DETAILED ACTION
This office action is in response to the application filed on 6/3/2025. Claim(s) 1-20 is/are pending and are 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 .
Priority/Benefit
Applicant’s priority claim is hereby acknowledged of NETHERLANDS 2037868 06/06/2024, which papers have been placed of record in the file.
Information Disclosure Statement PTO-1449
The Information Disclosure Statement(s) submitted by applicant on 6/3/2025 and 8/14/2025 has/have been considered. The submission is in compliance with the provisions of 37 CFR § 1.97. Form PTO-1449 signed and attached hereto.
Claim Objections
Claim(s) 14 is/are objected to because of the following informalities: The examiner suggests the following corrections:Claim 14:
Deletion of "[[]]" or perhaps putting a status identifier if the additional space is being removed.
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(s) 14 and 16-18 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. As per independent claim 14, “A computer program product[[]] comprising computer instructions which, when executed 3 on a token creator device, at least one token receiver device and a token qualifier device, perform the steps of” is recited. Such language points to software per se when there is no language in the claim or specification by which the claim elements can be made functional and statutory. Therefore, a person of ordinary skill in the art would interpret the limitations to mean merely computer executable functions, rendering the claimed product comprising merely executable functions, which is non-statutory. As such, claim(s) 14 is/are drawn to non-statutory subject matter. See MPEP § 2106.01.
Dependent claim(s) 16-18 does/do not remedy the deficiencies of parent claims and is/are therefore also directed to the non-statutory subject matter.
Examiner recommends adding “tangible non-transitory” to overcome the rejection.
Claim Interpretations - 35 USC § 112(f)
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 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.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 limitation(s) is/are: “A system for processing and distributing a distribution scheme comprising a token creator device, at least one token receiver device and a token qualifier device, the system configured to perform the steps of…” in claim 15.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
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 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.
Claim(s) 15 and 19-20 is/are rejected under 35 U.S.C. 112 (b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Regarding claim(s) 15, 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked by the limitation " A system for processing and distributing a distribution scheme comprising a token creator device, at least one token receiver device and a token qualifier device, the system" for performing the function " configured to perform the steps of: - creating an initial token comprising distribution rules; - digitally signing the initial token using a token creator signature, forming a signed initial token; - for counter i in the range 1 to n inclusive, where n can be any integer greater than or equal to 1, the method further comprises - providing the signed initial token, if i=1, or a signed (i-1)-th active token, if i>1, to an i-th receiver; - adding i-th receiver data to the signed initial token or the signed (i-1)th active token forming an i-th active token; - digitally signing, using an i-th receiver signature, the i-th active token forming a signed i- th active token; 4 - adding qualifying event data to the signed m-th active token, where m can be any integer with 1<=m<=n forming a qualifying token; - digitally signing the qualifying token using a token qualifier signature forming a signed qualifying token; - verifying the token creator signature, the i-th receiver signature, and the token qualifier signature; - in case the signatures are verified, executing the distribution rules, wherein the distribution rules determine a reward for the first to m-th receivers based on their order relative to the initial token and/or to the qualifying token." However, Applicant's Specification does not clearly link this function to any structure (e.g., hardware and any necessary algorithm) capable of performing it. See, e.g., Telcordia Techs., Inc. v. Cisco Systems, Inc., 612 F.3d 1365 (Fed. Cir. 2010). Accordingly, the limitation renders the claim indefinite. See, e.g., In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc).
Dependent claim(s) 19-20 is/are rejected for the reasons presented above with respect to rejected claim(s) 15 in view of their dependence thereon.
Examiner recommends adding “comprising one or more processors coupled to a memory”.
Claim Rejections - 35 USC § 112
The following is a quotation 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.
Claim(s) 15 and 19-20 is/are rejected under 35 U.S.C. 112 (a), 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 enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. In particular, the specification does not describe the functions identified above for 35 USC 112f and the rejection under 35 112b. The dependent claims inherit the deficiencies of the claims upon which they ultimately claim; the analysis provided above applies to each of the claims and are rejected as well.
Examiner recommends adding “comprising one or more processors coupled to a memory” in claim 15 to overcome the rejections under 35 USC 112b and 35 USC 112a.
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 of this title, 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(s) 1, 5-10, 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jakobsson (US 2023/0120534 A1), in view of Jakobsson (US 2024/0430114 A1) hereinafter referred to as Jakobsson24.
