DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on XXXXXXXXXXXXXX has been entered.
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 .
Status of Claims
Claims X are canceled.
Claims X are new.
Responsive to the application filed 12/11/2025 (effective filing date 11/03/2022). Claims 1-20 are pending in this application and have been examined on the merits. This is a first action on the merits.
Information Disclosure Statement
The information disclosure statement(s) submitted: 12/11/2025, has/have been considered by the Examiner and made of record in the application file.
Preliminary Amendment
The present Office Action is based upon the original patent application filed on xxx as modified by the preliminary amendment filed on xxx.
Amendment
The present Office Action is based upon the original patent application filed on xxx as modified by the amendment filed on xxx.
Terminal Disclaimer
The terminal disclaimer filed on xxx disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Pat. No. xxxx has been reviewed and has been placed in the file.
Examiner acknowledges Applicant’s filed Terminal Disclaimer to prior art patent McCauley et al. US Pat. No. 5,930,775. A terminal disclaimer may be filed to overcome or obviate a nonstatutory double patenting rejection (37 CFR 1.321; MPEP 706.02; 1490).
Double Patenting - Withdrawn
The double patenting rejection is withdrawn per the filed terminal disclaimer noted above.
Examiner’s Amendment
Authorization for this examiner’s amendment was given in a communication with Craig C. Largent on 19 August 2013.
An examiner’s amendment to the record appears below. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
--- Claims 1-3 are Amended by Examiner’s Amendment as Follows ---
20. (Original) The method of claim 15, the processor further configured to provide a listing of rental properties if the buyer is not pre-qualified for the mortgage, the selected amount for the homeowner's insurance, or both.
20. (Currently Amended by Examiner’s Amendment) The system of claim 15, the processor further configured to provide a listing of rental properties if the buyer is not pre-qualified for the mortgage, the selected amount for the homeowner's insurance, or both.
Examiner’s Amendment
Authorization for this examiner’s amendment was given in a communication with Frank L. Johnson on 28 August 2017.
An examiner’s amendment to the record appears below. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
--- Claims 1-11 are Amended by Examiner’s Amendment as Follows ---
Claims 1-11. (Withdrawn).
Claims 1-11. (Canceled by Examiner’s Amendment).
Reasons For Allowance
Prior-Art Rejection withdrawn
Claims xxx are potentially allowable over the prior-art, but, are still subject to the 35 USC §101 and/or 35 USC §112 rejections herein. The closest prior art (See PTO-892, Notice of References Cited) does not teach the claimed:
Claims xxx are allowed. Independent claims X, Y, and Z all contain the same inventive scope. The closest prior art (See PTO-892, Notice of References Cited) does not teach the claimed:
The invention teaches… and the prior-art teaches…, however, the prior-art does not teach…
The closest prior-art (xxx) teach the features as disclosed in Non-final Rejection (xxxx), however, these cited references do not teach and the prior-art does not teach at least the following combination of features and/or elements:
determining, at a second time after associating the information corresponding to the first loyalty card with the logged location, that a second user computing device is located within a specified distance of the logged location using a second positioning system of the second user computing device; in response to determining that the second user computing device is located within the specified distance of the logged location of the first user computing device at the first time of detecting: retrieving information corresponding to a second loyalty card, the second loyalty card being associated with the merchant and the second user computing device; and displaying, by the second user computing device, data describing the second loyalty card.
Claim Rejections - 35 USC §101 - Withdrawn
Per Applicant’s amendments and arguments and considering new guidance in the MPEP, the rejections are withdrawn. Specifically, in Applicant’s Remarks (dated 03/14/2017, pgs. 8-11), Applicant traverses the 35 USC §101 rejections arguing that the amended claims recite new limitations that are not abstract, amount to significantly more, are directed to a practical application, etc… For example, Applicant argues….
In support of their arguments, Applicant cites to the following recent Fed. Cir. court cases (i.e., Alice Corp. v. CLS Bank Int’l, SRI Int’l, Inc. v. Cisco Systems, Inc., Ultramercial, Inc. v. Hulu, LLC, Berkheimer, Core Wireless, McRO, Enfish, Bascom, DDR, etc…).
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 a judicial exception (an abstract idea) without significantly more.
Step 1 - Statutory Category
Claims 1-8 are directed to a machine (a “computer system”); claims 9-15 are directed to a process; and claims 16-20 are directed to a manufacture (a “tangible, non-transitory computer-readable medium”). All claims therefore fall within one of the four statutory categories of 35 U.S.C. § 101 and Step 1 of the eligibility analysis is satisfied for every claim. The analysis proceeds to Step 2A.
Step 2A, Prong One - Independent Claim 1 (Representative)
Claim 1 recites, in relevant part, the following limitations, quoted verbatim:
“receive a transaction listing from a first entity, the transaction listing including (i) a digital asset that is associated with a virtual object in a virtual environment and (ii) a status of the digital asset indicating an active association with the first entity and corresponding with an alternative interaction option for a second entity”
This limitation, under its broadest reasonable interpretation, recites collecting information describing a commercial or contractual relationship between a first entity and an asset (an “active association,” e.g., an insurance policy or title interest) together with information about how a second entity may be treated as a result (an “alternative interaction option”). This is a fundamental economic practice and commercial interaction — tracking whether a business relationship or policy is currently in force — which falls within the “certain methods of organizing human activity” grouping identified in MPEP § 2106.04(a)(2). Receiving such a listing is also an act of observation that a human being is capable of performing mentally or with pen and paper.
“record, based upon the transaction listing, a transaction indicating the virtual object in a distributed ledger”
This limitation recites recordkeeping — maintaining a record of a transaction — a fundamental economic practice that has been performed by merchants and institutions using ledger books long before the advent of computers. See Alice, 573 U.S. at 219-20 (intermediated settlement, a method of organizing human activity long known in commerce, remains abstract when implemented generically on a computer).
“cause the status of the digital asset to be displayed when the virtual object is viewed in the virtual environment”
This limitation recites presenting collected information to a user. Collecting information, analyzing it, and displaying the results of the collection and analysis, without more, is an abstract idea. See Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (claims to gathering, analyzing, and displaying available information were directed to an abstract idea, because “merely presenting the results of abstract processes of collecting and analyzing information… is abstract as an ancillary part of such collection and analysis”).
“determine whether to approve or deny a transaction request based on the status of the digital asset indicated in the transaction”
This limitation recites an evaluation and decisional step: comparing a recorded status against an incoming request and reaching an approve/deny determination. This is both (i) a mental process — an observation, evaluation, and judgment that a human being is capable of performing, see In re Killian, No. 21-2113, slip op. at 9-11 (Fed. Cir. Aug. 23, 2022) (non-precedential) (claims to determining program eligibility by comparing recorded data were directed to a patent-ineligible mental process, because the steps “can be performed by a human, using observation, evaluation, judgment, and opinion”) [UNVERIFIED — confirm official reporter citation (believed to be 45 F.4th 1373) before filing]; and (ii) a fundamental economic practice — approving or denying a transaction is a quintessential commercial practice akin to the transaction-performance guaranty found abstract in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims to guaranteeing a party's performance of an online transaction were directed to “the abstract idea of creating a contractual relationship”).
