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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 2A Prong 1: The claims recite an abstract idea of creating and classifying a smart contract for a work piece, which is a certain method of organizing human activity (e.g. fundamental economic principles or practices including hedging, insurance, mitigating risk; commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations; managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions). A smart contract is a type of contract, and the claimed invention recites various factors that are used to generate the smart contract.
Representative of claim 11, includes the following limitations:
receiving, by at least a processor, a creative work datum identifying a creator and a user identifier, wherein receiving the creative work datum further comprises scanning a work piece using an optical device communicatively connected to the at least a processor;
determining, by the at least a processor, a creative work class a function of the creative work datum;
authenticating, by the at least a processor, the creator of the creative work datum;
generating, by the at least a processor, a creative work token as a function of the creative work datum;
assigning, by the at least a processor, an ownership interest in the creative work token as a function of authenticating the creator of the creative work datum; and
storing, by the at least a processor, the creative work token and the ownership interest in the creative work token in an immutable sequential listing
Step 2A Prong 2: The claim limitations recite the following additional elements (i.e. processor, memory, optical device) that are beyond the judicial exception. These additional elements are not indicative of integration into a practical application because they add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. See MPEP 2106.05(f), Alice (USSC 2014), Planet Bingo (DC Michigan 2013), Asghari-Kamrani v. USAA (FC 2018).
Step 2B: The claim limitations do not recite additional elements, or an ordered combination of additional elements, that are sufficient to amount to significantly more than the judicial exception. As discussed with respect to step 2A prong 2 above, the additional elements are extra solution activity that do not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is insignificant extra solution activity under step 2A should be re-evaluated at step 2B.
For instance, limitations “receiving, by at least a processor, a creative work datum identifying a creator and a user identifier, wherein receiving the creative work datum further comprises scanning a work piece using an optical device communicatively connected to the at least a processor” is determined to constitute well-understood, routine, and conventional activity in the field. See Content Extraction & Transmission v. Wells Fargo (“there is no “inventive concept” in using generic scanner and computer to perform well understood, routine, and conventional activities commonly used in industry … extracting, recognizing and storing data … recognition and storage is indisputably well-known, in that humans have always performed these functions”). See also Epic Tech v. Fitnow (DC Utah 2015, “recitation of a generic “computing device” and conventional “bar code[s]” is insufficient for transforming the abstract idea into something that is patent eligible”.
The limitation “storing, by the at least a processor, the creative work token and the ownership interest in the creative work token in an immutable sequential listing” is determined to constitute well-understood, routine, and conventional activity in the field. The “storing of data” is well-understood, routine, and conventional in the field. See Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 and MPEP 2106.05(d).
As discussed with respect to step 2A prong 2 above, the additional elements of “a processor” and “a memory” are mere instructions to apply an exception, and do not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is mere instructions to apply an exception under step 2A should be re-evaluated at step 2B. Thus, the additional elements of “a processor” and “a memory” are re-evaluated to determine whether they constitute significantly more. Examiner finds that the additional elements of “a processor” and “a memory” are simply the use of a computer in its ordinary capacity and does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 and MPEP 2106.05(f). For example, the additional elements only provide a result-oriented solution and lack details as to how the computer performs the modifications, which is equivalent to “apply it”. See Alice Corp. v. CLS Bank, 134 S. Ct. 2347, 2357 and MPEP 2106.05(f).
Therefore, when considering all the additional claim elements both individually and as an ordered combination, Examiner finds that the claim does not amount to significantly more than the exception.
Dependent claims recite storing data, generating an alert, monitoring of token, ownership transmission, authenticating, licensing interest, tracking performance and scoring, and verifying monetization token. However, these limitations fail to contain a significance over the abstract idea addressed above. These features do not improve the underlying technology. As noted in the Secured Mail court, the claims do not improve any functionality of the computing device or scanner and the claims are not directed to a new form of barcode or a new camera. Although different data encoded in the optical code are used for different purposes or meanings, they are merely intangible data used for processes directed to an abstract idea. See Electric Power Grp (we have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract idea).