Regarding claims 1, 14, and 15, Jakobsson teaches:
“A computer-implemented method for processing and distributing a distribution scheme (Jakobsson, ¶ 100, 104, and 220 teaches processor, memory and media for implementing the method steps), comprising: - creating an initial token comprising distribution rules (Jakobsson, ¶ 151, 290-291 and 319 teaches token creation with policy rules which control how the token is used and transferred); - digitally signing the initial token using a token creator signature, forming a signed initial token (Jakobsson, ¶ 174 minted token are signed by the creator); -the method further comprises - providing the signed initial token, if i=1, or a signed (i-1)-th active token, if i>1, to an i-th receiver (Jakobsson, ¶ 174, 176-177, and 316-318 teaches an initial token is provided to a receiver and consequently secondary possessors can transfer active token to additional receivers); - adding i-th receiver data to the signed initial token or the signed (i-1)th active token forming an i-th active token (Jakobsson, ¶ 278 teaches inclusion of ownership identifier); - digitally signing, using an i-th receiver signature, the i-th active token forming a signed i- th active token (Jakobsson, ¶ 349-350 teaches inclusion of digital signatures by entities involved in ownership transfer); - adding qualifying event data to the signed m-th active token, where m can be any integer with 1<=m<=n forming a qualifying token (Jakobsson, ¶ 290, 297, and 360 teaches adding events such as transfer of ownership events to the token based on determination of valid transactions for royalty payments); - digitally signing the qualifying token using a token qualifier signature forming a signed qualifying token (Jakobsson, ¶ 349 teaches inclusion of the digital signature by entities involved in ownership transfer); - verifying the token creator signature, the i-th receiver signature, and the token qualifier signature (Jakobsson, ¶ 349-350 teaches verification of signatures of all ownership transfer transactions); - in case the signatures are verified, executing the distribution rules, wherein the distribution rules determine a reward for the first to m-th receivers based on their order relative to the initial token and/or to the qualifying token (Jakobsson, ¶ 317-319 teaches provision of rewards to users and other intermediate user based on their order in the distribution chain with regard to the initial token and derived new tokens)”.
Jakobsson does not, but in related art, Jokobsson24 teaches:
“for counter i in the range 1 to n inclusive, where n can be any integer greater than or equal to 1 (Jakobsson24, ¶ 370 explicitly describes a counting process using integers)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Jakobsson and Jokobsson24, to modify the NFT system of Jakobsson to include the integer counting method as taught in Jakobsson24. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Regarding claim 5, Jakobsson and Jokobsson24 teaches:
“The method according to claim 1 (Jakobsson and Jokobsson24 teaches the limitations of the parent claim as discussed above), wherein the distribution rules determine a reward for only the (n-p)-th to n-th receiver, where p is smaller than n (Jakobsson, ¶ teaches that a reward is given for a first number of receivers)”.
Regarding claim 6, Jakobsson and Jokobsson24 teaches:
“The method according to claim 1 (Jakobsson and Jokobsson24 teaches the limitations of the parent claim as discussed above), wherein the distribution rules determine a reward for only the first to q-th receiver, where q is smaller than n (Jakobsson, ¶ teaches that a reward is given for a first number of receivers)”.
Regarding claim 7, Jakobsson and Jokobsson24 teaches:
“The method according to claim 1 (Jakobsson and Jokobsson24 teaches the limitations of the parent claim as discussed above), wherein the initial token comprises a reference to a dataset in a database (Jakobsson, ¶ 82 teaches verification based on a database)”.
Regarding claim 8, Jakobsson and Jokobsson24 teaches:
“The method according to claim 1 (Jakobsson and Jokobsson24 teaches the limitations of the parent claim as discussed above), wherein the qualifying event data comprises transaction data from the distribution chain including receivers in the distribution chain that are subject to the distribution rules as defined in the initial token (Jakobsson, ¶ 290 and 297 teaches the policy control from the owner of the token during the transactions)”.
Regarding claim 9, Jakobsson and Jokobsson24 teaches:
“The method according to claim 1 (Jakobsson and Jokobsson24 teaches the limitations of the parent claim as discussed above), further comprising: - associating peripheral distributor data with the initial token, i-th active token, or qualifying token, wherein the peripheral distributor data provides additional context or descriptive information beneficial to parties within the system (Jakobsson, ¶ 359 teaches the association of tokens with metadata)”.
Regarding claim 10, Jakobsson and Jokobsson24 teaches:
“The method according to claim 1 (Jakobsson and Jokobsson24 teaches the limitations of the parent claim as discussed above), wherein executing the distribution rules comprises: - generating payout data and associating the payout data with the first qualifying token, thereby creating a payout token (Jakobsson, ¶ 165 and 253 policy conditions which facilitate the payout of the token)”.
