DETAILED ACTION
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 .
This is a final office action in response to the applicant’s amendment received on 7/14/2026 (“Response”).
Claims 1 and 9 have been amended. Claims 1-16 are pending.
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 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
MPEP 2106 provides step(s) in determining eligibility under 35 U.S.C. § 101. Specifically, 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. 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), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any additional elements in the claim must integrate the judicial exception into a practical application. If not, the inquiry continues to see whether any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include mathematical concepts, mental processes, and certain methods of organizing human activities.
Under Step 1, claims 1-8 are directed to a method (i.e., process) while claims 9-16 are directed to a to a system. Thus, the claimed inventions are directed towards one of the four statutory categories under 35 USC § 101. Nevertheless, the claims also fall within the judicial exception of an abstract idea without significantly more.
Step 2A, 1st prong:
Claim 1 recites: A method for providing a metaverse digital asset for use with a metaverse platform based on a guest at least partially completing a retailer desired purchase, participation or action, the method comprising:
a) a retailer online service, that is a server device having a non-transitory computer-readable medium having executable instructions stored thereon to provide an online shopping experience via a retailer graphical user interface (GUI), identifying that the guest has at least partially completed the retailer desired purchase, participation or action;
b) the retailer online service receiving a guest selection of a desired metaverse platform on which the metaverse digital asset can be used from a plurality of metaverse platforms;
c) the retailer GUI of the retailer online service requesting permission from the guest to link a guest account that is associated with the guest for the retailer online service with a metaverse account associated with the desired metaverse platform;
d) upon receiving permission from the guest to link the guest account with the metaverse account, a metaverse integration API of the retailer online service providing the guest an interface viewable on the retailer GUI to enter login information for logging into the metaverse account;
e) the metaverse integration API linking the guest account with the metaverse account using the login information received via the retailer GUI;
f) an order tracking application programming interface (API) of the retailer online service confirming that the retailer desired purchase, participation or action has been at least partially completed;
g) a digital asset key API of the retailer online service obtaining the digital asset key associated with the retailer desired purchase, participation or action, wherein the digital asset key API obtaining the digital asset key includes the digital asset key API communicating with a database or the desired metaverse platform over a communications network, and the digital asset key API retrieving the digital asset key from the database or the desired metaverse platform over the communications network;
h) the retailer online service retrieving an electronic communication address associated with the guest account; and
i) upon confirmation by the order tracking API that the retailer desired purchase, participation or action has been at least partially completed, the retailer online service providing the digital asset key to the guest, wherein the retailer online service providing the digital asset key includes one of: electronically sending the digital asset key, via the communications network, to the electronic communication address when the guest account is not linked to the metaverse account, and automatically transferring the digital asset key to the metaverse account when the guest account is linked to the metaverse account to avoid the guest from manually redeeming, in the desired metaverse platform, the digital asset key retrieved via an electronic communication;
j) wherein the digital asset key is configured to be used in the desired metaverse platform to redeem the metaverse digital asset.
(Emphasis added on the additional element(s))
Under the broadest reasonable interpretation, the claim recites a process of providing shopping experience and issuance of asset key (i.e., code used to redeem asset for incentive) after purchase, participation or action to a guest (purchaser) in order for the guest to be able to use the asset key (i.e., voucher) to redeem an asset (promotional item) in an environment that has been selected by the guest. Particularly, the claim recites a) identifying that a guest has at least partially completed a retailer desired purchase, participation or action; b) receiving a guest selection of the environment on which the asset can be used from a plurality of environments (similar to receiving a selection of one of retailers a user can redeem a promotional item); c) requesting permission from the guest to link a guest account that is associated with the guest for the retailer service with the account associated with the selected environment; d) upon receiving permission from the guest, prompting the guest to enter credentials for the account to the selected environment; e) linking the guest account (i.e., account with the retail service) with the account of the selected environment using the received credential; f) confirming that the retailer desired purchase, participation or action has been at least partially completed; g) obtaining the asset key associated with the retailer desired purchase, participation or action by communicating with a source and retrieving the key from the source; h) retrieving communication address with the guest account; i) upon confirmation that the retailer desired purchase, participation or action has been at least partially completed, providing the asset key to the guest by either sending the asset key (redemption ticket/code/right) to the communication address when the guest account is not linked to the account of the selected environment, or transferring the asset key to the account of the selected environment when the guest account is linked to the account of the selected environment; j) wherein the asset key (redemption ticket/code/right) is configured to be used in the selected environment to redeem the asset (promotional/incentive item). For these reasons, the claim recites a certain method of organizing human activity, i.e., provisioning of promotional item by issuance of key (redemption ticket/code/right) to a user (shopper) once the user partially completes the retailer desired purchase, participation or action, which fall within the concept of marketing or sales activities or behaviors. Accordingly, the claim recites an abstract idea.
