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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/16/2026 has been entered.
Status of the Claims
This is a non-final rejection prepared in response to applicant’s correspondence filed on 09/16/2026.
Claims 1, 3-4, 7, 10, 12-13, 16 and 19-20 are amended.
Claims 1-20 are pending.
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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,387,262.
Instant Application
Claim 1
US Patent 12,387,262
Claim 1
A method to maintain localization of a non-fungible token (NFT) in a transaction, the method comprising:
A method to maintain localization of a non-fungible token (NFT) in a transaction, the method comprising:
receiving, by an NFT transaction processor, a request to transfer an NFT from a first NFT account to a second NFT account,
identifying, by a NFT transaction processor, a first localization property associated with a first NFT account, the first localization property configured to restrict transfer of a NFT to a first locality associated with a first geographical area;
identifying, by the NFT transaction processor, a first localization property corresponding to the first NFT account, the first localization property configured to restrict transfer of the NFT to a first locality associated with a first geographical area,
identifying, by the NFT transaction processor, a second localization property associated with a second NFT account, the second localization property configured to restrict transfer of the NFT to a second locality associated with a second geographical area;
identifying, by the NFT transaction processor, a second localization property corresponding to the second NFT account, the second localization property configured to restrict transfer of the NFT to a second locality associated with a second geographical area,
determining, by the NFT transaction processor, that the first localization property and the second localization property differ
determining, by the NFT transaction processor, whether the first localization property and the second localization property differ;
in response to determining that the first localization property and the second localization property differ,
in response to determining that the first localization property and the second localization property differ:
generating, by the NFT transaction processor, a container
generating, by the NFT transaction processor, a container linked with the second localization property, and
transferring, by the NFT transaction processor, the NFT to the container; and
transferring, by the NFT transaction processor, the NFT to the container; and
linking, by the NFT transaction processor, the second NFT account with the container to transfer the NFT to the second NFT account.
linking, by the NFT transaction processor, the second public and private key pair with the container to transfer the NFT to the second NFT account.
Claim 2 & 11
Claim 2 & 11
generating, by the NFT transaction processor in response to the determination, a smart contract that restricts transfer of the NFT to the second locality.
generating, by the NFT transaction processor in response to the determination, a smart contract including the container and a control structure that restricts transfer of the NFT to the second locality.
Claim 3 & 12
Claim 3 & 12
linking, by the NFT transaction processor, a public and private key pair linked with the second NFT account with the smart contract to transfer the NFT to the second NFT account.
linking, by the NFT transaction processor, the
Claim 4 & 13
Claim 4 & 13
validating, by the NFT transaction processor, that a first trustee identifier of an entity linked with a transfer request matches a second trustee identifier corresponding to an entity authorized to approve the transfer request; and
validating, by the NFT transaction processor, that a first trustee identifier of an entity linked with the request matches a second trustee identifier corresponding to an entity authorized to approve the request; and
transferring, by the NFT transaction processor in response to the validating, the NFT to the container
transferring, by the NFT transaction processor in response to the validating, the NFT to the container.
Claim 5 & 14
Claim 5 & 14
receiving, by the NFT transaction processor from a computing device, an authorization token linked with the first trustee identifier.
receiving, by the NFT transaction processor from a computing device, an authorization token linked with the first trustee identifier.
Claim 6 & 15
Claim 6 & 15
validating, by the NFT transaction processor, that the first trustee identifier matches a block of a blockchain including the second trustee identifier.
validating, by the NFT transaction processor, that the first trustee identifier matches a block of a blockchain including the second trustee identifier.
Claim 7 & 16
Claim 7 & 16
validating, by the NFT transaction processor, that a first party property of an entity linked with the first NFT account matches a second party property corresponding to a type of entity authorized to approve the transfer of the NFT to the second NFT account; and
validating, by the NFT transaction processor, that a first party property of an entity linked with the first account matches a second party property corresponding to a type of entity authorized to approve the request; and
transferring, by the NFT transaction processor in response to the validating, the NFT to the container.
transferring, by the NFT transaction processor in response to the validating, the NFT to the container.
Claim 8 & 17
Claim 8 & 17
modifying, by a locality processor linked with the container and based on one or more of the first localization property and the second localization property, a quantitative value of one or more of the first
modifying, by a locality processor linked with the container and based on one or more of the first localization property and the second localization property, a quantitative value of one or more of the first account and the second account.
