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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/08/2025 is being considered by the examiner.
Status of the Claims
This is a non-final rejection prepared in response to U.S. Patent Application 19/274,252 filed on
07/18/2025.
Claims 1-20 are pending.
Continuation
This application is a continuation application of U.S. application no. 18/100,811 filed on January 24, 2023, now US Patent 12,387,262 ("Parent Application”). See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered 'of record' in the Parent Application are now considered cited or 'of record' in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or 'of record' in the Parent Application need not be resubmitted in this application unless Applicant(s) desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
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 limitations uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: "a control structure that restricts transfer of the NFT to the second locality" in claims 2, 11 and 20.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is 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 limitation 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 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 recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-3, 11-12 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventors, at the time the application was filed, had possession of the claimed invention.
Regarding claims 2, 11 and 20, limitation "a control structure that restricts transfer of the NFT to the second locality " invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Here the claims and specifications are silent with respect to any structure corresponding to the generic placeholder. Therefore the claim is rejected under 35 U.S.C. 112(a) for lacking adequate written description.
Claims 3 and 12 are also rejected as they depend from either claims 2 or 11.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 11 and 12 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 2, 11 and 20, limitation “a control structure that restricts transfer of the NFT to the second locality” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 3 and 12 are also rejected as they depend from either claims 2 or 11.
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 1-20 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;
receiving, by an NFT transaction processor, a request to transfer an NFT from a first NFT account to a second NFT account,
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 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 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;
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,
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:
transferring, by the NFT transaction processor, the NFT to a container; and
transferring, by the NFT transaction processor, the NFT to the container; and
linking, by the NFT transaction processor, a public and private key pair linked with 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 including the container and a control structure 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, the public and private key pair 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 the request matches a second trustee identifier corresponding to an entity authorized to approve the 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 request; 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;
receive, by an NFT transaction processor, a request to transfer an NFT from a first NFT account to a second NFT account,
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 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 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;
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,
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:
transfer, by the NFT transaction processor, the NFT to a container; and
transfer, by the NFT transaction processor, the NFT to the container; and
link, by the NFT transaction processor, a public and private key pair linked with 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;
receive a request to transfer an NFT from a first NFT account to a second NFT account,
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 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 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;
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,
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:
transfer the NFT to a container; and
transfer,
link a public and private key pair linked with the second NFT account with the container to transfer the NFT to the second NFT account.
link,
Claim 20
Claim 20
generate a smart contract including the container and a control structure 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 the public and private key pair 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 patented application discloses much of the subject matter in the instant application. The only major differences between the applications is that the patented application recites two additional steps of a determining if the first localization property and the second localization property differ and generating a container if the properties differ. However the omission of the determining step does not render the claims patentable distinct. It would’ve been obvious to one in the ordinary skill in the art to understand that a determination must be perform in order to establish whether the first localization property and the second localization properties differ. Similarly, the omission of the container generation 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.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an
abstract idea without significantly more.
Step 1: Claims 1-9 are directed to computer-implemented method (i.e., process). Claims 10-18 are directed to a system (i.e., machine, and manufacture). Claims 19-20 are directed to a computer-storage media (i.e., manufacture). Therefore, these claims fall within the four statutory categories of
invention, and thus must be further analyzed at Step 2A to determine if the claims are directed to a
judicial exception (See MPEP 2106.03, subsection II).
Step 2A Prong One: Claim 1, recites (i.e., sets forth or describes) an abstract idea. More specifically, the following bolded claim elements recite abstract ideas while the non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
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 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 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;
in response to determining that the first localization property and the second localization property differ, transferring, by the NFT transaction processor, the NFT to a container; and
linking, by the NFT transaction processor, a public and private key pair linked with the second NFT account with the container to transfer the NFT to the second NFT account.
Claim 1, recites (i.e., sets forth or describes) a method for transferring a token from a first account associated with a first location to a second account associated with a second location. The claim achieves this by receiving a request to transfer a token from a first account to a second account, identifying the location of the first account, identifying the location of the second account and if the locations are different, transferring the token to a temporary account or vault and linking the second account with it. Claim 10 and 19 are significantly similar to claim 1. As such claim 10 and 19 also recite an abstract idea. Specifically, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas (i.e., commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)).
Step 2A Prong Two: Because the claim recites abstract ideas, the analysis proceeds to
determine whether the claim recites additional elements that recite a practical application of the
abstract ideas. Here, the additional elements of an NFT transaction processor and a container merely serve as a tool to perform the abstract idea (MPEP § 2106.05(f)). Further, the additional element “NFT” generally links the use of the judicial exception to a particular technological environment, that being of non-fungible tokens (MPEP § 2106.05(h)). Therefore, the claim as a whole fail to recite a practical application of the abstract ideas.
