DETAILED ACTION
Introduction
This Office action is responsive to the communications filed April 3, 2026. Claim 1 was amended. Claim 35 canceled. Claims 1-10, 14, 16, 18-20, 22-27, 31, and 33 are pending.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-10, 14, 16, 18-20, 22-27, 31, and 33) in the reply filed on April 3, 2026 is acknowledged.
Specification
The specification is objected to as failing to provide proper antecedent basis for the following claimed subject matter:
claims 1 and 18 - the encoder configured to encode a smart contract; and
claims 2 and 19 - the smart contract digital container is configured to track evolution of the at least one digital asset and unlock functionality of the at least one digital asset in response to computational transformation of the digital asset.
See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
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 1-10, 14, 16, 18-20, 22-27, 31, and 33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-10, 14, and 16 are directed to system. Claims 18-20, 22-27, 31, and 33 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
For example, claim 1 recites an abstract idea of transferring digital asset. The claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The certain methods of organizing human activity abstract idea grouping is defined as concepts related to fundamental economic principles or practices, commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. See MPEP § 2106.04(a)(2), subsection II. The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity” grouping of abstract ideas as they relate to transferring digital asset. More specifically, the following the bolded claim elements recite additional elements while the other claim elements recite the abstract idea. according to MPEP 2106.04(a).
1. A blockchain computer system for computationally evolving digital assets and controlling digital asset transactions, the blockchain computer system comprising:
a blockchain computer network having a plurality of nodes configured to process validate and record transactions of digital assets on a distributed ledger;
an encoder deployed on the blockchain computer system, the encoder configured to encode, a smart contract, the smart contract being cryptographically configured to control at least one digital asset, wherein the encoder configures the smart contract to restrict transfer of the at least one digital asset in the blockchain computer network;
an embedded virtual machine (VM) configured to execute the smart contract on the blockchain computer network, wherein the execution of the smart contract by the embedded virtual machine causes the blockchain computer network to condition transaction validation on-chain state of the at least one digital asset, and wherein the smart contract is configured to:
based on at least one user activity value, update immutable ledger state corresponding to the at least one digital asset to computationally evolve the at least one digital asset into a computationally evolved digital asset; and enforce, during validation of a transaction submitted to the blockchain computer network, a transfer restriction on the computationally evolved digital asset by programmatically approving or rejecting the transaction based on whether at least one threshold criterion encoded in the smart contract is satisfied,
such that transferability of the computationally evolved digital asset is dynamically enabled or disabled by the embedded virtual machine as part of blockchain transaction execution.
Independent claim 18 recites similar language.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional element(s) of the claim(s) such as the embedded virtual machine, smart contract, blockchain computer network, immutable ledger, blockchain computer network, blockchain computer system, nodes and encoder are merely used as tools to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, these additional elements perform the steps or functions of transferring digital asset. Viewed as a whole, the use of embedded virtual machine, smart contract, blockchain computer network, immutable ledger, blockchain computer network, blockchain computer system, nodes and encoder as tools to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer or computer networks performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional element(s) of the embedded virtual machine, smart contract, blockchain computer network, immutable ledger, blockchain computer network, blockchain computer system, nodes and encoder to perform the steps amounts to no more than using generic hardware or software to automate and/or implement the abstract idea of transferring digital asset. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of transferring digital asset. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
The dependent claims further describe the abstract idea such as wherein the smart contract is further configured to generate a first initial attribute value for a first digital asset of the at least one digital asset, the first initial attribute value being equal to a second initial attribute value for a second digital asset of the at least one digital asset. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
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 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2023/0412393 to Williams et al. (“Williams”) in view of U.S. Publication No. 2022/0327538 to Kumar et al. (“Kumar”).