Taken together, claim 1 recites a combination of (a) certain methods of organizing human activity — specifically, commercial interactions, including recording a transaction, tracking the status of a business association, and approving or denying requests based on that status — and (b) a mental process, namely the observation, evaluation, and judgment inherent in determining whether to approve or deny a request based on a recorded status. See MPEP §§ 2106.04(a)(2), 2106.04(a)(3). Claim 1 recites a judicial exception and the analysis proceeds to Prong Two.
Step 2A, Prong Two - Practical Application
The additional elements of claim 1 beyond the abstract idea are: “one or more processors,” “a non-transitory computer-readable medium,” a “distributed ledger,” and a “virtual environment.” Each is recited at a high level of generality and functions merely as a tool to implement the abstract idea. See MPEP § 2106.05(f). The Specification confirms the generic nature of these components: the processor(s) may be “one or more central processing units (CPUs)…or one or more microprocessors” (¶ 0062); the distributed ledger may be “a public ledger, a private ledger, a federated ledger, and/or any other suitable type of ledger,” and “[o]ne type of distributed ledger, a blockchain…is merely one example” (¶¶ 0011, 0040); and the virtual environment is described only generically as, “e.g., the Metaverse” (¶ 0007), without any claimed improvement to virtual- or augmented-reality rendering technology. The claim does not improve the functioning of a computer, a distributed ledger network, or a display device; it merely automates, using generic components, the abstract concept of recording a status and approving or denying a request based on that status. See In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607, 612-13 (Fed. Cir. 2016) (attaching classification data to digital images and storing the images on a server recited in purely functional, generic terms was not a technical improvement to digital photography). Limiting the abstract idea to a particular technological environment — recording transactions “in a distributed ledger” and displaying status “in the virtual environment” — does not integrate the exception into a practical application. See MPEP § 2106.05(h); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1327-28 (Fed. Cir. 2017) (indexing and storing insurance-related data according to organizational criteria was not saved from abstraction merely because it was applied within the insurance-policy field). Claim 1 does not integrate the judicial exception into a practical application, and the analysis proceeds to Step 2B.
Step 2B - Inventive Concept
Claim 1, considered both individually and as an ordered combination, does not include an inventive concept sufficient to transform the abstract idea into patent-eligible subject matter. The additional elements — generic processors, a non-transitory computer-readable medium, a distributed ledger, and a virtual environment — are described in the Specification as well-understood, routine, and conventional. See, e.g., ¶¶ 0062-0067 (processor(s) may include “one or more central processing units (CPUs)…graphics processing units (GPUs)…Field-Programmable Gate Arrays (FPGAs)…or one or more microprocessors,” and memory may be conventional RAM, ROM, or EEPROM); ¶ 0052 (the computing system “may be any suitable computing machine such as a tablet, smart phone, mobile device, laptop computer, desktop computer, server…”); ¶ 0040 (a blockchain “is merely one example” of a distributed ledger, and the underlying consensus mechanisms “may be utilized,” citing proof of work, proof of stake, and proof of authority as known, interchangeable alternatives). Receiving data, recording it to a distributed ledger, causing information to be displayed, and comparing a value to reach a determination are all functions that courts have recognized as well-understood, routine, and conventional computer functions when claimed at this level of generality. See Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347-48 (Fed. Cir. 2014) (collecting, recognizing, and storing data is a basic conceptual framework long used in banking and does not supply an inventive concept). No specific improvement to distributed-ledger, blockchain, cryptographic, or virtual/augmented-reality technology is recited that would amount to significantly more than the underlying abstract idea. Claim 1 is not eligible under 35 U.S.C. § 101.
Independent Claims 9 and 16
Claim 9 recites the method steps commensurate in scope with system claim 1 (“receiving…a transaction listing,” “recording…a transaction,” “causing…the status…to be displayed,” and “determining…whether to approve or deny a transaction request”), and claim 16 recites the medium-embodied counterpart of the same steps (omitting only the “for a second entity” clause). Neither claim recites any additional element beyond those addressed for claim 1. Claims 9 and 16 are rejected under 35 U.S.C. § 101 for the same reasons set forth above with respect to claim 1: both recite the same certain-method-of-organizing-human-activity/mental-process combination, implemented with the same generic processor, medium, distributed ledger, and virtual-environment elements that fail to integrate the exception into a practical application or supply an inventive concept.
Dependent Claims 2, 10, and 17
“responsive to recording the transaction in the distributed ledger, cause the digital asset to be disposed proximate to the virtual object within the virtual environment”
This limitation further narrows the abstract display step of the base claims by specifying the location of the displayed information relative to the virtual object. Positioning displayed data does not recite any technical improvement to rendering or positioning technology; the Specification discloses this positioning using only generic display and processing components (¶ 0089). This is insignificant extra-solution activity in the nature of data output, MPEP § 2106.05(g), and does not integrate the abstract idea into a practical application or supply an inventive concept. Claims 2, 10, and 17 are rejected under 35 U.S.C. § 101 for the same reasons as their base claims.
Dependent Claims 3, 11, and 18
“receive a subsequent transaction listing from the first entity…including an updated status…indicating an inactive association…generate a subsequent transaction including a description of the subsequent transaction listing; and record the subsequent transaction in the distributed ledger”
This limitation merely repeats the same abstract receive/generate/record cycle recited in the base claims for a subsequent point in time. Mere repetition of an abstract idea's steps does not add significantly more. Claims 3, 11, and 18 are rejected under 35 U.S.C. § 101 for the same reasons as their base claims.
Dependent Claims 4, 12, and 19
“receive the transaction request from the second entity, wherein the second entity owns the virtual object”
This limitation adds only a further commercial fact (ownership) describing the source of the already-abstract “transaction request.” It recites no additional element and does not change the eligibility analysis. Claims 4, 12, and 19 are rejected under 35 U.S.C. § 101 for the same reasons as their base claims.
Dependent Claims 5 and 13
“the digital asset is a non-fungible token (NFT) minted on the distributed ledger, the NFT including at least one of: (i) a digital image, (ii) a digital audio file, or (iii) an animated image”
This limitation narrows the abstract idea to a particular, well-known data format for the digital record (an NFT encoding an image, audio file, or animation). Selecting a known data type for a record is insignificant extra-solution activity and, as confirmed by the Specification's own description of NFTs as widely known at the time of filing (¶ 0089) and by the prior art discussed in the § 103 rejection below, was well-understood, routine, and conventional. Claims 5 and 13 are rejected under 35 U.S.C. § 101 for the same reasons as their base claims.
Dependent Claims 6, 14, and 20
“the virtual object corresponds to a real-world object that is owned by a second entity, and the status of the digital asset corresponds to a current status of the real-world object”
This limitation further narrows the abstract idea to tracking the ownership and status of a real-world asset via its virtual/digital counterpart — itself a certain method of organizing human activity (managing personal or commercial property records) — without reciting any additional technical element. Claims 6, 14, and 20 are rejected under 35 U.S.C. § 101 for the same reasons as their base claims.
Dependent Claims 7, 8, and 15
“the status of the digital asset…causes a second entity that owns the virtual object to obtain alternative interaction options in the virtual environment [claim 7] / in a real-world environment [claim 8] / in at least one of (i) the virtual environment or (ii) a real-world environment [claim 15] based upon the status of the digital asset”
These limitations further define the “alternative interaction option” already recited in the base claims (e.g., offering different commercial terms, such as a discount, depending on status) — a business practice — without adding any additional technical element beyond the generic display and processing components already addressed. Claims 7, 8, and 15 are rejected under 35 U.S.C. § 101 for the same reasons as their base claims.
