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 .
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.
Status of the Claims
This is a final rejection prepared in response to applicant’s amendments filed on 05/08/2026.
Claims 1-2 and 10-20 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.
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,
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:
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 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,
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:
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,
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 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 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 instant claims represent a broader embodiment of the patented claims. The only major differences between the applications is that the patented application recites one additional steps of generating a container linked with the second localization property if the properties differ. However, 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;
determining, by the NFT transaction processor, 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
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, determining if the location of the first account differ from the location of the second location, 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 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 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 Gopinath (US 2014/0310125 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.)
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. (¶0898, Once accepted by the recipient, the token transfer system 402 may instruct the ledger management system 104 to update the distributed ledger to indicate the change of ownership of the token, such that the distributed ledger indicates that the recipient is the current owner of the token.)
Yantis does not disclose, however Gopinath 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; (¶0029, For example, if restriction 115 states that the item described by item data 113 is only to be sold to a buyer within 50 miles of the seller, marketplace program 112 examines the geographic information of the user of seller device 140 to determine the seller's location and the geographic information of the user of buyer device 120 to determine the buyer's location.)
determining, by the NFT transaction processor, 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; (¶0003, The computer determines whether the geographic information of the buyer satisfies the first set of geographic restrictions on the sale of the item. Based on the determination of whether the geographic information of the buyer satisfies the first set of geographic restrictions on the sale of the item, the computer determines whether to transmit the offer for purchase of the item to the seller. ¶0029, Marketplace program 112 then determines if the user of buyer device 120 is geographically located within a 50 mile radius of the seller's location. In other embodiments, restriction 115 can also describe a geographic restriction that is not related to the seller's location. For example, restriction 115 can state the item described by item data 113 is only to be sold to a buyer within a certain zip code, even if the seller is not located in the specified zip code or that the item described by item data 113 is only to be sold to a buyer in China even if the seller's location is in the United States. These restrictions may be useful in situations where the item described by item data 113 is in a different location than the seller.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to have modify the disclosure of Yantis by incorporating the teaching of Gopinath. One of ordinary skills in the art would have been motivated to combine these common elements in order to ensure that the transfer of assets is perform in compliance with established location restrictions and regulations.
Regarding claims 2, 11 and 20, the combination of Yantis and Gopinath further disclose:
generating, by the NFT transaction processor in response to the determination, a smart contract 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 Gopinath 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 Gopinath 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 Gopinath 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 Gopinath 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 Gopinath 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 Gopinath 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 Gopinath 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.)
Response to Arguments
Claim Rejections – 35 U.S.C. § 112
Claim rejections 35 U.S.C. § 112 in the previous non-final action dated 02/11/2026 are withdrawn in light of the claim amendments.
Claim Rejections – 35 U.S.C. § 101
The applicant presents arguments/assertions in regards to 101 rejection on the previous office action. The basis of these assertions/arguments are based on the applicant’s arguments on pages 9-15.
First, the applicant asserts that “the claims integrate the judicial exception into a practical application by meaningfully applying , relying on, and/or using the judicial exception. Specifically, the claims integrate the judicial exception into a practical application because the claims recite a technical improvement to "localization control for Non-Fungible Tokens (NFTs) via transfer by containerized data structures.” The examiner finds this assertion not persuasive an respectfully disagrees. The claim merely implements commercial or legal interactions as described on the 101 rejection section above. The examiner finds that a method for transferring a token from a first account associated with a first location to a second account associated with a second location 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, determining if the location of the first account differ from the location of the second location, if the locations are different, transferring the token to a temporary account or vault and linking the second account with it does not provide any specific improvement to the functioning of the computer or blockchain technology. The additional elements in the claim are merely use to apply the abstract idea in the NFT blockchain environment. Further, applying the abstract idea does not improve upon the NFT nor does it improve upon the distributed ledger (i.e., blockchain). Therefore, the claim does not recite any improvement to a technology or inventive concept beyond applying these tools to an abstract concept and thus fail to impose any meaningful limit that would transform the abstract idea into a practical application under the second prong of step 2A of the subject matter eligibility framework.
Second, the applicant compares the instant claim with those of USPTO example 47, claim 3. The examiner finds this comparison not persuasive an respectfully disagrees. The present claims are directed to receiving a request, identifying localization properties associated with a first and a second NFT accounts, comparing those properties and applying transfer rules based on the comparison. Therefore, unlike example 47 that is directed to a specific improvement in the technical field of network intrusion detection, the present claims do not recite a specific improvement upon the computer or blockchain technology. Rather the claims utilize generic computer components to implement the abstract idea of evaluating and managing asset transfer requests based on a predefined set of rules.
As such the claims remain within an abstract idea and rejection is maintained based on the newly amended claims.
Claim Rejections – 35 U.S.C. § 103
Applicant makes a broad assertion that the cited references fail to teach or suggest the claimed limitations. As set forth in the 35 U.S.C. § 103 rejection above, the cited references, alone or in combination, disclose or render obvious each of the claimed features. Applicant has not specifically addressed the Examiner’s findings or explained how the cited references fail to teach the claimed subject matter. Accordingly, the rejection under 35 U.S.C. § 103 is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
The following prior art made of record and not relied upon is considered pertinent to applicant's
disclosure.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANICE LOZA whose telephone number is (571)270-3979. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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.
/J.L./Examiner, Art Unit 3698 /EDUARDO CASTILHO/Primary Examiner, Art Unit 3698
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