As per claim 1, Williams discloses a blockchain computer network having a plurality of nodes configured to process validate and record transactions of digital assets on a distributed ledger (Fig. 3; abstract- blockchain networks…multiple nodes; paragraph [0037]);
an encoder deployed on the blockchain computer system (paragraph [0091]); the encoder configured to encode the smart contract, the smart contract being cryptographically configured to control at least one digital asset, (paragraphs [0038] – smart contracts that can be associated with digital asset; [0105]-encoding of a transaction ),
wherein the encoder configures the smart contract to restrict transfer of the at least one digital asset in the blockchain computer network (paragraphs [0038] ;paragraph [0051] – enforce a contract governing transfer; [0052] – clearinghouse may implement rules in conjunction with the threshold to prevent a value of the token from experiencing dramatic changes characteristic of backdoor or offline transactions…clearinghouse may manage and approve or deny transactions…clearinghouse may be implemented in a decentralized manner, such as with a smart contract)
an embedded virtual machine (VM) configured to execute the smart contract on the blockchain computer network, wherein the execution of the smart contract by the embedded virtual machine causes the blockchain computer network to condition transaction validation on-chain state of the at least one digital asset (paragraph [0074] – EVM to execute the smart contract’s code… the code may be the same across each Ethereum node to be run to check whether conditions are met, such as a condition for a balance reaching a trade value prior to expiration of an expiration term), and
wherein the smart contract is configured to:
enforce, during validation of a transaction submitted to the blockchain computer network, a transfer restriction on the computationally evolved digital asset by programmatically approving or rejecting the transaction based on whether at least one threshold criterion encoded in the smart contract is satisfied, such that transferability of the computationally evolved digital asset is dynamically enabled or disabled by the embedded virtual machine as part of blockchain transaction execution (paragraph [0052] – clearinghouse may implement rules in conjunction with the threshold to prevent a value of the token from experiencing dramatic changes characteristic of backdoor or offline transactions…clearinghouse may manage and approve or deny transactions…clearinghouse may be implemented in a decentralized manner, such as with a smart contract)
Williams does not expressly disclose based on at least one user activity value, update immutable ledger state corresponding to the at least one digital asset to computationally evolve the at least one digital asset into a computationally evolved digital asset.
Kumar discloses based on at least one user activity value, update immutable ledger state corresponding to the at least one digital asset to computationally evolve the at least one digital asset into a computationally evolved digital asset (paragraph [0096] – “put” command).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Kumar into Williams as it provides means to “update states in a ledger” (Kumar at paragraph [0096]). Hence, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claims 2 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Williams in view of Kumar as applied to claim 1 above, and further in view of JP2024085345 to Nishikubo et al. (“Nishikubo”).
As per claim 2, Williams in combination with Kumar disclose the system of claim 1. The references do not expressly disclose wherein the smart contract is further configured as a loot box digital container; the smart contract digital container is configured to track evolution of the at least one digital asset and unlock functionality of the at least one digital asset in response to computational transformation of the digital asset; and the blockchain computer network is configured to implement a randomized mechanism for acquisition of a digital asset spawned from the at least one digital asset.
Nishikubo discloses herein the smart contract is further configured as a loot box digital container; the smart contract digital container is configured to track evolution of the at least one digital asset and unlock functionality of the at least one digital asset in response to computational transformation of the digital asset; and the blockchain computer network is configured to implement a randomized mechanism for acquisition of a digital asset spawned from the at least one digital asset (Fig. 3a and Fig. 5; abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Nishikubo in the system of Williams in combination with Kumar. Hence, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 19 is rejected on the same rationale as claim 2.
Claims 3 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Williams in combination with Kumar as applied to claim 1 above, and further in view of U.S. Patent No. 10,990,705 to Yang et al. (“Yang”).
As per claim 3, Williams in combination with Kumar disclose the system of claim 1. The references do not expressly disclose wherein the smart contract is further configured to generate a first initial attribute value for a first digital asset of the at least one digital asset, the first initial attribute value being equal to a second initial attribute value for a second digital asset of the at least one digital asset.
Yang discloses a first initial attribute value for a first digital asset of the at least one digital asset, the first initial attribute value being equal to a second initial attribute value for a second digital asset of the at least one digital asset (claim 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Yang in the system of Williams in combination with Kumar. Hence, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 20 is rejected on the same rationale as claim 3.
Claims 4 is rejected under 35 U.S.C. 103 as being unpatentable over Williams in view of Kumar as applied to claim 1 above, and further in view of U.S. Publication No. 2025/0352907 to Crabtree et al. (“Crabtree ‘907”).
Williams in combination with Kumar disclose the system of claim 1. The references do not expressly disclose wherein the smart contract is further configured to generate a first exclusivity value for a first digital asset of the at least one digital asset, the first exclusivity value being different from a second exclusivity value for a second digital asset of the at least one digital asset.