Step 2B: Determines whether the claim as a whole amount to significantly more than the exception itself. Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Here, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. As discussed previously with respect to Step 2A, the additional elements merely serve as a tool to perform an abstract idea. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Dependent Claims: Claims 2-9, 11-18 and 20 have also been analyzed for subject matter
eligibility. However, claims 2-9, 11-18 and 20 also fail to recite patent eligible subject matter for the
following reasons:
Claims 2 and 11 recite the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
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.
The non-bolded additional elements of NFT transaction processor, a smart contract and a control structure fail to recite a practical application or significantly more than the abstract idea because they merely serve as tools to perform the abstract idea (MPEP §2106.05(f)). Further, the additional element “NFT” generally links the use of the judicial exception to a particular technological environment, that being of non-fungible tokens (MPEP § 2106.05(h)). Further, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claims 3 and 12 recite the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
linking, by the NFT transaction processor, the public and private key pair with the smart contract to transfer the NFT to the second NFT account.
The claim further recites an abstract idea. In other words, it recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements of an NFT transaction processor and a smart contract fail to recite a practical application or significantly more than the abstract idea because they merely serve as a tool to perform the abstract idea (MPEP §2106.05(f)). Further, the additional element “NFT” generally links the use of the judicial exception to a particular technological environment, that being of non-fungible tokens (MPEP § 2106.05(h)). Furthermore, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claims 4 and 13 recite the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
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
The claim further recites an abstract idea. In other words, it recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements of an NFT transaction processor and a container fail to recite a practical application or significantly more than the abstract idea because they merely serve as a tool to perform the abstract idea (MPEP §2106.05(f)). Further, the additional element “NFT” generally links the use of the judicial exception to a particular technological environment, that being of non-fungible tokens (MPEP § 2106.05(h)). Furthermore, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claims 5 and 14 recite the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
receiving, by the NFT transaction processor from a computing device, an authorization token linked with the first trustee identifier.
The claim further recites an abstract idea. In other words, it recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements of an NFT transaction processor and a computing device fail to recite a practical application or significantly more than the abstract idea because they merely serve as a tool to perform the abstract idea (MPEP §2106.05(f)). Further, the additional element “NFT” generally links the use of the judicial exception to a particular technological environment, that being of non-fungible tokens (MPEP § 2106.05(h)). Furthermore, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claims 6 and 15 recite the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
validating, by the NFT transaction processor, that the first trustee identifier matches a block of a blockchain including the second trustee identifier.
The claim further recites an abstract idea. In other words, it recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements of an NFT transaction processor and a blockchain fail to recite a practical application or significantly more than the abstract idea because they merely serve as a tool to perform the abstract idea (MPEP §2106.05(f)). Further, the additional element “NFT” generally links the use of the judicial exception to a particular technological environment, that being of non-fungible tokens (MPEP § 2106.05(h)). Furthermore, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claims 7 and 16 recite the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
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 request; and
transferring, by the NFT transaction processor in response to the validating, the NFT to the container.
The claim further recites an abstract idea. In other words, it recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements of an NFT transaction processor and a container fail to recite a practical application or significantly more than the abstract idea because they merely serve as a tool to perform the abstract idea (MPEP §2106.05(f)). Further, the additional element “NFT” generally links the use of the judicial exception to a particular technological environment, that being of non-fungible tokens (MPEP § 2106.05(h)). Furthermore, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claims 8 and 17 recite the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
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 NFT account and the second NFT account.
The claim further recites an abstract idea. In other words, it recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements of a locality processor and a container fail to recite a practical application or significantly more than the abstract idea because they merely serve as a tool to perform the abstract idea (MPEP §2106.05(f)). Further, the additional element “NFT” generally links the use of the judicial exception to a particular technological environment, that being of non-fungible tokens (MPEP § 2106.05(h)). Furthermore, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claims 9 and 18 recite the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
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.
The claim further recites an abstract idea. In other words, it recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements of a locality processor and a container fail to recite a practical application or significantly more than the abstract idea because they merely serve as a tool to perform the abstract idea (MPEP §2106.05(f)). Further, the additional element “NFT” generally links the use of the judicial exception to a particular technological environment, that being of non-fungible tokens (MPEP § 2106.05(h)). Furthermore, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claim 20 recites the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
generate a smart contract including the container and a control structure that restricts transfer of the NFT to the second locality; and
link the public and private key pair with the smart contract to transfer the NFT to the second NFT account.