Claim 9 & 18
Claim 9 & 18
modifying, by the locality processor, a parameter of one or more of the first localization property and the second localization property, the parameter indicating a restriction on transfer of the container according to the second localization property.
modifying, by the locality processor, a parameter of one or more of the first localization property and the second localization property, the parameter indicating a restriction on transfer of the container according to the second localization property.
Claim 10
Claim 10
A system to maintain localization of a non-fungible token (NFT) in a transaction, the system comprising:
A system to maintain localization of a non-fungible token (NFT) in a transaction, the system comprising:
memory and one or more processors to:
memory and one or more processors to:
receive, by an NFT transaction processor, a request to transfer an NFT from a first NFT account to a second NFT account,
identify, by a NFT transaction processor, a first localization property associated with a first NFT account, the first localization property configured to restrict transfer of an NFT to a first locality associated with a first geographical area;
identify, by the NFT transaction processor, a first localization property corresponding to the first NFT account, the first localization property configured to restrict transfer of the NFT to a first locality associated with a first geographical area,
identify, by the NFT transaction processor, a second localization property associated with a second NFT account, the second localization property configured to restrict transfer of the NFT to a second locality associated with a second geographical area;
identify, by the NFT transaction processor, a second localization property corresponding to the second NFT account, the second localization property configured to restrict transfer of the NFT to a second locality associated with a second geographical area,
determining, by the NFT transaction processor, that the first localization property and the second localization property differ
determine, by the NFT transaction processor, whether the first localization property and the second localization property differ;
in response to determining that the first localization property and the second localization property differ,
in response determining that the first localization property and the second localization property differ:
generate, by the NFT transaction processor, a container distinct from the first NFT account and the second NFT account, the container comprising a security layer that restricts transfer of the NFT based on the second localization property;
generate, by the NFT transaction processor, a container linked with the second localization property,
transfer, by the NFT transaction processor, the NFT to the container; and
transfer, by the NFT transaction processor, the NFT to the container; and
link, by the NFT transaction processor, the second NFT account with the container to transfer the NFT to the second NFT account.
link, by the NFT transaction processor, the second public and private key pair with the container to transfer the NFT to the second NFT account.
Claim 19
Claim 19
A non-transitory computer readable medium including one or more instructions stored thereon and executable by a processor to:
A non-transitory computer readable medium including one or more instructions stored thereon and executable by a processor to:
receive a request to transfer an NFT from a first NFT account to a second NFT account,
identify a first localization property associated with a first NFT account, the first localization property configured to restrict transfer of an NFT to a first locality associated with a first geographical area;
identify a first localization property corresponding to the first NFT account, the first localization property configured to restrict transfer of the NFT to a first locality associated with a first geographical area,
identify a second localization property associated with a second NFT account, the second localization property configured to restrict transfer of the NFT to a second locality associated with a second geographical area;
identify a second localization property corresponding to the second NFT account, the second localization property configured to restrict transfer of the NFT to a second locality associated with a second geographical area,
determine that the first localization property and the second localization property differ
determine, by the NFT transaction processor, whether the first localization property and the second localization property differ;
in response to determining that the first localization property and the second localization property differ,
in response to determining that the first localization property and the second localization property differ:
generate a container distinct from the first NFT account and the second NFT account, the container comprising a security layer that restricts transfer of the NFT based on the second localization property;
generate, by the NFT transaction processor, a container linked with the second localization property, and
transfer the NFT to the container; and
transfer,
link the second NFT account with the container to transfer the NFT to the second NFT account.
link, container to transfer the NFT to the second NFT account.
Claim 20
Claim 20
generate a smart contract that restricts transfer of the NFT to the second locality; and
generate a smart contract including the container and a control structure that restricts transfer of the NFT to the second locality; and
link a public and private key pair linked with the second NFT account with the smart contract to transfer the NFT to the second NFT account.
link the second public and private key pair with the smart contract to transfer the NFT to the second NFT account.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims represent a broader embodiment of the patented claims. The only major difference between the applications is that claims 1, 10 and 19 in the patented application recite one additional step of receiving a request to transfer an NFT from a first NFT account to a second NFT account that is not recited in claims 1, 10 and 19 of the instant application. However, the omission of the receiving step does not result in a meaningful change to the claimed subject matter as the claims remain directed to the same underlining process and outcome. Further, the newly added limitation of “the container comprising a security layer that restricts transfer of the NFT based on the second localization property” only describe characteristics of the container which are non-functional descriptive material and these characteristics are not processed or used to carry out any functionality that specifically relies on these particular characteristics.
Response to Arguments
Double Patenting
Claims remain rejected under doble patenting rejection.