Signal Per Se / Software Per Se
Claims 16-20 recite “a tangible, non-transitory computer-readable medium,” which expressly excludes transitory propagating signals and constitutes a statutory manufacture. No claim recites a transitory signal per se or claims software untethered from any statutory hardware. No separate signal-per-se or software-per-se rejection is warranted, and none is entered.
Suggestion for Overcoming the § 101 Rejection
The § 101 rejection could likely be overcome by amending the independent claims to recite a specific technical improvement to a computer, distributed-ledger network, or virtual/augmented-reality display technology — for example, a specific, non-conventional data structure, consensus, or cryptographic technique that improves the manner in which nodes validate or propagate ledger entries, or a specific rendering technique that improves how status information is anchored to, or overlaid upon, a virtual object as a user's viewpoint changes within the virtual environment — rather than reciting only the abstract result of recording, displaying, and approving/denying based on a status using generic, off-the-shelf components. A mere recitation of the field of use (distributed ledger; virtual environment) will not, by itself, overcome this rejection.
Claim Rejections - 35 USC §112(b) - Indefiniteness
The following is a quotation of 35 U.S.C. §112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1, 9, and 16 are rejected under 35 U.S.C. § 112(b) as indefinite for the following reason. Each of these claims recites a step of causing a status to be “indicated in the transaction” that is separately recorded, but does not itself recite that the recorded “transaction” includes or reflects that status:
“record, based upon the transaction listing, a transaction indicating the virtual object in a distributed ledger…determine whether to approve or deny a transaction request based on the status of the digital asset indicated in the transaction” (claim 1; substantially the same language appears in claims 9 and 16)
As claimed, the “transaction listing” received in the first step includes the status of the digital asset, but the “transaction” recorded in the distributed ledger in the second step is defined only as “indicating the virtual object” — the claim never expressly states that this recorded transaction itself indicates or carries the status. The final clause's reference to “the status of the digital asset…indicated in the transaction” therefore lacks clear antecedent basis and renders the metes and bounds of the claim unclear: it is not apparent from the claim language alone whether “the transaction” refers back to the recorded distributed-ledger transaction or to the previously-recited “transaction listing.” See MPEP § 2173.05(e). The Specification suggests the recorded transaction is intended to carry the status information (see, e.g., ¶¶ 0107-0109, FIG. 4, describing transaction 406 as including identification and status information), but the claim as presently drafted does not recite this. Notably, commonly-owned U.S. Patent No. 12,499,496 B2, issued from the parent of this continuation application and sharing the same specification, claims this same overall system but expressly recites an intervening step of “determine the status of the digital asset through the transaction recorded on the distributed ledger” (claims 1, 8, 13) before the approve/deny determination — confirming that Applicant has, elsewhere, claimed the necessary linkage explicitly and underscoring that its absence from the instant claims is an antecedent-basis defect rather than a matter of implicit claim scope. A suggested claim fix is to amend the recording step to read, e.g., “record, based upon the transaction listing, a transaction indicating the virtual object and the status of the digital asset in a distributed ledger,” or to add a “determine the status of the digital asset through the transaction recorded on the distributed ledger” step consistent with the parent patent's claims, either of which would supply the missing antecedent basis for the subsequent reference to “the status of the digital asset…indicated in the transaction.”
Claims 6, 7, 8, 14, and 15 are rejected under 35 U.S.C. § 112(b) as indefinite. Each of these claims depends, directly or through an intervening claim, from a base claim (claim 1 or claim 9) that already introduces “a second entity” (via the “alternative interaction option for a second entity” clause). Claims 6-8 and 14-15 nonetheless reintroduce the term using the indefinite article — e.g., claim 6: “wherein the virtual object corresponds to a real-world object that is owned by a second entity”; claim 7: “causes a second entity that owns the virtual object to obtain alternative interaction options…” — rather than referring back with the definite article (“the second entity”). It is unclear whether this “second entity” is the same second entity introduced in the base claim or a new, additional entity, rendering the scope of these claims unclear. See MPEP § 2173.05(e); Ex parte Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008) (precedential) (claim language is indefinite if a claim term lacks clear antecedent basis such that a skilled artisan cannot determine the metes and bounds of the claim). A suggested claim fix is to amend each occurrence to “the second entity.” By contrast, claim 20, which depends from claim 16 (a claim that never separately introduces “a second entity”), introduces the term for the first time and raises no antecedent-basis issue.
Claim 19 is rejected under 35 U.S.C. § 112(b) as indefinite for lack of antecedent basis. Claim 19 recites “receive the transaction request from second entity, wherein the second entity owns the virtual object,” but claim 19 depends from claim 16, and claim 16 — unlike claims 1 and 9 — does not recite “a second entity” anywhere in its body (claim 16 omits the “for a second entity” clause present in claims 1 and 9). Accordingly, “the second entity” in claim 19 has no antecedent basis in claim 16 or in any intervening claim. A suggested claim fix is to amend claim 16 to recite “…corresponding with an alternative interaction option for a second entity,” consistent with claims 1 and 9, so that claim 19's reference has proper antecedent basis; alternatively, claim 19 could be rewritten to introduce “a second entity” in the first instance.
Claim 12 recites “receiving…the transaction request from second entity, wherein the second entity owns the virtual object.” Because claim 12 depends from claim 9, which does recite “a second entity,” the missing definite article (“from second entity” rather than “from the second entity”) is treated as a minor informality rather than a substantive indefiniteness issue, since the referenced entity is otherwise reasonably clear from claim 9. Correction is nonetheless suggested for consistency with claim 4, which correctly recites “the transaction request from the second entity.”
No further § 112(b) issues have been identified. Claims 1-5, 9-13, and 16-18 (other than the antecedent-basis issue in claims 1, 9, and 16 addressed above) are otherwise definite.
Other § 112 Observations
Claim 1's recitation “a status of the digital asset indicating an active association with the first entity and corresponding with an alternative interaction option for a second entity” is grammatically capable of two readings — that the compound modifier (“indicating…and corresponding…”) applies to “a status,” or that “corresponding with an alternative interaction option” modifies “the transaction listing” as a separate, unenumerated third element. The Office has construed this language under its broadest reasonable interpretation as a compound modifier of “a status,” consistent with claims 9 and 16. Applicant may wish to insert a comma before “and corresponding” to remove any doubt (“…indicating an active association with the first entity and corresponding with an alternative interaction option for a second entity”).
Nonstatutory (Obviousness-Type) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of Nonstatutory (Obviousness-Type) Double Patenting as being unpatentable over claims 1-16 of commonly-owned U.S. Patent No. 12,499,496 B2 (“the '496 patent”), issued December 16, 2025 from parent Application No. 18/238,302, of which the instant application is a continuation sharing the same specification, inventive entity (Fields, LeFebre, Welcome, Amancha, and Gutierrez), and assignee.
A side-by-side comparison of the instant claims against the '496 patent's issued claims follows. In summary, claims 1-8 of the '496 patent (system claims) already claim, within a single independent claim (claim 1), substantially the entire combination of limitations that the instant application has redistributed across independent claim 1 and dependent claims 4, 7, 8, and 15 — including the express disjunctive “alternative interaction options in at least one of: (i) the virtual environment or (ii) a real-world environment,” the express “determine the status of the digital asset through the transaction recorded on the distributed ledger” step, and the express “receive a transaction request from the second entity that owns the virtual object” step. The instant application's reorganization of these same, commonly-disclosed limitations across a broader independent claim and additional dependent claims is not a patentable distinction.