The claim further recites an abstract idea. In other words, it recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements of a smart contract, a container, and a control structure to recite a practical application or significantly more than the abstract idea because they merely serve as a tool to perform the abstract idea (MPEP §2106.05(f)). Further, the additional element “NFT” generally links the use of the judicial exception to a particular technological environment, that being of non-fungible tokens (MPEP § 2106.05(h)). Furthermore, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yantis (US 2021/0326849 A1) in view of Todasco (US 2023/0186281 A1).
Regarding claims 1, 10 and 19, Yantis discloses:
receiving, by an NFT transaction processor, a request to transfer an NFT from a first NFT account to a second NFT account; (Yantis ¶0897, A transfer request may be received from an account of the token holder from the account of the intended recipient of the token. In embodiments, the transfer request may include a public address of the account to which the token is to be transferred and may further include or indicate the token to be transferred. For example, the transfer request may include a copy of the token or a value (e.g., an alphanumeric string) that uniquely identifies the token. In some embodiments, the transfer request includes a public key of the entity that digitally signed the token. In some embodiments, the transfer request may include a public address of the token owner that is requesting to transfer the token.)
Yantis does not disclose, however Todasco teaches:
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 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; in response to determining that the first localization property and the second localization property differ, transferring, by the NFT transaction processor, the NFT to a container; and linking, by the NFT transaction processor, a public and private key pair linked with the second NFT account with the container to transfer the NFT to the second NFT account. (¶0031, The one or more factors, for example, can include: identity of an individual, access rights, level of activity performed, proximity to another individual, location of an individual, digital declarations… Accordingly, after a determination has been made that the one or more factors has been satisfied or not satisfied, a device hosting or controlling a digital wallet can provide access to or restrict access to one or more digital assets associated with the digital wallet. In an aspect, such access or restriction can be performed automatically based on respective assessments or determinations. ¶0032, 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. ¶0035, …determining, based on the one or more factors, whether to provide access to a set of one or more assets in the second digital wallet to the second user. ¶0063, As explained herein, the device 102 can receive, using sensing component 116 and sensors 117, a set of sensed information (e.g., user identity, user proximity, user affinity to an entity, user location, user activity, user preferences, user credentials, user solvency, user records, user history . . . ). A context component 118 can facilitate determining context of one or more individuals, an event, a situation, etc. An assessment of the received information and determined or inferred context can be performed by device 102 using one or more of its components to determine whether one or more factors have been satisfied or not. Based on such determination, an access component 122 can provide or restrict access to one or more assets (e.g., money, artwork, media, content, crypto-currency, NFTs . . . ) associated with the digital wallet 101 or restrict access. ¶0076, In an embodiment, the device 102 can receive sensed extrinsic data from one or more sensing devices 116, 117. Context component 118 or AI component 202 can facilitate determining, based in part on the received sensed extrinsic data, context of a first user associated with a first digital wallet 101, or context of a second user associated with a second digital wallet 103. Based on the sensed extrinsic data and the context of the first or second users, determining if one or more factors have been satisfied, 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 or second users… ¶0086, At 412, a determination is made regarding 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 determining if a location of the first user corresponds to a location of the second user, or if one or more characteristics of the first user corresponds to one or more characteristics of a user of digital wallet 101… An assessment of the received information and determined or inferred context can be performed by device 102 using one or more of its components to determine whether one or more factors have been satisfied or not. ¶0091, In other embodiments, one or more devices corresponding to each of the specific group of users may be connected to the smart contract (or underlying blockchain) via their respective digital wallets. Therefore, sensing devices located or associated with each of the one or more devices (including device 102) may track location information corresponding to each respective device or may detect for a location relative to each of the other one or more devices. )
Further, the regarding the method claim limitation “in response to determining that the first localization property and the second localization property differ, transferring, by the NFT transaction processor, the NFT to a container; and linking …” is a conditional limitation which means that the claim limitation is only required when the stated condition is met.
Regarding claims 2 and 11, the combination of Yantis and Todasco further disclose:
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 (Yantis ¶0917, the smart contract may define one or more base functionalities that govern the tokenized token lifecycle mechanisms such as ownership transfer and/or redemption logic.)
Further, the claim limitation in the method claim “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” is a conditional limitation which means that the claim limitation is only required when the stated condition is met.