The other independent claim, claim 9, is significantly similar to claim 1. Hence, claim 9 also recites an abstract idea.
Under the Step 2A (prong 2), this judicial exception is not integrated into a practical application. Specifically, the additional elements in the claim(s), i.e., server having a non-transitory computer-readable medium having executable instructions stored thereon, online, GUI including interface, APIs, digital, communication network, database, electronic, etc., amount to mere instructions to implement the abstract idea and/or merely uses a computer/computer components as a tool to perform an abstract idea – see MPEP 2106.05(f). There is no indication that the claim improves upon the recited system’s component(s) individually or in combination individually or in combination.
The claim further recites additional element(s) of metaverse and metaverse platforms. However, these additional element amount to generally linking the use of the judicial exception to a particular technological environment or field of use (i.e., here an environment in which the asset can be redeemed) – see MPEP 2106.05(h) or “apply it”.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). Here, the claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the claim(s) as a whole, taken individually and in combination, do not provide an inventive concept. As explained above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea and/or merely uses a computer as a tool to perform an abstract idea and generally linking the use of the judicial exception to a particular technological environment or field of use. Mere instructions to implement the abstract idea on a computer, or merely using the computer as a tool to perform an abstract idea to apply the exception using a generic computer component and generally linking the use of the judicial exception to a particular technological environment cannot provide an inventive concept. Looking at the limitations as a combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of the elements improves the functioning of the recited computer component(s).
Dependent claims 2 and 10 further expand on the abstract idea of exclusivity of the asset. The claims do not include further additional element than those that have been identified above.
Dependent claims 3 and 11 further expand on the abstract idea of reciting what the communication address might be. The additional elements of either the email and a mobile phone amount to no more than use of computer component to perform the abstract idea and does not provide an inventive concept.
Dependent claims 4 and 12 further expand on the abstract idea of what the asset may be, i.e., exclusive asset that is replica of the purchase. The additional element of metaverse digital asset that is a virtual amount to no more than generally linking the use of the judicial exception to a particular technological environment or field of use and does not provide an inventive concept.
Dependent claims 5 and 13 further expand on the abstract idea of advertising, i.e., marketing, and thus certain methods of organizing human activity. The additional elements of electronic communication and a link when selected on a user device causes display amount to no more than use of instructions and/or computer component to perform the abstract idea and does not provide an inventive concept.
Dependent claims 6 and 14 further expand on the abstract idea of notification that the asset key (redeeming code) is forthcoming to the user to using the user’s address. The claims do not recite further additional element(s) than those that have been identified above.
Dependent claims 7 and 15 further expand on the abstract idea of notifying of the purchase related information which is certain methods of organizing human activity, i.e., sales interaction/economic practice. The claims are without recitation of further additional element(s) than those that have been identified above.
Dependent claims 8 and 16 further expand on the abstract idea, particularly in the case of the user (guest) has cancelled the retailer desire purchase, participation or action in revoking the issued asset key based on determining that the issued asset key has not been redeemed by communicating with the selected environment to revoke the asset key. The claims do not recite further additional element(s) than those that have been identified above.