Instant Claim — App. No. 19/416,112
Parent Claim — U.S. Patent No. 12,499,496 B2
Basis — Not Patentably Distinct
Claim 1 (system): “…receive a transaction listing…including (i) a digital asset…associated with a virtual object in a virtual environment and (ii) a status…indicating an active association with the first entity and corresponding with an alternative interaction option for a second entity…record…a transaction indicating the virtual object in a distributed ledger…cause the status…to be displayed when the virtual object is viewed…and determine whether to approve or deny a transaction request based on the status…indicated in the transaction.”
Claim 1 (system): “…receive a transaction listing…including (i) a digital asset…associated with a virtual object in a virtual environment and (ii) a status…indicating an active association with the first entity, wherein the status…causes a second entity that owns the virtual object to obtain alternative interaction options in at least one of: (i) the virtual environment or (ii) a real-world environment…generate a transaction…including an indication of the virtual object, record the transaction in a distributed ledger, responsive to recording…cause the status…to be displayed when…viewed…receive a transaction request from the second entity that owns the virtual object, determine the status…through the transaction recorded…and determine whether to approve or deny the transaction request based upon the status.”
Every instant claim 1 limitation appears in parent claim 1, which additionally and more explicitly recites the virtual/real-world disjunctive, the generate step, the status-determination step, and the second-entity request step. The instant claim's omissions are claim-drafting compression of the same disclosed invention (see also claim 4, below), not a patentable distinction.
Claim 2: “responsive to recording the transaction…cause the digital asset to be disposed proximate to the virtual object within the virtual environment.”
Claim 2: “responsive to recording the transaction…cause the digital asset to be disposed proximate to the virtual object within the virtual environment.”
Verbatim match. Not patentably distinct.
Claim 3: “receive a subsequent transaction listing…including an updated status…indicating an inactive association…generate a subsequent transaction including a description…and record the subsequent transaction…”
Claim 3: “receive a subsequent transaction listing…including an updated status…indicating an inactive association…generate a subsequent transaction including a description…and record the subsequent transaction…”
Verbatim match. Not patentably distinct.
Claim 4: “receive the transaction request from the second entity, wherein the second entity owns the virtual object.”
Claim 1: “…receive a transaction request from the second entity that owns the virtual object…” (recited in the independent claim itself, not a dependent claim).
Same limitation; the '496 patent claims it as part of independent claim 1, while the instant application claims the identical substance as dependent claim 4. Relocating a limitation from an independent to a dependent claim is not a patentable distinction.
Claim 5: “the digital asset is a non-fungible token (NFT)…including at least one of: (i) a digital image, (ii) a digital audio file, or (iii) an animated image.”
Claim 4: “the digital asset is a non-fungible token (NFT)…including at least one of: (i) a digital image, (ii) a digital audio file, or (iii) an animated image.”
Verbatim match. Not patentably distinct.
Claim 6: “the virtual object corresponds to a real-world object that is owned by a second entity, and the status…corresponds to a current status of the real-world object.”
Claim 5: “the virtual object corresponds to a real-world object that is owned by a second entity, and the status…corresponds to a current status of the real-world object.”
Verbatim match. Not patentably distinct.
Claim 7: “the status…causes a second entity that owns the virtual object to obtain alternative interaction options in the virtual environment based upon the status…”
Claim 6: “the status…causes a second entity that owns the virtual object to obtain alternative interaction options in the virtual environment based upon the status…” (also already recited in the body of parent claim 1 itself, in disjunctive form).
Verbatim match to parent claim 6, and the same subject matter also already appears in parent claim 1's disjunctive clause. Not patentably distinct.
Claim 8: “the status…causes a second entity that owns the virtual object to obtain alternative interaction options in a real-world environment based upon the status…”
Claim 7: “the status…causes a second entity that owns the virtual object to obtain alternative interaction options in a real-world environment based upon the status…” (also already recited in the body of parent claim 1 itself, in disjunctive form).
Verbatim match to parent claim 7, and the same subject matter also already appears in parent claim 1's disjunctive clause. Not patentably distinct.
Claim 9 (method): method counterpart of claim 1.
Claim 8 (method): method counterpart of claim 1, including the same generate/determine-status/second-entity-request limitations discussed for claim 1 above.
Same analysis as instant claim 1 vs. parent claim 1. Not patentably distinct.
Claim 10: method counterpart of claim 2.
Claim 9: method counterpart of claim 2.
Verbatim match. Not patentably distinct.
Claim 11: method counterpart of claim 3.
Claim 10: method counterpart of claim 3.
Verbatim match. Not patentably distinct.
Claim 12: “receiving…the transaction request from second entity, wherein the second entity owns the virtual object.”
Claim 8: “…receiving, at the one or more processors, a transaction request from the second entity that owns the virtual object…” (recited in the independent method claim itself).
Same limitation; relocated from independent claim 8 to dependent claim 12. Not a patentable distinction.
Claim 13: method counterpart of claim 5 (NFT format).
Claim 11: method counterpart of claim 4 (NFT format).
Verbatim match. Not patentably distinct.
Claim 14: method counterpart of claim 6 (real-world correspondence).
Claim 12: method counterpart of claim 5 (real-world correspondence).
Verbatim match. Not patentably distinct.
Claim 15: “the status…causes a second entity…to obtain alternative interaction options in at least one of: (i) the virtual environment or (ii) a real-world environment…”
Claim 8: same disjunctive “alternative interaction options in at least one of: (i) the virtual environment or (ii) a real-world environment” language, recited in the body of the independent method claim itself.
Same substance; the '496 patent recites this disjunctive scope directly in its independent claim, while the instant application recites it as a separate dependent claim. Not a patentable distinction.
Claim 16 (medium): independent medium claim; omits the “for a second entity” clause found in claims 1 and 9.
Claim 13 (medium): independent medium claim including the disjunctive virtual/real-world clause, the generate step, the status-determination step, and the second-entity request step.
Same analysis as instant claim 1 vs. parent claim 1; claim 16 is, if anything, broader than parent claim 13 in the respects discussed, which does not create a patentable distinction. Not patentably distinct.
Claim 17: method[medium] counterpart of claim 2 (disposed proximate).
Claim 14: medium counterpart of claim 2.
Verbatim match. Not patentably distinct.
Claim 18: medium counterpart of claim 3 (subsequent transaction).
Claim 15: medium counterpart of claim 3.
Verbatim match. Not patentably distinct.
Claim 19: “receive the transaction request from second entity, wherein the second entity owns the virtual object.” (See also the separate § 112(b) rejection of claim 19 above.)
Claim 13: “…receive a transaction request from the second entity that owns the virtual object…” (recited in the independent medium claim itself).
Same limitation; relocated from independent claim 13 to dependent claim 19. Not a patentable distinction (independent of the antecedent-basis problem this relocation created, addressed under § 112(b)).
Claim 20: medium counterpart of claim 6 (real-world correspondence).
Claim 16: medium counterpart of claim 5.
Verbatim match. Not patentably distinct.
