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 .
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 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1-11 fall into at least one of the four categories of statutory subject matter. The eligibility analysis proceeds to Step 2A.1.
Step 2A.1:
The limitations of independent claim 1 have been denoted with letters by the Examiner for easy reference. Independent claim 10 recites similar distinguishing features as claim 1, therefore the following eligibility analysis shall apply to both independent claims 1 and 10. The judicial exceptions recited in claim 1 are identified in bold below:
A control method to be performed by a control device, the control method comprising:
obtaining content information related to digital content created by a user;
recording, into a first distributed ledger system, a first nonfungible token (NFT) corresponding to the content information;
generating a second NFT corresponding to the content information, the second NFT being for distribution; and
recording the second NFT generated, into a second distributed ledger system different from the first distributed ledger system.
Under the broadest reasonable interpretation, A-B and D recite limitations that are reasonably categorized under certain methods of organizing human activity. Specifically, the bolded claimed limitations can be grouped as commercial or legal interactions in the form of sales activities. Generating a second NFT corresponding to the obtained content information for distributing the second NFT is a sales activity.
Claims 1 and 10 recite at least one abstract idea. The eligibility analysis proceeds to Step 2A.2.
Step 2A.2:
The judicial exception is not integrated into a practical application. In particular, claim 1 recites the additional element(s) not in bold above.
Limitations C and E are considered insignificant extra-solution activities because they do not impose any meaningful limits on how the content information is obtained and/or how the second NFT is generated MPEP 2106.05(g). Furthermore, “a first distributed ledger system” and “a second distributed ledger system” have been generically recited such that the recording method steps amount to no more than general usage of a data structure. When these additional elements are considered individually and as an ordered combination with the abstract idea, claim 1 as a whole amounts to no more than mere steps to implement an abstract idea on a data structure. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 10 recites “a processor” and “memory” as additional elements. These additional elements, along with “a control device,” have all been recited at a high-level of generality such that they amount to no more than generic computing components. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, the claims amount to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea MPEP 2106.05(f). These additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claims 1 and 10 do not recite additional elements that integrate the judicial exception into a practical application. The eligibility analysis proceeds to Step 2B.
Step 2B:
The additional elements, both individually and as an ordered combination, do not amount to significantly more than the judicial exception because the outcome of the considerations at Step 2B will be the same when considerations from Step 2A.2 are re-evaluated. Furthermore, storing information (limitations C and E) is considered by the courts to be well-understood, routine, and conventional activity (see MPEP 2106.05(d)(II), “storing and retrieving information in memory,” Versata). As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Claims 1 and 10 are not patent eligible.
Dependent Claims
Dependent claims 2, 6, and 8 elaborate on the abstract idea without reciting any new additional elements. Therefore, when the limitations are considered individually and as a whole in combination with the independent claim from which the depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent claim 3 recites the following new additional elements: “a user terminal” and “a distributor terminal.” The additional elements have all been recited at a high-level of generality such that they amount to no more than generic computing components. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, the claims amount to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea MPEP 2106.05(f). These additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependents claims 4-5, 7, and 9 recite the following new additional elements: “execution of a first contract code,” “execution of a second contract code,” “execution of a third contract code,” and “execution of a fourth contract code.” The additional elements have been generically recited such that they are generically linking the use of the judicial exception to a particular technological environment or field of use MPEP 2106.05(h). Limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, they do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 11 recites the following new additional element: “a non-transitory computer-readable recording medium having stored therein a program for causing a computer to perform.” The additional element has been recited at a high-level of generality such that it amounts to no more than a generic computing component. Therefore, when the additional element is considered individually and as an ordered combination with the abstract idea, the claim amounts to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea MPEP 2106.05(f). The additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea(s) into a patent eligible application such that the abstract idea amounts to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, claims 1-11 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 6-11 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Jakobsson et al. U.S. 2023/0075884 (herein as “Jakobsson”).
Re Claim 1, Jakobsson discloses a control method to be performed by a control device, the control method comprising:
obtaining content information related to digital content created by a user [0442] – “obtains access to a first content element and associated policies”;
recording, into a first distributed ledger system, a first nonfungible token (NFT) corresponding to the content information [0468] – “mint NFTs based on content…and/or associate NFTs with content,” [0376] – “Original NFTs may be recorded on blockchains with higher security”;
generating a second NFT corresponding to the content information, the second NFT being for distribution ([0375] – “As NFTs spawn,” [0136] – “Spawning may be used to generate multiple “editions” of NFTs that reference the same assets,” i.e. generating a second NFT, [0376] – “the representations on the second chain may carry the content (i.e. corresponding to the content information)…a replication (i.e. the second NFT) on blockchain B may include control information that specifies whether users may initiate ownership changes for the latter tokens,” [0136] – “spawned NFTs may be sold over market places and/or social media networks,” i.e. for distribution); and
recording the second NFT generated, into a second distributed ledger system different from the first distributed ledger system [0375] – “a first NFT may live on the ETH blockchain, but as it spawns, the new versions may be placed on the SOL blockchain.”