Crabtree ‘907 discloses the smart contract is further configured to generate a first exclusivity value for a first digital asset of the at least one digital asset, the first exclusivity value being different from a second exclusivity value for a second digital asset of the at least one digital asset (paragraphs [0315] – NFT which are unique in game assets; [0316] smart contract framework to govern the creation, transfer, and use of digital assets ).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Crabtree ‘907 in the system of Williams in combination with Kumar. Hence, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claims 5 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Williams in view of Kumar as applied to claim 1 above, and further in view of U.S. Publication No. 2025/0156828 to Sliwka et al. (“Sliwka”).
As per claim 5, Williams in view of Kumar disclose the system of claim 1. The references do not expressly disclose wherein the smart contract is further configured to determine, based on an exclusivity value for a digital asset of the at least one digital asset, at least one attribute value threshold for the digital asset.
Sliwka discloses wherein the smart contract is further configured to determine, based on an exclusivity value for a digital asset of the at least one digital asset, at least one attribute value threshold for the digital asset (paragraph [0660]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Sliwka in the system of Williams in combination with Kumar. Hence, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 22 is rejected on the same rationale as claim 5.
Claims 6-10, 14, 16, 23-27, 31, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Williams in view of Kumar as applied to claim 1 above, and further in view of U.S. Publication No. 2026/0004641 to Russ et al. (“Russ”).
As per claim 6, Williams in view of Kumar disclose the system wherein the smart contract is further configured to determine, based on an exclusivity value for a digital asset of the at least one digital asset, at least one of: (i) at least one path of a computational evolution tree associated with the digital asset and (ii) a depth of the computational evolution tree.
Russ discloses wherein the smart contract is further configured to determine, based on an exclusivity value for a digital asset of the at least one digital asset, at least one of: (i) at least one path of a computational evolution tree associated with the digital asset and (ii) a depth of the computational evolution tree (paragraph [0061]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Russ in the system of Williams in combination with Kumar. Hence, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per claim 7, Russ discloses wherein the at least one user activity value includes at least one of: (i) a user progress value in an electronic game platform, (ii) a user skill value in the electronic game platform, and (iii) a user performance value in the electronic game platform (paragraph [0061]).
As per claim 8, Russ discloses wherein a digital asset of the at least one digital asset has an associated computational evolution tree, and wherein the smart contract is further configured to: determine, based on the at least one user activity value, at least one path of the associated computational evolution tree (paragraph [0061]).
As per claim 9, Russ discloses wherein the at least one user activity value includes a user progress value in an electronic game platform, and wherein the smart contract is further configured to: determine, based on the user progress value, a digital asset attribute level path of the associated computational evolution tree (paragraph [0061]).
As per claim 10, Russ discloses wherein the at least one user activity value includes a user skill value in an electronic game platform, and wherein the smart contract is further configured to: determine, based on the user skill value, a digital asset ability level path of the associated computational evolution tree (paragraph [0061]);
wherein the determined digital asset ability level path relates to at least of one: (i) a trait of the digital asset in the electronic game platform, (ii) an item in the electronic game platform, and (iii) a skill of the digital asset in the electronic game platform; wherein the trait of the digital asset includes a computational evolution trait digital token (abstract; paragraph [0012]).
Williams discloses wherein the item in the electronic game platform includes at least one of: (i) a weapon in the electronic game platform and (ii) equipment in the electronic game platform.
As per claim 14, Russ discloses wherein the at least one user activity value includes a user performance value in an electronic game platform, and wherein the smart contract is further configured to: determine, based on the user skill value, a digital asset enhancement level path of the associated computational evolution tree; wherein the user performance value includes a performance value for an event in the electronic game platform in the blockchain computer network (see claim 7 above).
As per claim 16, Williams in combination with Kumar and Russ disclose wherein the computationally evolved digital asset is configured to encapsulate at least one permutation of user activity values; wherein at least one user activity value includes a user skill value in an electronic game platform, and wherein the smart contract is further configured to: generate, based on the user skill value, at least one computational evolution trait digital token; and process at least one transaction of the at least one computational evolution trait digital token on the blockchain computer network (see claim 10 above).
Claims 23-27 are rejected on the same rationale as claims 6-10.
Claim 31 is rejected on the same rationale as claim 14.
Claim 33 is rejected on the same rational as claim 16.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Publication No. 2026/0154553 to Crabtree et al.
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/Jalatee Worjloh/Primary Examiner, Art Unit 3697
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