DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 an abstract idea without significantly more.
In the instant case, claim 1-20 are directed towards a method. Therefore, these claims fall within the four statutory categories of invention.
Claim 1 recites the following:
A method for passively engaging a consumer of content comprises the steps of.
providing a digital playback device;
providing a server, the server in communication with the digital playback device, the server being enabled to initiate a smart contract upon a request from the digital playback device to stream a content to the digital playback device;
providing a wallet communicating with the server, the wallet being subject to the smart contract;
a content is streamed to the digital playback device in response to a request for the content from the viewing device;
a status of the streaming of the content is determined; and
providing a mint function, the mint function enabled to generate NFTs as a function of the status of the stream of content, the mint function communicating with the server;
the mint function receiving a signal from the server, and in accordance with the smart contract, generating an NFT to be transferred to the wallet as a function of the signal indicating that one of a designated marker, or a completion of the content has occurred.
Regarding Step 2A Prong One, the claims recite the abstract idea of performing commercial and/or legal interactions. Specifically, the claims recite the limitations underlined above which recite the process of performing a commercial interaction in the form of maintaining a ledger/record of services rendered which is grouped within the Certain Methods of Organizing Human Activity grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP § 2106.04) because the claims involve the process of performing commercial interactions. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
Regarding Step 2A Prong Two, the recited abstract idea is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP § 2106.04(d)), the additional element(s) of the claim(s) such as a “digital playback device”, “server”, “smart contract”, “wallet”, “NFT”, and any other nonunderlined limitations merely use(s) a computer as a tool to perform an abstract idea. Specifically, the “digital playback device”, “server”, “smart contract”, “wallet”, “NFT”, and any other nonunderlined limitations perform(s) the steps or functions underlined above. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP § 2106.05), the additional element(s) of a “digital playback device”, “server”, “smart contract”, “wallet”, “NFT”, and any other nonunderlined limitations amounts to no more than using a computer or processor to automate and/or implement the abstract idea. As discussed above, taking the claim elements separately, the “digital playback device”, “server”, “smart contract”, “wallet”, “NFT”, and any other nonunderlined limitations perform(s) the steps or functions underlined above. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the abstract idea. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2-10 and 12-20 further describe the recited abstract idea. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Specifically:
Claims 2-4 and claims 14-17 merely describes the content nature being exchanged in the commercial interaction.
Claims 5-10 and 18 merely further describe how data is handled when performing the reciting commercial interaction.
Claims 12-13 merely describe how data is transmitted between systems when performing the recite commercial interaction.
Claims 19 and 20 recite additional elements which do not place the recited abstract idea into practical application nor amount to significantly more.
Therefore, as the dependent claims do not include additional elements that integrate the abstract idea into a practical application nor provide significantly more than the abstract idea, the dependent claims are also not patent eligible.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vijiyan (US 20200005284 A1) in view of Dalmia et al. (US 20230055064 A1).
Regarding Claims 1 and 11, discloses:
A method for passively engaging a consumer of content comprises the steps of.
providing a digital playback device (See Vijiyan: Para. [0076] – “In several embodiments, the media wallet application 110 is capable of collecting observations concerning user behavior including (but not limited to) media consumption behavior. When the media wallet application 110 is installed upon a user device that is also used to consume media from media services 112 and/or is present when the user is consuming media in other ways (e.g. viewing content on a home theater or at a movie theater), then the media wallet application 110 can capture observations related to media playback on the device using a variety of techniques including (but not limited to) data 114 received from media services, audio samples of ambient media, location based check-in with respect to media viewed at a movie theater, photographs of movie tickets, screen captures of media player user interfaces and/or media players during media playback, user submission of a media content rating, inspection of log files, information shared by Bluetooth and/or other wireless networks indicating the presence of other user devices on which media wallet applications are stored, and/or access of information from other applications and/or web services via APIs”);