Re Claim 2, Jakobsson discloses the control method according to claim 1, and Jakobsson further discloses wherein
the first NFT includes information for specifying:
a user identification (ID) for identifying the user [0376] – “the original NFTs may carry the ownership information”; and
a content ID for identifying the digital content [0267] – “an NFT 1600 may be associated with one or more content 1640 elements, which may be contained in or referenced by the NFT,” and
the second NFT includes information for specifying the content ID [0376] – “the representations on the second chain may carry the content.”
Examiner notes the contents of the first NFT and the second NFT are nonfunctional descriptive language MPEP 2111.05. The contents of the first and second NFTs do not meaningfully limit how they are recorded and/or generated. Therefore, the contents of the NFTs cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claim 3, Jakobsson discloses the control method according to claim 2, and Jakobsson further discloses wherein
the first distributed ledger system includes:
a user terminal owned by the user [0484] – “Content creators may create content through user devices”; and
the control device [0484] – “The content creators may provide created content to the node(s) performing the method,” [0483] – “Nodes and/or network nodes may refer to one single physical node and/or several nodes”, and
the second distributed ledger system includes:
a distributor terminal owned by a distributor who distributes digital content [0504] – “content distributors (e.g., nodes) wishing to determine whether content may be optimized for the intended audiences. Such content distributors may be different from the content creators…may be advertising portals”; and
the control device [0484] – “The content creators may provide created content to the node(s) performing the method,” [0483] – “Nodes and/or network nodes may refer to one single physical node and/or several nodes.”
Claim 3 is a method claim. The scope of a method claim is not limited by claim language that suggests or makes optional but does not require steps to be performed MPEP 2111.04. The limitations describe the systems without claiming any method steps. Therefore, claim 3 cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claim 6, Jakobsson discloses the control method according to claim 2, and Jakobsson further discloses further comprising:
obtaining third transaction data including the content ID and a first token for paying, to an administrator, remuneration for use of the digital content in distribution by a distributor ([0158] – “obtain and conduct transactions with the NFTs,” [0163] – NFTs are associated with the content, [0164] – “purchase NFTs using fungible tokens”);
recording the third transaction data into the second distributed ledger system [0175] – “record transactions”; and
transferring the first token from an account of the distributor to an account of the administrator [0155] – “cause payments of residual royalties.”
Examiner notes the content of the third transaction data is nonfunctional descriptive language MPEP 2111.05. The content of the third transaction data does not meaningfully limit how the data is obtained and/or recorded. Therefore, the content of the third transaction data cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claim 7, Jakobsson discloses the control method according to claim 6, Jakobsson further discloses wherein
the first token is transferred by execution of a third contract code stored in the second distributed ledger system that is triggered by the recording of the third transaction data into the second distributed ledger system ([0288] – “smart contract may have a provision that the creator of token A 1920 receives remuneration when token C 1965 may be sold,” [0175] – “record transactions,” a token being sold is a transaction, therefore, it is recorded onto the blockchain).
Re Claim 8, Jakobsson discloses the control method according to claim 7, and Jakobsson further discloses further comprising:
after the transferring of the first token, generating fourth transaction data including a second token and second NFT information corresponding to the content ID, the second token being for paying, to the user, remuneration for the use of the digital content in distribution and being at least part of the first token ([0354] – “enable buyers to resell NFTs with royalties benefitting the creator(s),” [0158] – “obtain and conduct transactions with the NFTs,” [0444] – “generating a purchase offer,” i.e. fourth transaction data);
recording the fourth transaction data into the first distributed ledger system ([0175] – “record transactions,” onto a blockchain); and
transferring the second token from the account of the administrator to an account of an owner of the first NFT [0444] – “receive royalty payment.”
Examiner notes the content of the fourth transaction data is nonfunctional descriptive language MPEP 2111.05. The content of the fourth transaction data does not meaningfully limit how the data is generated and/or recorded. Therefore, the content of the third transaction data cannot be given patentable weight.