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.
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,380,417. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Per claim 1, ‘417 teaches a method for providing a metaverse digital asset for use with a metaverse platform based on a guest at least partially completing a retailer desired purchase, participation or action, the method comprising (claim 1: method for providing a metaverse digital asset for use with a metaverse platform based on a guest at least partially completing a retailer desired purchase, participation or action):
a retailer online service, that is a server device having a non-transitory computer-readable medium having executable instructions stored thereon to provide an online shopping experience via a retailer graphical user interface (GUI), identifying that the guest has at least partially completed the retailer desired purchase, participation or action (claim 3: a retailer online service that is a server device having a non-transitory computer-readable medium having executable instructions stored thereon that, upon execution, cause one or more processors to provide an online shopping experience via a retailer graphical user interface (GUI));
the retailer online service receiving a guest selection of a desired metaverse platform on which the metaverse digital asset can be used from a plurality of metaverse platforms (claim 1: the retailer GUI providing a list of a plurality of metaverse platforms to the guest on which the metaverse digital asset can be used; the guest selecting on the retailer GUI a desired metaverse platform from the plurality of metaverse platforms);
the retailer GUI of the retailer online service requesting permission from the guest to link a guest account that is associated with the guest for the retailer online service with a metaverse account associated with the desired metaverse platform (claim 1: the retailer GUI of the retailer online service requesting permission from the guest to link a guest account that is associated with the guest for the retailer online service with a metaverse account associated with the metaverse platform);
upon receiving permission from the guest to link the guest account with the metaverse account, a metaverse integration API of the retailer online service providing the guest an interface viewable on the retailer GUI to enter login information for logging into the metaverse account (claim 1: upon receiving permission from the guest to link the guest account with the metaverse account, a metaverse integration API of the retailer online service providing the guest an interface viewable on the retailer GUI to enter login information for logging into the metaverse account);
the metaverse integration API linking the guest account with the metaverse account using the login information received via the retailer GUI (claim 1: the metaverse integration API linking the guest account with the metaverse account using the login information received via the retailer GUI);
an order tracking application programming interface (API) of the retailer online service confirming that the retailer desired purchase, participation or action has been at least partially completed;
a digital asset key API of the retailer online service obtaining the digital asset key associated with the retailer desired purchase, participation or action, wherein the digital asset key API obtaining the digital asset key includes the digital asset key API communicating with a database or the desired metaverse platform over a communications network, and the digital asset key API retrieving the digital asset key from the database or the desired metaverse platform over the communications network (claim 1: an order tracking application programming interface (API) of the retailer online service confirming that the retailer desired purchase, participation or action has been at least partially completed)(claim 1: a digital asset key API of the retailer online service obtaining the digital asset key associated with the retailer desired purchase, participation or action, wherein the digital asset key API obtaining the digital asset key includes the digital asset key API communicating with a database or the desired metaverse platform over the communications network, and the digital asset key API retrieving the digital asset key from the database or the desired metaverse platform over the communications network);
the retailer online service retrieving an electronic communication address associated with the guest account (claim 1: the retailer online service retrieving an electronic communication address associated with the guest account); and
upon confirmation by the order tracking API that the retailer desired purchase, participation or action has been at least partially completed, the retailer online service providing the digital asset key to the guest, wherein the retailer online service providing the digital asset key includes one of: electronically sending the digital asset key, via the communications network, to the electronic communication address when the guest account is not linked to the metaverse account, and automatically transferring the digital asset key to the metaverse account when the guest account is linked to the metaverse account to avoid the guest from manually redeeming, in the desired metaverse platform, the digital asset key retrieved via an electronic communication (claim 1: upon confirmation by the order tracking API that the retailer desired purchase, participation or action has been at least partially completed, the retailer online service providing the digital asset key to the guest, wherein the retailer online service providing the digital asset key includes one of: electronically sending the digital asset key, via the communications network, to the electronic communication address when the guest account is not linked to the metaverse account, and automatically transferring the digital asset key to the metaverse account when the guest account is linked to the metaverse account to avoid the guest from manually redeeming, in the desired metaverse platform, the digital asset key retrieved via an electronic communication);
wherein the digital asset key is configured to be used in the desired metaverse platform to redeem the metaverse digital asset (claim 1: wherein the digital asset key is configured to be used in the metaverse platform to redeem the metaverse digital asset).