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)(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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102a2 as being anticipated by Jakobsson (US 20230086644 )
Jakobsson discloses
1. An apparatus for scannable non-fungible token generation, the apparatus comprising: at least a processor; and a memory communicatively connected to the at least a processor, the memory containing instructions configuring the at least a processor to:
receive a creative work datum (digital collectibles; par. 132, 147) identifying a creator (content creator; par. 139-143) and a user identifier (user ID, par. 141, 155-157, 254), wherein receiving the creative work datum further comprises scanning a work piece using an optical device communicatively connected to the at least a processor (Fig. 16-17, par. 254, 261-264: scanning NFT reveals ownership and creator attribute);
determine a creative work class as a function of the creative work datum (par. 202, 208, 212);
authenticate the creator of the creative work datum (par. 140, 149-150);
generate a creative work token (NFT) as a function of the creative work datum (abstract, par. 147-149);
assign an ownership interest in the creative work token (NFT) as a function of authenticating the creator of the creative work datum (par. 141, 143, 150, 221, 258, 321; and
store the creative work token (NFT) and the ownership interest in the creative work token (NFT) in an immutable sequential listing (blockchain, par. 145).
2.1, wherein the ownership interest in the creative work token (NFT) is stored in a public immutable sequential listing (Figs. 3-5, par. 315, 334: public blockchain).
3.1, wherein the creative work datum is stored in a private database (par. 168-170, 253).
4.1, wherein the at least a processor is further configured to: monitor, use of the creative work token; and generate an alert based on the monitored use of the creative work token (par. 141-142, 183, 315, 321, 330, 330, 337-339).
5.4, wherein the monitored use of the creative work token (NFT) is stored in the immutable sequential listing (par. 197, 264, 285).
6.4, wherein the monitored use of the creative work token (NFT) is transmitted to the ownership interest in the creative work token (par. 170, 201, 211-212, 215, 254).
7.1, wherein the user identifier contains an entity account and the user identifier is authenticated by the entity account (par. 146, 278-279).
8.1, wherein the at least a processor is further configured to: receive a license interest from a third party (i.e. remote API 2203, shopping club, airlines) relating to the creative work token; authenticate the license interest with the ownership interest in the creative work token; assign a license interest in the creative work token (NFT) to the third party as a function of authenticating the license interest (par. 285, 291-293).
9.1, wherein the at least a processor is further configured to: track performance of the stored creative work token; and score the performance of the stored creative work token (NFT) using a machine learning process (par. 296-300).
10.1, wherein the at least a processor is further configured to verify a monetization token linked to the user identifier (par. 241)
11. A method for scannable non-fungible token generation, the method comprising:
receiving, by at least a processor, a creative work datum (digital collectibles; par. 132, 147) identifying a creator and a user identifier (par. 141, 155-157, 261-264), wherein receiving the creative work datum further comprises scanning a work piece using an optical device communicatively connected to the at least a processor (Fig. 16-17, par. 254, 261-264: scanning NFT reveals ownership and creator attribute);
determining, by the at least a processor, a creative work class a function of the creative work datum (par. 202, 208, 212);
authenticating, by the at least a processor, the creator of the creative work datum (par. 140, 149-150);
generating, by the at least a processor, a creative work token (NFT) as a function of the creative work datum (abstract, par. 147-149);
assigning, by the at least a processor, an ownership interest in the creative work token (NFT) as a function of authenticating the creator of the creative work datum (par. 141, 143, 150, 221, 258, 321; and
storing, by the at least a processor, the creative work token (NFT) and the ownership interest in the creative work token (NFT) in an immutable sequential listing (blockchain, par. 145).
Re claims 12-20, see discussion regarding claims above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THIEN MAI whose telephone number is (571)272-8283. The examiner can normally be reached M-F 8-5pm.
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, Steven Paik can be reached at 571-272-2404. 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.
/THIEN T MAI/ Primary Examiner, Art Unit 2876