For at least the reasons shown in the table above, claims 1-20 of the instant application are not patentably distinct from claims 1-16 of the '496 patent. This rejection may be overcome by filing a terminal disclaimer in accordance with 37 CFR 1.321(c), or by amending the instant claims to be patentably distinct from the '496 patent's claims.
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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over: Slavin, U.S. Pub. No. 2023/0316439 A1 (Slavin); in view of Collet Romea, U.S. Patent No. 11,132,841 B2 (Collet Romea); in further view of Ayyagari, U.S. Pub. No. 2023/0385791 A1 (Ayyagari).
Prior Art of Record
Slavin, U.S. Pub. No. 2023/0316439 A1, JPMorgan Chase Bank, N.A., filed March 30, 2022 and published October 5, 2023 — before the earliest effective filing date (November 3, 2022) of the instant claims, and therefore prior art under 35 U.S.C. § 102(a)(2). This reference is applied as the Primary reference because it discloses a validation-engine architecture that receives a request associated with a transaction, accesses a blockchain/NFT-based digital record for an asset, determines a status from that record, approves or denies the pending transaction based on the status, and updates the blockchain record to reflect the new status — the same overall data-flow architecture recited in the instant independent claims.
Collet Romea, U.S. Patent No. 11,132,841 B2, Facebook Technologies, LLC, filed November 30, 2018 and issued September 28, 2021 — well before the priority date of the instant claims, and therefore prior art under 35 U.S.C. § 102(a)(1). This reference is applied as a Secondary reference because it discloses presenting a digital asset at a position within an artificial (virtual/augmented-reality) environment, calculated relative to a client device's real-time position and an anchor point, where the anchor point has one or more “virtual objects” (ARObjects) “attached” to it — teaching the association and display of a digital asset relative to a virtual object as the environment is viewed, which Slavin does not expressly teach.
Ayyagari, U.S. Pub. No. 2023/0385791 A1, Google LLC, filed December 8, 2022, claiming priority to a provisional application filed May 24, 2022, and published November 30, 2023 — before the priority date of the instant claims, and therefore prior art under 35 U.S.C. § 102(a)(2). This reference is applied as a Secondary reference because it discloses generating a selectable purchase link tied to an NFT-represented digital asset and providing that link to, and receiving its selection from, a second/other user — teaching the “alternative interaction option” for a second entity tied to a digital asset, which Slavin does not expressly teach.
19/416,112 – Claim 1. Slavin teaches A computer system for marking virtual objects to improve security by recording transactions indicating the virtual objects in a distributed ledger (Slavin ¶¶0005-0007), the computer system comprising: one or more processors; and a non-transitory computer-readable medium coupled to the one or more processors and storing instructions thereon (Slavin ¶0048; ¶0057), that when executed by the one or more processors, causes the one or more processors to (Slavin discloses “a validation engine comprising a computer processor coupled to the electronic input…configured to perform the steps of” (claim 1), and that “architecture within system 300 may be implemented in computer executable software (e.g., on a tangible, non-transitory-computer-readable medium) located within one or more network elements” (¶0048); see also ¶0057 (“the servers may include software or computer programs stored in the memory (e.g., non-transitory computer readable medium containing program code instructions executed by the processor) for executing the methods described herein”).): receive a transaction listing from a first entity, the transaction listing including (i) a digital asset associated with a virtual object in a virtual environment (Slavin: “receiving, via the input interface, a title verification request associated with a transaction for a specific property…accessing, via a blockchain interface, a digital record for the specific property in a blockchain via non-fungible token (NFT)” (claim 1) (digital asset = NFT/digital record; the request functions as the transaction listing). Slavin's “specific property” is a real-world asset rather than an expressly-claimed “virtual object in a virtual environment.” Collet Romea teaches this gap: an “artificial environment” includes “any computer-generated environment…a two-dimensional environment, a three-dimensional environment, a VR environment, an AR environment…one or more digital assets included in the artificial environment may appear to a user…to exist within the real-world environment” (¶0140); “Data structure 1508 has a name of ARObject and may describe and/or include information associated with a virtual object” (¶0192); and “Data member attached_objects includes a vector of ARObject data objects and may indicate one or more virtual objects that may be “attached to” the anchor point identified by ARTrackableID id.” (¶0193)). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to apply Slavin's NFT/blockchain digital-record technique to an asset represented as a virtual object (ARObject) attached to an anchor point within an artificial environment as taught by Collet Romea, because this is the combination of a known technique (status-tracked digital-record NFTs) with a known type of environment (an artificial/virtual-reality representation of an object) ready for improvement, yielding the predictable result of associating a status-tracked digital record with a virtual representation of the asset. KSR, 550 U.S. at 416-17.) and (ii) a status of the digital asset indicating an active association with the first entity and corresponding with an alternative interaction option for a second entity (Slavin: “based on the digital record, determining title status and ownership record for the specific property…responsive to the title status indicating a clear title, approving issuance of the transaction” (claim 1); “the indication of risk is based on whether a lender of the transaction is the same or affiliated with a current lender financing an existing mortgage associated with the specific property” (claim 7). Slavin does not expressly tie this status to a selectable “alternative interaction option” for a second party. Ayyagari teaches this gap: “a purchase link for the digital asset can be generated based at least in part on the digital asset data…configured to be embedded in a webpage to enable a purchase event to occur for the digital asset within the webpage” (¶0023); a purchase link and digital asset obtained “from a first user” with a “selection of the interactive purchase element…received from the second user” (¶0031; claim 6). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to incorporate Ayyagari's selectable purchase-link mechanism, made available to a second user in association with an NFT-represented digital asset, into Slavin's status-tracked digital record, so that the alternative interaction option is presented to a second entity in connection with the recorded status — combining a known status-tracking record with a known technique for presenting a selectable alternative transaction option tied to that same class of digital asset (NFT/blockchain-recorded assets), yielding the predictable result of giving a second, transacting party an available alternative means of interacting with the asset once its status is known. KSR, 550 U.S. at 417.), record, based upon the transaction listing, a transaction indicating the virtual object in a distributed ledger (Slavin: “updating, via the blockchain interface, the digital record in the blockchain wherein the digital record reflects the title status and ownership record” (claim 1); “At step 220, the blockchain may be updated with a record identifying the current lien on the property. This information may then be made available to the public” (¶0037).), cause the status of the digital asset to be displayed when the virtual object is viewed in the virtual environment (Slavin: “At step 216, the results of the verification process may be identified. The results may include status information…This information may be provided via an interactive user interface where the requesting entity…may access” (¶ 0035). Collet Romea teaches display specifically tied to the virtual object as viewed: “presenting module 114 may present digital asset 224 at presentation position 226…relative to client device position 220 and anchor point position 216” (¶0139) and, when an artificial environment is “overlaid and/or composited with an image of the real-world environment…one or more digital assets…may appear to a user, when the user views the composite image, to exist within the real-world environment” (¶ 0140). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to display Slavin's status information at the position of the virtual object using Collet Romea's anchor-point display technique, because doing so is the application of a known display/positioning technique to known status-tracking content, yielding the predictable result that a user viewing the virtual object also views its current status. KSR, 550 U.S. at 416.), and determine whether to approve or deny a transaction request based upon the status of the digital asset indicated in the transaction (Slavin: “responsive to the title status indicating a clear title, approving issuance of the transaction for the specific property” (claim 1) (necessarily implying denial where the status does not indicate a clear title).).