As per claim 2, ‘417 discloses wherein the metaverse digital asset is an exclusive metaverse digital asset only available upon at least partial completion of the retailer desired purchase, participation or action (claim 2).
As per claim 3, ‘417 discloses wherein the electronic communication address is at least one of an email address and a mobile phone number associated with the guest account (claim 5).
As per claim 4, ‘417 discloses wherein metaverse digital asset is an exclusive metaverse digital asset that is virtual replica of the retailer desired purchase (claim 6).
As per claim 5, ‘417 discloses the retailer online service sending, via the communications network, a promotional electronic communication displaying a physical product and the metaverse digital asset associated with a purchase of the physical product, wherein the promotional electronic message includes a link that when selected on a user device causes the retailer GUI to be displayed on the user device, and wherein the retailer GUI displays the physical product for purchase from the retailer online service along with the metaverse digital asset redeemable upon purchase of the physical product (claim 7).
As per claim 6, ‘417 discloses the order tracking API confirming that the retailer desired purchase, participation or action has been at least partially completed and the retailer online service sending an electronic notification, via the communications network to the electronic communication address, notifying the guest that a digital asset key for redeeming the metaverse digital asset is forthcoming (claim 1: the retailer online service sending an electronic notification, via the communications network to the electronic communication address, notifying the guest that a digital asset key for redeeming the metaverse digital asset is forthcoming … an order tracking application programming interface (API) of the retailer online service confirming that the retailer desired purchase, participation or action has been at least partially completed).
‘417 does not particularly teach that the electronic notification is sent upon the order tracking API confirming that the retailer desired purchase, participation or action has been at least partially completed.
However, as ‘417 discloses the order tracking API confirming that the retailer desired purchase, participation or action has been at least partially completed (claim 1), it would have been obvious to one of ordinary skill in the art prior to the effective filing of the current claim to send out the notification after confirming that the retailer desired purchase, participation or action has been at least partially completed so to ensure that the incentive is offered to a user with confidence that the user has partially completed the retailer desired purchase, participation or action.
As per claim 7, ‘417 discloses wherein the electronic notification includes information indicating that a physical product or a retail service purchased is being processed and indicates where the physical product will be shipped or available for pickup, or how the retail service will be processed (claim 8).
As per claim 8, ‘417 discloses the retailer online service determining that the retailer desired purchase, participation or action has been cancelled by the guest; and upon determining that the retailer desired purchase, participation or action has been cancelled by the guest: the metaverse integration API of the retailer online service determining that the digital asset key has not been used by the guest to redeem the metaverse digital asset, and the metaverse integration API revoking the digital asset key, wherein the metaverse integration API revoking the digital asset key includes the metaverse integration API communicating, via the communications network, with the metaverse platform and requesting the metaverse platform to revoke the digital asset key (claim 1: the retailer online service determining that the retailer desired purchase, participation or action has been cancelled by the guest; and upon determining that the retailer desired purchase, participation or action has been cancelled by the guest: the metaverse integration API of the retailer online service determining that the digital asset key has not been used by the guest to redeem the metaverse digital asset, and the metaverse integration API revoking the digital asset key, wherein the metaverse integration API revoking the digital asset key includes the metaverse integration API communicating, via the communications network, with the metaverse platform and requesting the metaverse platform to revoke the digital asset key).
