smart contract … receiving a request from a buyer to purchase … and executing, based on receiving the request from the buyer, the smart contract to complete the transaction ….” The recited limitations fall within the certain methods of organizing human activity grouping of abstract ideas, specifically, commercial behavior, for example, contracting for a purchase. Accordingly, the claims recites an abstract idea.
See MPEP 2106.
Step 2a.2 – Identifying a Practical Application
The claim does not currently recite any additional elements or combination of additional elements that integrate the judicial exception into a practical application. The use of a distributed ledger or blockchain does not preclude the claim from reciting an abstract idea as the blockchain recites functions of a generic computer component, such as storing records.
Encrypting data is not an abstract idea. Encryption is a mathematical formulation. Additionally, encrypting data to obfuscate it, is drawn to the abstract idea of mitigating risk in a transaction.
Accordingly, even in combination, 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.
Mere instructions to apply the exception using generic computer components and limitations to a particular field of use or technological environment do not amount to practical applications. The claim in directed to an abstract idea.
Step 2b
The claim limitations recite “encrypting an NFT … associating the at least partially obfuscated NFT with a smart contract … receiving a request from a buyer to purchase … and executing, based on receiving the request from the buyer, the smart contract to complete the transaction ….” are not additional elements and they amount to no more than mere instructions to apply the exception using a generic computer component. For the same reason these elements are not sufficient to provide an inventive concept. This is also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs, court decision cited in MPEP 2106.05(d)(II) indicates that mere receipt or transmission of data over a network is a well-understood, routine and conventional function when it is claimed in a merely generic manner, as it is here. Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim and thus the claim is not eligible.
Viewed as a whole, instructions/method claims recite the concept of a commercial behavior as performed by a generic computer. The claims do not currently recite any additional elements or combination of additional elements that amount to significantly more than the judicial exception. The elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea in a network, and/or merely uses a network as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular environment.
Dependent claims 2, 4, 8 and 13 discuss functions in more descriptive detail of the steps geared toward the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
Dependent claims 3, 5-7, 9-12 and 14 provide descriptive language surrounding the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Therefore, based on case law precedent, the claims are claiming subject matter similar to concepts already identified by the courts as dealing with abstract ideas. See Alice Corp. Pty. Ltd., 573 U.S. 208 (citing Bilski v. Kappos, 561, U.S. 593, 611 (2010)).
The claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. See Alice Corp. Pty. Ltd., 573 U.S. 208. Mere instructions to apply the exception using a generic computer component and limitations to a particular field of use or technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Conclusion
The claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not affect an improvement to another technology or technical filed; the claim does not amount to an improvement to the functioning of a computer system itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Dependent claims do not resolve the deficiency of independent claims and accordingly stand rejected under 35 USC 101 based on the same rationale.
Dependent claims 2-14 are also rejected.
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.
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 4 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 4 recites the limitation "the one or more respective cryptographic hashes”. There is insufficient antecedent basis for this limitation in the claim.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 8, 9, and 12-14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kurani et al. (US 12475457) (“Kurani”).
Regarding claim 1, Kurani discloses at least partially encrypting an NFT to produce the at least partially obfuscated NFT (column 8, line 36-67, column 12, line 59-67, column 15, line 45-67)
Kurani - The NFT smart contract 220 can include an encapsulation layer that, for example, maintains the gated NFTs 222 in an encrypted state. The NFT smart contract 220 can permit access to the gated NFTs 222 based on a private key, for example, compatible with the encapsulation layer and operable to decrypt the encryption corresponding to the encapsulation layer… The container 320 can include a security layer that restrict access to one or more of the NFTs or cryptographic keys. The container 320 can include, for example, a security encapsulation that partially or completely encrypts one or more components of the container 320. (column 8, line 36-55, column 12, line 59-67)
associating the at least partially obfuscated NFT with a smart contract that defines conditions under which the at least partially obfuscated NFT will be transferred to a buyer with a decryption key to decrypt the at least partially obfuscated NFT, (column 3, line 27-67, column 5, line 29-67, column 6, line 23-39, column 8, line 36-67, column 10, line 29-67, column 11, line 37-55, column 12, line 12-24, column 14, line 44-67, column 16, line 23-64)
Kurani - in response to the request, generate or modify an smart contract to include the NFT and one or more cryptographic keys associated with one or more accounts linked with the request…The transaction processor 250 can transfer public-private key pairs based on one or more operations of the cryptographic key processor 120, (column 3, line 55-67, column 10, line 29-43)