19/416,112 – Claim 9. Slavin further teaches A computer-implemented method for marking virtual objects to improve security by recording transactions indicating the virtual objects in a distributed ledger (Slavin ¶¶0005-0007; 0048; 0057), the method comprising: receiving, at one or more processors, a transaction listing from a first entity, the transaction listing including (i) a digital asset associated with a virtual object in a virtual environment (Slavin: “receiving, via the input interface, a title verification request associated with a transaction for a specific property…accessing, via a blockchain interface, a digital record for the specific property in a blockchain via non-fungible token (NFT)” (claim 1) (digital asset = NFT/digital record; the request functions as the transaction listing). Slavin's “specific property” is a real-world asset rather than an expressly-claimed “virtual object in a virtual environment.” Collet Romea teaches this gap: an “artificial environment” includes “any computer-generated environment…a two-dimensional environment, a three-dimensional environment, a VR environment, an AR environment…one or more digital assets included in the artificial environment may appear to a user…to exist within the real-world environment” (¶0140); “Data structure 1508 has a name of ARObject and may describe and/or include information associated with a virtual object” (¶0192); and “Data member attached_objects includes a vector of ARObject data objects and may indicate one or more virtual objects that may be “attached to” the anchor point identified by ARTrackableID id.” (¶0193)). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to apply Slavin's NFT/blockchain digital-record technique to an asset represented as a virtual object (ARObject) attached to an anchor point within an artificial environment as taught by Collet Romea, because this is the combination of a known technique (status-tracked digital-record NFTs) with a known type of environment (an artificial/virtual-reality representation of an object) ready for improvement, yielding the predictable result of associating a status-tracked digital record with a virtual representation of the asset. KSR, 550 U.S. at 416-17.) and (ii) a status of the digital asset indicating an active association with the first entity and corresponding with an alternative interaction option for a second entity (Slavin: “based on the digital record, determining title status and ownership record for the specific property…responsive to the title status indicating a clear title, approving issuance of the transaction” (claim 1); “the indication of risk is based on whether a lender of the transaction is the same or affiliated with a current lender financing an existing mortgage associated with the specific property” (claim 7). Slavin does not expressly tie this status to a selectable “alternative interaction option” for a second party. Ayyagari teaches this gap: “a purchase link for the digital asset can be generated based at least in part on the digital asset data…configured to be embedded in a webpage to enable a purchase event to occur for the digital asset within the webpage” (¶0023); a purchase link and digital asset obtained “from a first user” with a “selection of the interactive purchase element…received from the second user” (¶0031; claim 6). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to incorporate Ayyagari's selectable purchase-link mechanism, made available to a second user in association with an NFT-represented digital asset, into Slavin's status-tracked digital record, so that the alternative interaction option is presented to a second entity in connection with the recorded status — combining a known status-tracking record with a known technique for presenting a selectable alternative transaction option tied to that same class of digital asset (NFT/blockchain-recorded assets), yielding the predictable result of giving a second, transacting party an available alternative means of interacting with the asset once its status is known. KSR, 550 U.S. at 417.); recording, by the one or more processors and based upon the transaction listing, a transaction indicating the virtual object in a distributed ledger (Slavin: “updating, via the blockchain interface, the digital record in the blockchain wherein the digital record reflects the title status and ownership record” (claim 1); “At step 220, the blockchain may be updated with a record identifying the current lien on the property. This information may then be made available to the public” (¶0037).); causing, by the one or more processors, the status of the digital asset to be displayed when the virtual object is viewed in the virtual environment (Slavin: “At step 216, the results of the verification process may be identified. The results may include status information…This information may be provided via an interactive user interface where the requesting entity…may access” (¶0035). Collet Romea teaches display specifically tied to the virtual object as viewed: “presenting module 114 may present digital asset 224 at presentation position 226…relative to client device position 220 and anchor point position 216” (¶0139) and, when an artificial environment is “overlaid and/or composited with an image of the real-world environment…one or more digital assets…may appear to a user, when the user views the composite image, to exist within the real-world environment” (¶0140). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to display Slavin's status information at the position of the virtual object using Collet Romea's anchor-point display technique, because doing so is the application of a known display/positioning technique to known status-tracking content, yielding the predictable result that a user viewing the virtual object also views its current status. KSR, 550 U.S. at 416.); and determining, by the one or more processors, whether to approve or deny a transaction request based upon the status of the digital asset indicated in the transaction (Slavin: “responsive to the title status indicating a clear title, approving issuance of the transaction for the specific property” (claim 1) (necessarily implying denial where the status does not indicate a clear title).).
The remaining features/limitations of Claim 9, have similar features/limitations as of Claim 1, therefore those features/limitations and the claims are REJECTED under the same rationale as Claim 1.
19/416,112 – Claim 16. Slavin further teaches A tangible, non-transitory computer-readable medium storing instructions for marking virtual objects to improve security by recording transactions indicating the virtual objects in a distributed ledger that (Slavin ¶¶0005-0007; 0048; 0057), when executed by one or more processors of a computing device, cause the computing device to (Slavin discloses “a validation engine comprising a computer processor coupled to the electronic input…configured to perform the steps of” (claim 1), and that “architecture within system 300 may be implemented in computer executable software (e.g., on a tangible, non-transitory-computer-readable medium) located within one or more network elements” (¶0048); see also ¶ 0057 (“the servers may include software or computer programs stored in the memory (e.g., non-transitory computer readable medium containing program code instructions executed by the processor) for executing the methods described herein”).): receive a transaction listing from a first entity, the transaction listing including (i) a digital asset associated with a virtual object in a virtual environment (Slavin: “receiving, via the input interface, a title verification request associated with a transaction for a specific property…accessing, via a blockchain interface, a digital record for the specific property in a blockchain via non-fungible token (NFT)” (claim 1) (digital asset = NFT/digital record; the request functions as the transaction listing). Slavin's “specific property” is a real-world asset rather than an expressly-claimed “virtual object in a virtual environment.” Collet Romea teaches this gap: an “artificial environment” includes “any computer-generated environment…a two-dimensional environment, a three-dimensional environment, a VR environment, an AR environment…one or more digital assets included in the artificial environment may appear to a user…to exist within the real-world environment” (¶0140); “Data structure 1508 has a name of ARObject and may describe and/or include information associated with a virtual object” (¶0192); and “Data member attached_objects includes a vector of ARObject data objects and may indicate one or more virtual objects that may be “attached to” the anchor point identified by ARTrackableID id.” (¶0193)). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to apply Slavin's NFT/blockchain digital-record technique to an asset represented as a virtual object (ARObject) attached to an anchor point within an artificial environment as taught by Collet Romea, because this is the combination of a known technique (status-tracked digital-record NFTs) with a known type of environment (an artificial/virtual-reality representation of an object) ready for improvement, yielding the predictable result of associating a status-tracked digital record with a virtual representation of the asset. KSR, 550 U.S. at 416-17.) and (ii) a status of the digital asset indicating an active association with the first entity and corresponding with an alternative interaction option (Slavin: “based on the digital record, determining title status and ownership record for the specific property…responsive to the title status indicating a clear title, approving issuance of the transaction” (claim 1); “the indication of risk is based on whether a lender of the transaction is the same or affiliated with a current lender financing an existing mortgage associated with the specific property” (claim 7). Slavin does not expressly tie this status to a selectable “alternative interaction option” for a second party. Ayyagari teaches this gap: “a purchase link for the digital asset can be generated based at least in part on the digital asset data…configured to be embedded in a webpage to enable a purchase event to occur for the digital asset within the webpage” (¶0023); a purchase link and digital asset obtained “from a first user” with a “selection of the interactive purchase element…received from the second user” (¶0031; claim 6). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to incorporate Ayyagari's selectable purchase-link mechanism, made available to a second user in association with an NFT-represented digital asset, into Slavin's status-tracked digital record, so that the alternative interaction option is presented to a second entity in connection with the recorded status — combining a known status-tracking record with a known technique for presenting a selectable alternative transaction option tied to that same class of digital asset (NFT/blockchain-recorded assets), yielding the predictable result of giving a second, transacting party an available alternative means of interacting with the asset once its status is known. KSR, 550 U.S. at 417.); record, based upon the transaction listing, a transaction indicating the virtual object in a distributed ledger (Slavin: “updating, via the blockchain interface, the digital record in the blockchain wherein the digital record reflects the title status and ownership record” (claim 1); “At step 220, the blockchain may be updated with a record identifying the current lien on the property. This information may then be made available to the public” (¶0037).); cause the status of the digital asset to be displayed when the virtual object is viewed in the virtual environment (Slavin: “At step 216, the results of the verification process may be identified. The results may include status information…This information may be provided via an interactive user interface where the requesting entity…may access” (¶0035). Collet Romea teaches display specifically tied to the virtual object as viewed: “presenting module 114 may present digital asset 224 at presentation position 226…relative to client device position 220 and anchor point position 216” (¶0139) and, when an artificial environment is “overlaid and/or composited with an image of the real-world environment…one or more digital assets…may appear to a user, when the user views the composite image, to exist within the real-world environment” (¶0140). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to display Slavin's status information at the position of the virtual object using Collet Romea's anchor-point display technique, because doing so is the application of a known display/positioning technique to known status-tracking content, yielding the predictable result that a user viewing the virtual object also views its current status. KSR, 550 U.S. at 416.); and determine whether to approve or deny a transaction request based upon the status of the digital asset indicated in the transaction (Slavin: “responsive to the title status indicating a clear title, approving issuance of the transaction for the specific property” (claim 1) (necessarily implying denial where the status does not indicate a clear title).).
The remaining features/limitations of Claim 16, have similar features/limitations as of Claim 1, therefore those features/limitations and the claims are REJECTED under the same rationale as Claim 1.
19/416,112 – Claim 2. Slavin further teaches The computer system of claim 1, wherein the instructions, when executed, further cause the one or more processors to (Slavin ¶¶0005-0007; 0048; 0057): responsive to recording the transaction in the distributed ledger, cause the digital asset to be disposed proximate to the virtual object within the virtual environment (“responsive to recording the transaction…cause the digital asset to be disposed proximate to the virtual object”: taught by Collet Romea's anchor-point presentation technique relied upon above, which positions the digital asset relative to “anchor point position 216” (i.e., proximate to the corresponding virtual object) (¶¶0139; 0144-0146). The same combination and rationale applied to claim 1 renders claim 2 obvious. Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to display Slavin's status information at the position of the virtual object using Collet Romea's anchor-point display technique, because doing so is the application of a known display/positioning technique to known status-tracking content, yielding the predictable result that a user viewing the virtual object also views its current status. KSR, 550 U.S. at 416.).
19/416,112 – Claim 10. The computer-implemented method of claim 9, further comprising: responsive to recording the transaction in the distributed ledger, causing, by the one or more processors, the digital asset to be disposed proximate to the virtual object within the virtual environment.
19/416,112 – Claim 17. The tangible, non-transitory computer-readable medium of claim 16, wherein the instructions, when executed, further cause the computing device to: responsive to recording the transaction in the distributed ledger, cause the digital asset to be disposed proximate to the virtual object within the virtual environment.
Claims 10 and 17, have similar limitations as of Claim 2, therefore they are REJECTED under the same rationale as Claim 2.
19/416,112 – Claim 3. Slavin further teaches The computer system of claim 1, wherein the instructions, when executed, further cause the one or more processors to (Slavin ¶¶0005-0007; 0048; 0057): receive a subsequent transaction listing from the first entity, the subsequent transaction listing including an updated status of the digital asset indicating an inactive association with the first entity; generate a subsequent transaction including a description of the subsequent transaction listing; and record the subsequent transaction in the distributed ledger ((receiving a subsequent transaction listing indicating an inactive association; generating and recording a subsequent transaction): taught by Slavin's disclosure that “the blockchain may be updated with a record identifying the current lien on the property” (¶0037) and that title status can change from clear to encumbered (¶¶0024, 0034-0035); applying Slavin's own update mechanism a second time, for a changed (inactive-type) status, is the obvious, predictable repetition of an already-taught step. KSR, 550 U.S. at 417.).
19/416,112 – Claim 11. The computer-implemented method of claim 9, further comprising: receiving, at the one or more processors, a subsequent transaction listing from the first entity, the subsequent transaction listing including an updated status of the digital asset indicating an inactive association with the first entity; generating, by the one or more processors, a subsequent transaction including a description of the subsequent transaction listing; and recording, by the one or more processors, the subsequent transaction in the distributed ledger.
19/416,112 – Claim 18. The tangible, non-transitory computer-readable medium of claim 16, wherein the instructions, when executed, further cause the computing device to: receive a subsequent transaction listing from the first entity, the subsequent transaction listing including an updated status of the digital asset indicating an inactive association with the first entity; generate a subsequent transaction including a description of the subsequent transaction listing; and record the subsequent transaction in the distributed ledger.
Claims 11 and 18, have similar limitations as of Claim 3, therefore they are REJECTED under the same rationale as Claim 3.
19/416,112 – Claim 4. Slavin further teaches The computer system of claim 1, wherein the instructions, when executed, further cause the one or more processors to (Slavin ¶¶0005-0007; 0048; 0057): receive the transaction request from the second entity, wherein the second entity owns the virtual object ((“receive the transaction request from the second entity, wherein the second entity owns the virtual object”): taught by Slavin, whose title-verification request is described as useful for “refinancing when the same financial institution is involved” (Abstract), and whose “indication of risk is based on whether a lender of the transaction is the same or affiliated with a current lender financing an existing mortgage associated with the specific property” (claim 7) — i.e., a request submitted by, or on behalf of, the same entity that owns/is associated with the property seeking to verify or act upon its own clear title. This directly reads on a request from the owning second entity.).
19/416,112 – Claim 12. The computer-implemented method of claim 9, further comprising: receiving, at the one or more processors, the transaction request from second entity, wherein the second entity owns the virtual object.
19/416,112 – Claim 19. The tangible, non-transitory computer-readable medium of claim 16, wherein the instructions, when executed, further cause the computing device to: receive the transaction request from second entity, wherein the second entity owns the virtual object.
Claims 12 and 19, have similar limitations as of Claim 4, therefore they are REJECTED under the same rationale as Claim 4.