As per claim 9, ‘417 discloses a system configured to provide a metaverse digital asset based on a guest at least partially completing a retailer desired purchase, participation or action, the system comprising (claim 3: A system configured to provide a metaverse digital asset based on a guest at least partially completing a retailer desired purchase, participation or action, the system comprising):
a retailer online service that is a server device having a non-transitory computer-readable medium having executable instructions stored thereon that, upon execution, cause one or more processors to provide an online shopping experience via a retailer graphical user interface (GUI) (claim 3: a retailer online service that is a server device having a non-transitory computer-readable medium having executable instructions stored thereon that, upon execution, cause one or more processors to provide an online shopping experience via a retailer graphical user interface (GUI)), wherein the retailer online service, is configured to (claim 3: wherein the retailer online service includes: the retailer GUI, hosted by the retailer online service, configured to):
receive a guest section of a desired metaverse platform on which the metaverse digital asset can be used from a plurality of metaverse platforms (provide a list of a plurality of metaverse platforms to the guest on which the metaverse digital asset can be used, allow a guest to select a desired metaverse platform from the plurality of metaverse platforms);
request permission from the guest to link a guest account that is associated with the guest for the retailer online service with a metaverse account associated with the desired metaverse platform (request permission from the guest to link a guest account that is associated with the guest for the retailer online service with a metaverse account associated with the metaverse platform),
wherein the retailer online service includes: a metaverse integration API configured to (a metaverse integration API configured to):
provide the guest an interface viewable on the retailer GUI to enter login information for logging into the metaverse account upon receipt of permission from the guest to link the guest account with the metaverse account, link the guest account with the metaverse account using the login information received via the retailer GUI, automatically provide a digital asset key associated with the retailer desired purchase, participation or action to the metaverse account, and retrieve an electronic communication address associated with the guest account (claim 3: provide the guest an interface viewable on the retailer GUI to enter login information for logging into the metaverse account upon the retailer GUI receipt of permission from the guest to link the guest account with the metaverse account, link the guest account with the metaverse account using the login information received via the retailer GUI, and automatically provide a digital asset key associated with the retailer desired purchase, participation or action to the metaverse account),
an order tracking application programming interface (API) configured to confirm that the retailer desired purchase, participation or action has been at least partially completed (claim 3: an order tracking application programming interface (API) configured to confirm that the retailer desired purchase, participation or action has been at least partially completed); and
a digital asset key API configured to obtain the digital asset key associated with the retailer desired purchase, participation or action by: communicating with a database or the desired metaverse platform over the communications network, and retrieving the digital asset key from the database or the desired metaverse platform over the communications network (claim 3: a digital asset key API configured to obtain the digital asset key associated with the retailer desired purchase, participation or action by: communicating with a database or the desired metaverse platform over the communications network, and retrieving the digital asset key from the database or the desired metaverse platform over the communications network);
wherein, upon confirmation by the order tracking API that the retailer desired purchase, participation or action has been at least partially completed, the retailer online service is configured to provide the digital asset key to the guest by one of: electronically sending the digital asset key, via the communications network, to the electronic communication address when the guest account is not linked to the metaverse account, and automatically transferring the digital asset key to the metaverse account when the guest account is linked to the metaverse account to avoid the guest from manually redeeming, in the desired metaverse platform, the digital asset key retrieved via an electronic communication (claim 3: wherein, upon confirmation by the order tracking API that the retailer desired purchase, participation or action has been at least partially completed, the retailer online service is configured to provide the digital asset key to the guest by one of: electronically sending the digital asset key, via the communications network, to the electronic communication address when the guest account is not linked to the metaverse account, and automatically transferring the digital asset key to the metaverse account when the guest account is linked to the metaverse account to avoid the guest from manually redeeming, in the desired metaverse platform, the digital asset key retrieved via an electronic communication), and
wherein the digital asset key is configured to be used in the desired metaverse platform to redeem the metaverse digital asset (claim 3: wherein the digital asset key is configured to be used in the metaverse platform to redeem the metaverse digital asset).
As per claim 10, ‘417 discloses wherein the metaverse digital asset is an exclusive metaverse digital asset only available upon at least partial completion of the retailer desired purchase, participation or action (claim 4).