providing a server, the server in communication with the digital playback device, the server being enabled to initiate a smart contract upon a request from the digital playback device to stream a content to the digital playback device (See Vijiyan: para. [0076] – “In several embodiments, the media wallet application 110 is capable of collecting observations concerning user behavior including (but not limited to) media consumption behavior. When the media wallet application 110 is installed upon a user device that is also used to consume media from media services 112 and/or is present when the user is consuming media in other ways (e.g. viewing content on a home theater or at a movie theater), then the media wallet application 110 can capture observations related to media playback on the device using a variety of techniques including (but not limited to) data 114 received from media services, audio samples of ambient media, location based check-in with respect to media viewed at a movie theater, photographs of movie tickets, screen captures of media player user interfaces and/or media players during media playback, user submission of a media content rating, inspection of log files, information shared by Bluetooth and/or other wireless networks indicating the presence of other user devices on which media wallet applications are stored, and/or access of information from other applications and/or web services via APIs”);
providing a wallet communicating with the server, the wallet being subject to the smart contract (See Vijiyan: Para. [0011] – “One embodiment of the invention is a media wallet including: a processor; a network interface; and memory containing a media wallet application. In addition, the processor is capable of being configured by the media wallet application to: securely store non-fungible tokens (NFTs), where each NFT is associated with a programmatically defined smart contract written to at least one immutable ledger; display a user interface through which user instructions concerning data access permissions are received; and cause media consumption data to be written to the at least one immutable ledger in conjunction with a set of data access permissions determined in accordance with user instructions concerning data access permission received via the user interface.”);
a content is streamed to the digital playback device in response to a request for the content from the viewing device (See Vijiyan: Para. [0069] – “In several embodiments, the media wallet applications can cause the media consumption data to be written to a permissioned analytics blockchain. In a number of embodiments, the media wallet application builds a comprehensive viewing history across different categories of content (e.g. songs, movies, commercials, games, VR, AR, etc) that can be augmented with additional metadata such as (but not limited to) user rating and/or other forms of engagement. In the event that a user is willing to grant permission to a content creator, the content creator's authenticated computer system can access media consumption data written to the permissioned analytics blockchain. In several embodiments, the content creator's authenticated computer system can directly access media consumption data based upon user permissions. In a number of embodiments, user permissions enable the content creator's authenticated computer system to receive aggregated analytic data from nodes that can access the permissioned analytics blockchain, where the aggregated data is generated based upon media consumption data written to the permissioned analytics blockchain by users that have granted access permissions to the content creator.”);
a status of the streaming of the content is determined (See Vijiyan: Para. [0090] – “As noted above, user devices 212 in accordance with many embodiments of the invention can collect observations regarding media consumption by a user. Media may be consumed directly from streaming services 214 and content downloading services 216 such as (but not limited to) the Netflix service operated by Netflix, Inc. of Los Gatos, Calif., the Spotify service operated by Spotify Technology S.A. of Stockholm, Sweden, and the iTunes service operated by Apple Inc. of Cupertino, Calif. When media is directly consumed by the user device, the user device can capture metadata regarding the streaming session and/or media playback.”); and
providing a mint function, the mint function enabled to generate NFTs as a function of the status of the stream of content (See Vijiyan: Para. [0074] – “Issuance of NFTs 106 via the content engagement platform 100 enables verification of the authenticity of NFTs independently of the content owner by confirming that transactions written to one or more of the immutable ledgers 102 are consistent with the smart contracts 108 underlying the NFTs. As is discussed further below, content owners 104 can provide the NFTs 106 to users to reward and/or incentivize engagement with particular pieces of content and/or other user behavior including (but not limited to) the sharing of user personal information (e.g. contact information or user ID information on particular services), demographic information, and/or media consumption data with the content creator and/or other entities. In addition, the smart contracts 108 underlying the NFTs can cause payments of residual royalties to content creators 104 when users engage in specific transactions involving NFTs (e.g. transfer of ownership of the NFT).”), the mint function communicating with the server (See Vijiyan: Para. [0119] – “Referring specifically to the content creator computer system shown in FIG. 12, the memory system 1206 of the content creator computer system includes an operating system 1208 and a content creator application 1210 that enables the content creator computer system to mint NFTs by writing smart contracts to an NFT blockchain via the network interface 1204. The content creator application includes a set of content creator wallet keys 1212 that can include a public key/private key pair that the content creator application can use to sign NFTs minted by the content creator application. The content creator application can also implement some or all of the various functions described above with reference to content creators as appropriate to the requirements of a given application in accordance with various embodiments of the invention.”);
However, Vijiyan fails to explicitly disclose:
the mint function receiving a signal from the server, and in accordance with the smart contract, generating an NFT to be transferred to the wallet as a function of the signal indicating that one of a designated marker, or a completion of the content has occurred.