Regarding claim 12, Jakobsson and Jokobsson24 teaches:
“The method according to claim 1 (Jakobsson and Jokobsson24 teaches the limitations of the parent claim as discussed above), wherein the information in the token is encrypted using a private key of the token creator, and wherein the integrity and authenticity of the token can be verified using a corresponding public key (Jakobsson, ¶ 174 teaches using a PKI system to verify the integrity of a transaction using a smart contract)”.
Regarding claim 13, Jakobsson and Jokobsson24 teaches:
“The method according to claim 1 (Jakobsson and Jokobsson24 teaches the limitations of the parent claim as discussed above), further comprising: - storing a cryptographic hash of the transaction data and qualifying event data in at least one administrator database, allowing for verification of the integrity and authenticity of the data contained within the token (Jakobsson, ¶ 181 teaches hashing to verify the integrity of a transaction)”.
Claim(s) 2-3, 16-17, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jakobsson in view of Jakobsson24 in view of Yantis (US 2021/0248594 A1).
Regarding claims 2, 16, and 19, Jakobsson and Jokobsson24 teaches:
“The method according to claim 1 (Jakobsson and Jokobsson24 teaches the limitations of the parent claim as discussed above)”.
Jakobsson and Jokobsson24 do not, but in related art, Yantis teaches:
“wherein the process of providing the signed token to receivers comprises duplicating the signed token wherein a sender retains the signed token while a duplicated instance is created for the receiver with updated transaction data (Yantis, ¶ 848 teaches embedding the token in media to send to a receiver and the information is also stored on a distributed ledger)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Jakobsson, Yantis and Jokobsson24, to modify the NFT system of Jakobsson and Jakobsson24 to include the method to send a copy of the token to the recipient as taught in Yantis. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Regarding claims 3, 17, and 20, Jakobsson and Jokobsson24 teaches:
“The method according to claim 1 (Jakobsson and Jokobsson24 teaches the limitations of the parent claim as discussed above)”.
Jakobsson and Jokobsson24 do not, but in related art, Yantis teaches:
“wherein the process of signing the qualifying token comprises duplicating the qualifying token, wherein a holder retains the qualifying token while a duplicated instance is created with updated qualifying event data (Yantis, ¶ 848 teaches embedding the token in media to send to a receiver and the information is also stored on a distributed ledger)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Jakobsson, Yantis and Jokobsson24, to modify the NFT system of Jakobsson and Jakobsson24 to include the method to send a copy of the token to the recipient as taught in Yantis. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Claim(s) 4 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jakobsson in view of Jakobsson24 in view of Furche (US 2023/0020084 A1).
Regarding claims 4 and 18, Jakobsson and Jokobsson24 teaches:
“The method according to claim 1 (Jakobsson and Jokobsson24 teaches the limitations of the parent claim as discussed above)”.
Jakobsson and Jokobsson24 do not, but in related art, Furche teaches:
“wherein the verifying the token creator signature, the 1- th receiver signature, and the token qualifier signature is performed by validating signed transactions records stored within the token itself rather than through a distributed consensus mechanism (Furche, ¶ 23 teaches validating the local token in place)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Jakobsson, Furche and Jokobsson24, to modify the NFT system of Jakobsson and Jakobsson24 to include the method to validate a token as taught in Furche. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jakobsson in view of Jakobsson24 in view of Caldwell (US 2019/0220836 A1).
Regarding claim 11, Jakobsson and Jokobsson24 teaches:
“The method according to claim 10 (Jakobsson and Jokobsson24 teaches the limitations of the parent claim as discussed above)”.
Jakobsson and Jokobsson24 do not, but in related art, Caldwell teaches:
“wherein the payout data includes at least one of: a confirmation of conditions met for distribution, a delay parameter accounting for possible disputes, or instructions for the automated processing of distributions (Caldwell, ¶ 175, and 184-188 teaches checking the resale conditions for the token exchange)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Jakobsson, Caldwell and Jokobsson24, to modify the NFT system of Jakobsson and Jakobsson24 to include the method to validate a token as taught in Caldwell. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Conclusion
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Stephen T Gundry whose telephone number is (571) 270-0507. The examiner can normally be reached Monday-Friday 9AM-5PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amir Mehrmanesh can be reached at (571) 270-3351. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN T GUNDRY/Primary Examiner, Art Unit 2435
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