As per claim 11, ‘417 discloses wherein the electronic communication address is at least one of an email address and a mobile phone number associated with the guest account (claim 9).
As per claim 12, ‘417 discloses wherein metaverse digital asset is an exclusive metaverse digital asset that is virtual replica of the retailer desired purchase (claim 10).
As per claim 13, ‘417 discloses wherein the retailer online service is configured to send, via the communications network, a promotional electronic communication displaying a physical product and the metaverse digital asset associated with a purchase of the physical product, wherein the promotional electronic message includes a link that when selected on the user device causes the retailer GUI to be displayed on the user device, and wherein the retailer GUI is configured to display the physical product for purchase from the retailer online service along with the metaverse digital asset redeemable upon purchase of the physical product (claim 11).
As per claim 14, ‘417 discloses the order tracking API confirming that the retailer desired purchase, participation or action has been at least partially completed, the retailer online service is further configured to send an electronic notification, via the communications network, to the electronic communication address notifying the guest that a digital asset key for redeeming the metaverse digital asset is forthcoming (claim 3: an order tracking application programming interface (API) configured to confirm that the retailer desired purchase, participation or action has been at least partially completed … wherein the retailer online service is configured to: receive an electronic communication address associated with the guest account, send an electronic notification, via the communications network, to the electronic communication address notifying the guest that a digital asset key for redeeming the metaverse digital asset is forthcoming).
‘417 does not particularly teach that the electronic notification is sent upon the order tracking API confirming that the retailer desired purchase, participation or action has been at least partially completed.
However, as ‘417 discloses the order tracking API confirming that the retailer desired purchase, participation or action has been at least partially completed (claim 3), it would have been obvious to one of ordinary skill in the art prior to the effective filing of the current claim to send out the notification after confirming that the retailer desired purchase, participation or action has been at least partially completed so to ensure that the incentive is offered to a user with confidence that the user has partially completed the retailer desired purchase, participation or action.
As per claim 15, ‘417 discloses wherein the electronic notification includes information indicating that a physical product or a retail service purchased is being processed and indicates where the physical product will be shipped or available for pickup, or how the retail service will be processed (claim 12).
As per claim 16, ‘417 discloses wherein the retailer online service is further configured to determine whether the retailer desired purchase, participation or action has been cancelled by the guest, and upon determining that the retailer desired purchase, participation or action has been cancelled by the guest: the metaverse integration API of the retailer online service is configured to determine whether the digital asset key has not been used by the guest to redeem the metaverse digital asset, and upon determining that the digital asset key has not been used by the guest, the metaverse integration API is configured to revoke the digital asset key by communicating over the communications network with the desired metaverse platform and requesting the metaverse platform to revoke the digital asset key (claim 3: wherein the retailer online service is configured to determine whether the retailer desired purchase, participation or action has been cancelled by the guest, and upon determining that the retailer desired purchase, participation or action has been cancelled by the guest: the metaverse integration API of the retailer online service is configured to determine whether the digital asset key has not been used by the guest to redeem the metaverse digital asset, and upon determining that the digital asset key has not been used by the guest, the metaverse integration API is configured to revoke the digital asset key by communicating over the communications network with the desired metaverse platform and requesting the metaverse platform to revoke the digital asset key).
Response to Argument(s)
101
The applicant asserts that the features as recited in the claim are directed to a specific technological workflow performed by networked computer systems and APIs, therefore are steps that can not practically be performed mentally or by a human using pen and paper nor are they merely fundamental economic practices. The applicant further asserts that the claims enable automatic coordination between independent computing systems to provision and manage metaverse digital assets associated with retailer transaction. And for these reasons, the claims are not directed to a judicial exception under Step 2A, Prong One. See pages 8-9 of the Response.