Claim Rejections – 35 U.S.C. § 101
Claim rejections in the previous final rejection dated 09/16/2026 are withdrawn in light of the claim amendments. In particular, the amended claim now recites and additional step of “generating, by the NFT transaction processor, a container distinct from the first NFT account and the second NFT account”, which was not present in the claims previously subject to the 101 rejection. Therefore, the rejection is no longer applicable to the claims as amended.
Claim Rejections – 35 U.S.C. § 103
Applicant’s arguments, see pages 19-21, filed on 09/16/2026, with respect to claim 1-20 have been fully considered and are persuasive. The rejection of claims 1-20 has been withdrawn.
Relevant Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's
disclosure.
US 20050177489 to discloses: A method for disbursing loan proceeds, which has the following steps: (a) a borrower residing in a different jurisdiction from the location of a licensed lender contacting said lender about obtaining a loan; (b) said licensed lender forwarding the application to said borrower; (c) said borrower transmitting the executed loan application and requested documentation to said licensed lender; (d) said licensed lender accepting and processing the loan application; (e) said licensed lender approving the loan application; (f) said licensed lender pursuant to authorization of borrower automatically opening an account for said borrower at a banking institution located in the same state jurisdiction as such licensed lender and its banking institution; (g) said licensed lender disbursing the loan proceeds from its funding account at its banking institution to said borrower's newly created bank account; (h) such loan proceeds then being automatically wired from said borrower's new bank account at said banking institution in the same state jurisdiction as such the licensed lender and its banking institution to a bank checking account of said borrower in a different state jurisdiction where said borrower currently banks; (i) and, said licensed payday lender, pursuant to a pre-authorization by borrower, arranging repayment of such loan through the Federal Reserve to debit the loan amount and accrued interest and fees from said bank account of borrower in his/her home state jurisdiction by having such money wired to the bank account of the licensed lender at such licensed lender's banking institution.
US 2023/0186281 A1 to Todasco discloses: Novel technical ways of facilitating secured execution of blockchain transactions are presented. In various embodiments, a system, comprises a non-transitory memory comprising instructions; and one or more hardware processors coupled to the non-transitory memory and configured to read the instructions to cause the system to perform operations comprising: detecting a request from a first user to access one or more digital assets of a first digital wallet of a second user; in response to detecting the request, determining whether to provide access to the one or more digital assets to the first user based on one or more factors, wherein the one or more factors includes a location of the first user, a location of the second user, or one or more characteristics of the first user; and restricting the first user from accessing the one or more digital assets based on the one or more factors.
US 20190244207 A1 to Samuel discloses: Systems, methods and machine-readable mediums for blockchain enforced conditional transfer of an asset, such as a cryptocurrency, are provided. The system may comprise a smart contract comprising at least one condition relating to the automated generation of one or more blockchain transactions to enable a transfer to be made with respect to the asset. The at least one condition defines a permitted use of the asset. The permitted use corresponding to a permitted category selected from a group consisting of permitted location-based identifiers of a transferee, permitted businesses, permitted transaction price and permitted time period. The automated generation of one or more blockchain transactions to enable a transfer of the asset occurs if a transaction category complies with the permitted category. The system may further comprise one or more processors adapted to execute the at least one condition of the smart contract.
US 20220067703 A1 to Sarin discloses: Methods and systems are presented for facilitating sharing of tokens among different funding accounts linked to a digital wallet application to improve the computer resource efficiency of the mobile device. When a first funding account is linked to the digital wallet application is received, a token management system may determine whether a set of tokens have already been issued and stored on the mobile device for another related funding account. The token management system may cause a token service provider server to abort generating additional tokens for the first funding account. Instead, the token management system may modify characteristics of one or more of the set of tokens existed on the mobile device, to enable the one or more existing tokens to be usable in electronic payment transactions in association with the first funding account or the second funding account.
US 20100153278 A1 to Farsedakis discloses: An inventive website is used by a seller to find a universe of buyers, and by a buyer to be introduced to a seller without investing much time. The website in-takes a user's description of his target item with agreeable price, which gets posted on the website. When a seller encounters a posting for which he wants to be introduced to the poster, he has the system report his interest to the poster and once the poster grants permission, the seller can be introduced to, and directly email, telephone, etc. the poster. The provision of the introduction can be conditioned upon payment by the seller or otherwise. An Identity Scoring system outputs a score indicating the likelihood that the opposite party actually is who claims to be.
Conclusion
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/J.L./Examiner, Art Unit 3698 /STEVEN S KIM/Primary Examiner, Art Unit 3698
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