wherein the conditions ensure that a clear portion of the at least partially obfuscated NFT is part of the at least partially obfuscated NFT, and that the at least partially obfuscated NFT will be transferred with the decryption key for the at least partially obfuscated NFT (column 3, line 27-67, column 5, line 29-67, column 6, line 40-67, column 7, line 1-29, column 8, line 6-35, column 13, line 16-25)
Kurani - in response to the request, generate or modify an smart contract to include the NFT and one or more cryptographic keys associated with one or more accounts linked with the request… The container output controller 324 can selectively transfer at least NFTs and cryptographic keys from and to the container 320 based on determinations from the container key processor 322. (column 3, line 55-67, column 13, line 16-25)
receiving a request from a buyer to purchase the at least partially obfuscated NFT; and (column 9, line 7-67, column 12, line 4-11, column 13, line 26-34, column 18, line 2-20)
Kurani - The request token 232 can identify an NFT and can identify one or more characteristics linked with the NFT or corresponding to a request to allocate the NFT. For example, the request token 232 can include an identifier of the NFT, a hash of the NFT, an identifier of one or more accounts of the account system 104 linked with the NFT, one or more accounts of the account system 104 linked with the request to allocate the NFT,… The allocation modification metric can correspond to an instruction to allocate a fraction of an NFT from a first account to a second account in response to receiving a payment at the first account or a third account associated with the first account or a cryptographic key of the first account. (column 9, line 22-47)
executing, based on receiving the request from the buyer, the smart contract to complete the transaction based on the conditions of the smart contract (column 3, line 55-67, column 9, line 22-47, column 10, line 60-67, column 11, line 1-36, column 18, line 24-58)
Kurani - the smart contract can allocate 20% of an NFT to a first account of a buyer, and 80% of the NFT to a second account linked with a lender… the smart contract 220 can transfer 1% of an allocation of the NFT from a key pair corresponding to a first account, to a key pair corresponding to a second account, in response to detecting or receiving an indication of a payment of $1,000 to a fiat currency account (column 3, line 55-67, column 9, line 22-47)
Regarding claim 2, Kurani discloses dividing the NFT into a plurality of blocks (column 3, line 36-50, column 10, line 44-67, column 12, line 24-49).
Regarding claim 3, Kurani discloses herein at least partially encrypting the NFT comprises encrypting one or more blocks of the plurality of blocks with a respective cryptographic hash (column 10, line 44-67, column 12, line 16-25).
Regarding claim 4, Kurani discloses creating a construction comprising the one or more respective cryptographic hashes (column 5, line 29-55, column 12, line 16-25).
Regarding claim 8, Kurani discloses receiving a fraud proof from the buyer indicating that one or more respective hash values associated with the one or more blocks are not satisfied after decryption of the at least partially obfuscated NFT (column 12, line 60-67, column 17, line 38-60).
Regarding claim 9, Kurani discloses wherein based on receiving the fraud proof, the transaction will fail (column 12, line 60-67, column 14, line 44-67, column 17, line 38-60).
Regarding claim 12, Kurani discloses wherein the unique identifiable information comprises at least one of biometric information or personal identifiable information (column 13, line 33-67, column 14, line 18-25, column 16, line 5-15).
Regarding claim 13, Kurani discloses publishing the at least partially obfuscated NFT on an NFT marketplace (column 13, line 33-67, column 17, line 38-60).
Regarding claim 14, Kurani discloses wherein if the conditions of the smart contract are not satisfied, the transaction will fail (column 8, line 36-67, column 9, line 1-6, column 14, line 44-67, column 17, line 38-60).
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.
Claims 5-7, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kurani et al. (US 12475457) (“Kurani”), and further in view of Shattil (US 12513012) (“Shattil”).
Regarding claim 5, Kurani does not disclose wherein the construction comprises one or more nodes, and wherein each node of the one or more nodes comprises the one or more respective cryptographic hashes. Shattil teaches wherein the construction comprises one or more nodes, and wherein each node of the one or more nodes comprises the one or more respective cryptographic hashes (column 4, line 61-67, column 5, line 1-14, column 6, line 15-67, column 33, line 42-67, column, line 1-67). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Kurani and Shattil in order to manage NFTs, keep data confidential, and provide unrestricted access to authorized entities (Shattil; column 2, line 63-67, column 3, line 1-6 ).
Regarding claim 6, Shattil teaches wherein the construction comprises a root, wherein the root comprises a root cryptographic hash, and wherein the root cryptographic hash is capable of decrypting the at least partially obfuscated NFT to produce the NFT (column 6, line 15-35, column 33, line 42-67, column 34, line 1-67).
Regarding claim 7, Shattil teaches wherein the decryption key comprises the root cryptographic hash (column 6, line 15-35, column 46, line 50-60).
Regarding claim 10, Shattil teaches wherein the construction is a Merkle tree- based construction or an identity based encryption-based construction (column 6, line 15-35, column 33, line 42-67, column 34, line 1-67).
Regarding claim 11, Shattil teaches wherein when the construction is an identity based encryption-based construction, each cryptographic hash of the one or more respective cryptographic hashes is based on unique identifiable information associated with a creator of the NFT (column 6, line 15-67, column 7, line 1-47).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Venkatesh et al., (US 20220109557) teaches the decrypted block data with a root hash.
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/ILSE I IMMANUEL/Primary Examiner, Art Unit 3685