In response, the claims clearly recite abstract idea of certain methods of organizing human activity, i.e., economic practice/sales activities, as the claims allow a guest to obtain an asset key (i.e., redemption code), that can be redeemed in another environment. The claim achieves this by the retailer receiving a guest selection of the environment that an asset can be used from a plurality of environments; the retailer requesting permission from the guest to link a guest account (i.e., retailer account) with an account of the selected environment; the retailer prompting the guest for credential for the selected environment; the retailer linking the guest account with the selected environment account using the received credential; the retailer obtaining the asset key associated with the retailer desired purchase, participation or action by communicating with the selected environment and receiving the asset key from the selected environment; the relater online service providing the asset key by providing the asset key to the user address when the guest account is not linked to the selected environment or transferring the asset key to the account in the selected environment when the guest account is linked to the account in the selected environment.
The additional elements of online, GUI including interface, APIs, digital, communication network, database, electronic, etc., amount to mere instructions to implement the abstract idea and/or merely uses a computer/computer components as a tool to perform an abstract idea – see MPEP 2106.05(f). There is no indication that the claim improves upon the recited system’s component(s) individually or in combination individually or in combination. The claim’s further additional elements of metaverse and metaverse platform amount to generally linking the use of the judicial exception to a particular technological environment or field of use (i.e., here an environment in which the asset can be redeemed) – see MPEP 2106.05(h). The claims do not improve upon the metaverse or the metaverse platform.
The applicant asserts that these features, i.e., components of the retailer online service and the metaverse platform, would not be considered as drafting efforts designed to monopolize a judicial exception as they use the judicial exception in a manner that imposes a meaning limit on the judicial exception. The examiner respectfully disagrees. For example, the GUI of the retailer online service is merely computer component, i.e., executables, that is used to prompt or request permission from the user (guest). The APIs of the retailer online service are instructions that are used to carry out the judicial exceptions. There simply is no indication that the additional elements alone in combination of the judicial exception improve upon how the APIs or the GUI function nor in combination improves upon the online retailer service. These additional elements are defined only by the judicial exception that the elements are performing.
The applicant asserts that the metaverse platform is a functional component of the claimed technological process and not merely a stated environment. The examiner metaverse platform in the claim is equivalent to the environment in which the retailer online service allows the guest to select and apply the asset key. The method claims are clearly directed to steps that are performed by the retailer online service and its components, and the system claims are clearly directed to a system comprising the retailer online service.
The applicant points to example 37 and 42 stating that claim 1 similarly integrate any purported abstract idea into a practical application of the purported abstract idea and that the claim is rooted in technology. The examiner respectfully disagrees. For example, example 37 improved upon the presentation of GUI, i.e., improved user interface on a user device, while example 42 provided improvement by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user. The current claim doesn’t provide improvement as described above. Rather, the additional elements are mere instructions to implement the abstract idea and/or merely uses a computer/computer components as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular technological environment or field of use.
The applicant asserts that the claims recite significantly more than any alleged abstract idea as the combination of all the features of claim 1 is non-conventional and provide a non-generic arrangement of non-conventional pieces.
The examiner respectfully disagrees. As explained in the 101 section above, the additional elements as identified above amounts to no more than mere instructions to implement the abstract idea and/or merely uses a computer/computer components as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular technological environment or field of use. The individual elements of the retailer online service and the retailer online server are recited at high level generality, that is they are recited by the function(s), i.e., abstract idea, that each performs. And the metaverse platform generally linking the use of the judicial exception to a particular technological environment or field of use (i.e., here an environment in which the asset can be redeemed) – see MPEP 2106.05(h) or “apply it”. Accordingly, taken alone, the additional elements do not amount to significantly more than a judicial exception. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
Double Patenting
The applicant does not present arguments related to double patenting rejections.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent No. 8,818,845 discloses a method and system for online game rewards for web-based purchases. The patent discloses online shopping webpage that a user accesses to browse and purchase product. The system determines whether the user is a player on game system. If the user is not a player on the game system, the system encourages the user to join a game as a player. On the other hand, if the user is a player on the game system, the system offers incentive offer by determining appropriate incentive reward (i.e., virtual item in the game) to the user. Once the user places an order for the item (physical item) for purchase, the game system provides incentive reward to the user. ‘845 patent, however, does not disclose that the retail online server is configured to receive a guest section of a desired metaverse platform on which the metaverse digital asset can be used from a plurality of metaverse platforms and the particulars of linking of the two accounts recited in the claim (i.e., linking the guest account with the metaverse account using the login information received via the retailer GUI).