19/416,112 – Claim 5. Slavin further teaches The computer system of claim 1 (Slavin ¶¶0005-0007; 0048; 0057), wherein the digital asset is a non-fungible token (NFT) minted on the distributed ledger, the NFT including at least one of: (i) a digital image, (ii) a digital audio file, or (iii) an animated image ((NFT including a digital image, audio file, or animated image): Slavin teaches an NFT-based digital record (claim 1; ¶¶0015, 0022-0023). Ayyagari confirms that NFT-associated digital assets in this field commonly include “an image, a video, audio, text data, latent encoding data, a domain, augmented-reality assets, and/or virtual-reality assets” (¶ 0024), and the instant Specification itself concedes that NFTs representing “an image, an audio file, [or] an animated image” were known content types (¶ 0089 of the parent specification, common to the instant application). Selecting among these known, interchangeable NFT content formats is an obvious matter of design choice. KSR, 550 U.S. at 421.).
19/416,112 – Claim 13. The computer-implemented method of claim 9, wherein the digital asset is a non-fungible token (NFT) minted on the distributed ledger, the NFT including at least one of: (i) a digital image, (ii) a digital audio file, or (iii) an animated image.
Claim 13, has similar limitations as of Claim 5, therefore it is REJECTED under the same rationale as Claim 5.
19/416,112 – Claim 6. Slavin further teaches The computer system of claim 1 (Slavin ¶¶0005-0007; 0048; 0057), wherein the virtual object corresponds to a real-world object that is owned by a second entity, and the status of the digital asset corresponds to a current status of the real-world object ((virtual object corresponds to a real-world object owned by a second entity, whose status corresponds to a current status of the digital asset): taught by Slavin, in which the “specific property” is a real-world object whose NFT/digital-record title status corresponds to the current real-world status (clear or encumbered) of that property (claim 1; ¶¶0016, 0021, 0025-0026, 0034-0035), in combination with Collet Romea's teaching of a corresponding virtual-object (ARObject) representation as applied to claim 1.).
19/416,112 – Claim 14. The computer-implemented method of claim 9, wherein the virtual object corresponds to a real-world object that is owned by a second entity, and the status of the digital asset corresponds to a current status of the real-world object.
19/416,112 – Claim 20. The tangible, non-transitory computer-readable medium of claim 16, wherein the virtual object corresponds to a real-world object that is owned by a second entity, and the status of the digital asset corresponds to a current status of the real-world object.
Claims 14 and 20, have similar limitations as of Claim 6, therefore they are REJECTED under the same rationale as Claim 6.
19/416,112 – Claim 7. Slavin further teaches The computer system of claim 1 (Slavin ¶¶0005-0007; 0048; 0057), wherein the status of the digital asset indicating an active association with the first entity causes a second entity that owns the virtual object to obtain alternative interaction options in the virtual environment based upon the status of the digital asset (Slavin: “based on the digital record, determining title status and ownership record for the specific property…responsive to the title status indicating a clear title, approving issuance of the transaction” (claim 1); “the indication of risk is based on whether a lender of the transaction is the same or affiliated with a current lender financing an existing mortgage associated with the specific property” (claim 7). Slavin does not expressly tie this status to a selectable “alternative interaction option” for a second party. Ayyagari teaches this gap: “a purchase link for the digital asset can be generated based at least in part on the digital asset data…configured to be embedded in a webpage to enable a purchase event to occur for the digital asset within the webpage” (¶0023); a purchase link and digital asset obtained “from a first user” with a “selection of the interactive purchase element…received from the second user” (¶0031; claim 6). (alternative interaction options in the virtual environment based on status): taught by Ayyagari's purchase-link mechanism, which is embedded in a webpage/search-results (online/virtual) environment and made available in association with the digital asset (¶¶0023, 0025-0026, 0033-0034), combined with Slavin and Collet Romea as applied to claim 1. Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to incorporate Ayyagari's selectable purchase-link mechanism, made available to a second user in association with an NFT-represented digital asset, into Slavin's status-tracked digital record, so that the alternative interaction option is presented to a second entity in connection with the recorded status — combining a known status-tracking record with a known technique for presenting a selectable alternative transaction option tied to that same class of digital asset (NFT/blockchain-recorded assets), yielding the predictable result of giving a second, transacting party an available alternative means of interacting with the asset once its status is known. KSR, 550 U.S. at 417.).
19/416,112 – Claim 8. Slavin further teaches The computer system of claim 1 (Slavin ¶¶0005-0007; 0048; 0057), wherein the status of the digital asset indicating an active association with the first entity causes a second entity that owns the virtual object to obtain alternative interaction options in a real-world environment based upon the status of the digital asset ((alternative interaction options in a real-world environment based on status): taught by Slavin's own disclosure that a clear-title status enables a streamlined, real-world refinancing transaction that avoids “a complex and burdensome title search” and “the need for title insurance” (Abstract; ¶¶0003, 0016, 0030-0031) — i.e., a real-world alternative transaction pathway made available based on the recorded status.).
19/416,112 – Claim 15. The computer-implemented method of claim 9, wherein the status of the digital asset indicating an active association with the first entity causes a second entity that owns the virtual object to obtain alternative interaction options in at least one of: (i) the virtual environment or (ii) a real-world environment based upon the status of the digital asset.
Claim 15, has similar limitations as that of Claims 7 and 8, therefore Claim 15 is REJECTED under the same rationale as that of Claims 7 and 8.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
PERTINENT PRIOR ART – Patent Literature
The Examiner additionally considered, but did not rely upon, the following references disclosed on the face of the instant publication and/or the parent patent's file history: Sakai, U.S. Pub. No. 2004/0267694 A1 (real-world object tracking via machine-readable medium); Doan, U.S. Pub. No. 2007/0211047 A1 and International Business Machines Corp., U.S. Pub. No. 2010/0269053 A1 (mapping real-world object presence/status into virtual-world awareness and virtual-world asset security monitoring); Bank of America Corp., U.S. Pub. No. 2018/0150982 A1 (digital data transfers via virtual reality display devices); Plotkin, U.S. Pub. No. 2023/0326145 A1 (manifesting a virtual object in a virtual environment); Zhong Li, U.S. Pub. No. 2024/0211552 A1 (asset management systems and methods); PayPal, Inc., U.S. Pub. No. 2023/0298008 A1 (omniverse digital-asset identification and recommendation). These references are considered cumulative to, or less complete than, the combination of Slavin, Collet Romea, and Ayyagari applied above, and are not separately relied upon in the rejections below.
PERTINENT PRIOR ART – Non-Patent Literature (NPL)
The NPL prior-art made of record and considered pertinent to applicant's disclosure.
A. Sangpetch and O. Sangpetch, "PEX: Privacy-Preserved, Multi-Tier Exchange Framework for Cross Platform Virtual Assets Trading," 2020 IEEE 17th Annual Consumer Communications & Networking Conference (CCNC), Las Vegas, NV, USA, 2020, pp. 1-4, doi: 10.1109/CCNC46108.2020.9045515.
A. Battah, M. Madine, I. Yaqoob, K. Salah, H. R. Hasan and R. Jayaraman, "Blockchain and NFTs for Trusted Ownership, Trading, and Access of AI Models," in IEEE Access, vol. 10, pp. 112230-112249, 2022, doi: 10.1109/ACCESS.2022.3215660.
THIS ACTION IS MADE FINAL
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 extension fee 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.
THIS ACTION IS MADE FINAL
Applicant’s amendment necessitated new grounds of rejection and FINAL Rejection.
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 extension fee 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 date of this final action.
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/MATTHEW T SITTNER/
Primary Examiner, Art Unit 3629b