Regarding claims 3 and 12, the combination of Yantis and Todasco further disclose:
linking, by the NFT transaction processor, the second public and private key pair with the smart contract to transfer the NFT to the second NFT account (Yantis ¶0917-0918)
Regarding claims 4 and 13, the combination of Yantis and Todasco further disclose:
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 (Yantis ¶0983, the transaction of the item includes validating the specific token based on the digital-token identifier and the first chain of blocks, verifying that the different user has a valid account on the tokenization platform based on the public address of the user and the main chain of blocks, and, in response to validating the specific token and verifying the different user, updating the second chain of blocks with a new block.)
transferring, by the NFT transaction processor in response to the validating, the NFT to the container. (Yantis ¶0983, the transaction of the item includes validating the specific token based on the digital-token identifier and the first chain of blocks, verifying that the different user has a valid account on the tokenization platform based in the public address of the user and the main chain of blocks, and in response to validating the specific token and verifying the different user, updating the second chain of blocks with a new block.)
Further, the claim limitation in the method claim “transferring, by the NFT transaction processor in response to the validating, the NFT to the container.” is a conditional limitation which means that the claim limitation is only required when the stated condition is met.
Regarding claims 5 and 14, the combination of Yantis and Todasco further disclose:
receiving, by the NFT transaction processor from a computing device, an authorization token linked with the first trustee identifier. (Yantis ¶0011, The method further includes receiving a transfer request to transfer the specific token to a different user, wherein the transfer request includes a token identifier that identifies the specific token and a public address of the different user and validating the specific token based on the token identifier and the distributed ledger.)
Regarding claims 6 and 15, the combination of Yantis and Todasco further disclose:
validating, by the NFT transaction processor, that the first trustee identifier matches a block of a blockchain including the second trustee identifier. (Yantis ¶0011, The method further includes verifying that the different user has a valid account on the tokenization platform based on the public address of the user and the distributed ledger. Furthermore, in response to validating the specific token and verifying the different user, the method includes updating the distributed ledger with a block that includes ownership data that indicates that a specific token corresponding to the virtual representation is owned by the transacting user. The method also includes receiving a redemption request to redeem the token from a user device of the different user. additionally, in response to receiving the redemption request, the method further includes executing a workflow to satisfy the transaction for instance of the item corresponding to the token.)
Regarding claims 7 and 16, the combination of Yantis and Todasco further disclose:
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 request; and (Yantis ¶0011, The method further includes verifying that the different user has a valid account on the tokenization platform based on the public address of the user and the distributed ledger. Furthermore, in response to validating the specific token and verifying the different user, the method includes updating the distributed ledger with a block that includes ownership data that indicates that a specific token corresponding to the virtual representation is owned by the transacting user. The method also includes receiving a redemption request to redeem the token from a user device of the different user. additionally, in response to receiving the redemption request, the method further includes executing a workflow to satisfy the transaction for instance of the item corresponding to the token.)
transferring, by the NFT transaction processor in response to the validating, the NFT to the container. (Yantis ¶0983, the transaction of the item includes validating the specific token based on the digital-token identifier and the first chain of blocks, verifying that the different user has a valid account on the tokenization platform based in the public address of the user and the main chain of blocks, and in response to validating the specific token and verifying the different user, updating the second chain of blocks with a new block.)
Further, the claim limitation in the method claim “transferring, by the NFT transaction processor in response to the validating, the NFT to the container.” is a conditional limitation which means that the claim limitation is only required when the stated condition is met.
Regarding claims 8 and 17, the combination of Yantis and Todasco further disclose:
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 NFT account and the second NFT account. (Yantis ¶0869, the seller may select the previously defined item and may update one or more attributes. For example, the seller may provide additional media contents, may alter the price, and/or may update the number of items that are available.)
Regarding claims 9 and 18, the combination of Yantis and Todasco further disclose:
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. (Yantis ¶302-304, the set of rules includes a lock rule that restricts one or more transaction actions involving the second digital token and an unlock rule that removes the restriction of the one or more transaction actions involving the second digital token. In embodiments, the lock rule and the unlock rule are configurable by a host of the system configured to tokenize a token. In embodiments, the lock rule and the unlock rule are configurable by a user of the system configured to tokenize a token in a user interface of the system.)
Regarding claim 20, the combination of Yantis and Todasco further disclose:
generate a smart contract including the container and a control structure that restricts transfer of the NFT to the second locality; and (Yantis ¶0917, the smart contract may define one or more base functionalities that govern the tokenized token lifecycle mechanisms such as ownership transfer and/or redemption logic.)
link the public and private key pair with the smart contract to transfer the NFT to the second NFT account. (Yantis ¶0917-0918)
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's
disclosure.
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.
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/J.L./Examiner, Art Unit 3698
/STEVEN S KIM/Primary Examiner, Art Unit 3698