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US Patent No. 7,991,706 discloses a method and system that allows a customer to purchase something in a real world a physical item such as a physical book. The purchased item is then converted into an element usable in the virtual world by a converter employed by a virtual bridge server that converts the purchased item into an item that is usable in the virtual environment. The disclosure, however, does not particularly teach the aspect of linking two account, i.e., account associated with a metaverse platform and the account associated with the retail online server, provisioning of the asset key using the linked accounts and allowing the user to select a particular metaverse platform among plurality of platforms as recited in the claim.
US7604525 discloses method provides a virtual presentation includes providing a toy that is represented on a website via a virtual replica of the toy, wherein the toy is associated with a registration code; validating the registration code; responsive to said validating, displaying said virtual replica of the toy representing said toy on said website; providing at least one virtual room on the website for the virtual replica of the toy; offering one or more virtual furnishings for the at least one virtual room; providing content that allows the one or more virtual furnishings to be arranged in the at least one virtual room; and interacting the virtual replica of the toy with at least one of the one or more virtual furnishings. ‘525 patent, however, does not disclose that the retail online server is configured to receive a guest section of a desired metaverse platform on which the metaverse digital asset can be used from a plurality of metaverse platforms and the particulars of linking of the two accounts recited in the claim (i.e., linking the guest account with the metaverse account using the login information received via the retailer GUI).
US7862428 discloses system and method that provides an action figure with a serial number that provides an access code which allows owners to engage in enjoyable games or other activities via the Internet or other gaming systems. The interactive action figure system comprises a toy, statue, or other three-dimensional figurine with a serial number, and preferably a computer network accessible over the internet and a particular gaming framework managed by a network device. Owners of action figure toys may "log onto" the network using the action figure serial number as an access code to activate a particular computer character identity and participate in games such as hand-to-hand combat games, action-adventure series, or learning games. The action figure may be, for example, a warrior, sports figure, doll or teddy bear to appeal to a wide range of users. Once a particular character is activated, game play proceeds according to preset rules. The game character's traits, powers, and other features may be enhanced or otherwise modified by purchasing preferably-three-dimensional accessories and inputting serial numbers into the gaming system that are also supplied with the accessories. ‘428 patent, however, does not disclose that the retail online server is configured to receive a guest section of a desired metaverse platform on which the metaverse digital asset can be used from a plurality of metaverse platforms and the particulars of linking of the two accounts recited in the claim (i.e., linking the guest account with the metaverse account using the login information received via the retailer GUI).
US20220294630 discloses digital assets, physical assets, and methods and apparatuses for generating, purchasing, redeeming, rendering, and authenticating such assets. More particularly, this disclosure relates to methods and apparatuses for redeeming a digital asset for a physical asset, for generating a digital asset for purchase by a user, for purchasing a digital asset in a digital environment by a user, for rendering a digital asset and for authenticating a physical asset, and to a physical asset corresponding to a digital asset. The publication, however, does not disclose that the retail online server is configured to receive a guest section of a desired metaverse platform on which the metaverse digital asset can be used from a plurality of metaverse platforms and the particulars of linking of the two accounts recited in the claim (i.e., linking the guest account with the metaverse account using the login information received via the retailer GUI).
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN S KIM whose telephone number is (571)270-5287. The examiner can normally be reached Monday -Friday: 7:00 - 3:30.
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, Patrick McAtee can be reached at 571-272-7575. 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.
/STEVEN S KIM/Primary Examiner, Art Unit 3698
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