Re Claim 9, Jakobsson discloses the control method according to claim 8, and Jakobsson further discloses wherein
the second token is transferred by execution of a fourth contract code stored in the first distributed ledger system that is triggered by the recording of the fourth transaction data into the first distributed ledger system ([0354] – “enable buyers to resell NFTs with royalties benefitting the creator(s),” [0288] – “smart contract may have a provision that the creator of token A 1920 receives remuneration when token C 1965 may be sold,” [0175] – “record transactions,” a token being sold is a transaction, therefore, it is recorded onto the blockchain), and
in the transferring of the second token,
the first NFT recorded in the first distributed ledger system is specified based on the second NFT information included in the fourth transaction data ([0357] – “Spawning “rules” may be determined by a first original NFT,” i.e. second NFT information), and
the second token is transferred to the account of the owner of the first NFT specified based on the first NFT [0354] – “enable buyers to resell NFTs with royalties benefitting the creator(s).”
Re Claim 10, it is the device claim of method claim 1. It recites similar distinguishing features as claim 1. Furthermore, Jakobsson discloses a processor and memory [0488] for implementing the disclosed method. Therefore, claim 10 is rejected for the same reasons above.
Re Claim 11, Jakobsson discloses a non-transitory computer-readable recording medium having stored therein a program for causing a computer to perform the control method according to claim 1 [0063], [0490].
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Jakobsson et al. U.S. 2023/0075884 (herein as “Jakobsson”) in view of Mir et al. U.S. 2023/0130182 (herein as “Mir”).
Re Claim 4, Jakobsson discloses the control method according to claim 2, and Jakobsson further discloses wherein
in the obtaining, first transaction data including the content information is obtained to obtain the content information [0151] – “data reporting the content of NFT transactions,”
the control method further comprises:
recording the first transaction data into the first distributed ledger system [0169] – “access NFT transaction data recorded within the permissioned blockchain.”
However, Jakobsson does not expressly disclose
the first NFT is recorded by execution of a first contract code stored in the first distributed ledger system that is triggered by the recording of the first transaction data into the first distributed ledger system.
Mir discloses generating and managing immutable license grant records for authorized derivative works. Specifically, Mir discloses
the first NFT is recorded by execution of a first contract code stored in the first distributed ledger system that is triggered by the recording of the first transaction data into the first distributed ledger system (Fig. 4B – (A4/B4) – Smart contract executes on blockchain node to create new registry entry recording derivative NFT authorization and provenance, i.e. recording of the first transaction data; Optionally triggers minting of the new NFT (e.g., via a second contract on same or different blockchain as registry),” i.e. the first NFT is recorded).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Jakobsson’s systems and methods for token management with the teachings of recording an NFT by executing a smart contract that is triggered by recording of transaction data into a blockchain in Mir. One would be motivated to make the combination to memorialize NFT information, thereby establishing provenance tracking of NFTs Mir, [0004], [0034].
Re Claim 5, Jakobsson in view of Mir teach the control method according to claim 4, and Jakobsson in view of Mir further teach further comprising:
when the first NFT is recorded into the first distributed ledger system Jakobsson, [0376] – “Original NFTs may be recorded on blockchains with higher security,”
generating second transaction data including first NFT information related to the first NFT Jakobsson, [0429] – “enable configurations of the first content 2914 to generate associated second content”; and
recording the second transaction data into the second distributed ledger system Jakobsson, [0430] – “…store records 2938. Records 2938 may include…second content.”
However, Jakobsson does not expressly disclose
the second NFT is generated and recorded by execution of a second contract code stored in the second distributed ledger system that is triggered by the recording of the second transaction data into the second distributed ledger system.
Mir discloses generating and managing immutable license grant records for authorized derivative works. Specifically, Mir discloses
the second NFT is generated and recorded by execution of a second contract code stored in the second distributed ledger system that is triggered by the recording of the second transaction data into the second distributed ledger system (Fig. 4B – (A4/B4) – Smart contract executes on blockchain node to create new registry entry recording derivative NFT authorization and provenance, i.e. recording of the first transaction data; Optionally triggers minting of the new NFT (e.g., via a second contract on same or different blockchain as registry),” i.e. the first NFT is recorded).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Jakobsson’s systems and methods for token management with the teachings of recording an NFT by executing a smart contract that is triggered by recording of transaction data into a blockchain in Mir. One would be motivated to make the combination to memorialize NFT information, thereby establishing provenance tracking of NFTs Mir, [0004], [0034].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mukherjee et al. U.S. 2024/0176895 directed to systems and methods for creating derivative digital assets by branching on an original non-fungible token. See at least [0042-45].
Kurian et al. U.S. 2023/0073545 directed to system for linking and partitioning non-fungible tokens. See at least [0061-63].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE DANG whose telephone number is (571)270-5880. The examiner can normally be reached M-F 9-5pm MT.
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.
/CHRISTINE DANG/Examiner, Art Unit 3698
Prosecution Insights