However, in a similar field of endeavor, Dalmia discloses:
the mint function receiving a signal from the server, and in accordance with the smart contract, generating an NFT to be transferred to the wallet as a function of the signal indicating that one of a designated marker, or a completion of the content has occurred (See Dalmia: Para. [0139 - 0141] – “moment associated with an EGM may correspond to a particular win such as wining a jackpot or having a winning streak. Other moments may include losing streaks, certain levels achieved, certain rewards received and the like. The NFT moment data can include any data associated with a moment corresponding to the player and the EGM. For example, the NFT moment data may include a timestamp, player identifier which in some cases may be a public key, machine identifier, game identifier, media data, winning amount, reward information, and the like. Media data may include audio, image, and/or video data such as a video recording of the user and/or the EGM during at least a portion of the moment … EGM 920 can transmit NFT moment data 962 to cross-channel application 910 and/or to blockchain platform 930. Cross-channel application 910 can send a message 964 to the blockchain platform 930 to save the new NFT within the blockchain platform. The blockchain platform stores the new or updated NFT data at 966. In some examples, the blockchain can create a new moment NFT at 966 using the new and/or updated NFT data. The blockchain platform can record one or more transactions to represent the updated NFT data and/or new moment NFT … In another example, EGM 920 can transmit NFT moment data 962 to the blockchain platform or Intermediary server system 30 in addition to or in place of transmitting the data to the cross-channel application 910. The intermediary server system 30 or blockchain platform can create a new NFT representing the moment and transfer the NFT to the player, such as through a transaction to the cross-channel application or a digital wallet associated with the player.”).
Therefore, it would have been obvious to one of ordinary skill in the art to modify mint function disclosed by Vijiyan to operate in response to a server signal and in conjunction with a smart contract as disclosed by Dalmia yielding the predictable result of an increase in the processing efficiency of the invention.
Regarding Claims 2 and 17, the combination discloses:
wherein the content is one of videos, music, podcasts, live broadcasts, educational courses, interactive experiences and virtual reality content (See Vijiyan: Para. [0091] – “In a further example, when a user viewing a video such as (but not limited to) a tutorial via the YouTube service provided by Alphabet, Inc. of Mountain View, Calif. posted by a favorite vlogger, an application on their user device could identify the particular video being viewed and send a push notification to the user with a direct path to purchase one or more products being promoted in the video. This functionality acts as a real-time point of sale opportunity for artists and brands to collaborate beyond in-running ads and sponsorships. By paying for goods using fungible tokens, both the artist and the brands can be compensated responsibly for any sales that are generated by the campaign.”).
Regarding Claims 3 and 15, the combination discloses:
wherein the NFT is of a theme related to the content (See Vijiyan: Para. [0009] – “FTs can be created around a large range of real world media content and intellectual property. Movie studios can mint digital collectibles for their movies, characters, notable scenes and/or notable objects. Record labels can mint digital collectibles for artists, bands, albums and/or songs. Similarly, official digital trading cards can be made from likeness of celebrities, cartoon characters and/or gaming avatars. Virtually any media intellectual property that can be merchandised and licensed in the real world can also be tokenized into a digital collectible”).
Regarding Claims 4 and 16, the combination discloses:
wherein the NFT may be a coupon for further purchases (See Vijiyan: Para. [0073] – “In a number of embodiments, digital tickets minted as NFTs can be utilized to establish proof of ownership of tickets at ticketed events (reducing fraud). In addition, the smart contracts underlying the digital tickets can require residual payments when digital tickets are transferred on a secondary market. In addition, the digital tickets can become or be exchanged for NFTs that are digital collectibles following the event. As can readily be appreciated, the flexibility of the smart contracts underlying NFTs means that any of a variety of NFTs can be issued as appropriate to the requirements of a given application in accordance with various embodiments of the invention.”).
Regarding Claim 5, the combination discloses:
wherein the transmission of the content to the viewer is enabled by the existence of the wallet connected to the smart contract (See Vijiyan: Para. [0011] – “One embodiment of the invention is a media wallet including: a processor; a network interface; and memory containing a media wallet application. In addition, the processor is capable of being configured by the media wallet application to: securely store non-fungible tokens (NFTs), where each NFT is associated with a programmatically defined smart contract written to at least one immutable ledger; display a user interface through which user instructions concerning data access permissions are received; and cause media consumption data to be written to the at least one immutable ledger in conjunction with a set of data access permissions determined in accordance with user instructions concerning data access permission received via the user interface.”).
Regarding Claim 6, the combination discloses:
wherein actual viewership is tracked by linking completed viewing to the issuance of NFTs to registered wallets.
Regarding Claims 7 and 14, the combination discloses:
wherein the system ensures the authenticity, uniqueness,and immutability of the NFTs and viewer metrics using blockchain technology (See Vijiyan: Para. [0015] – “In still another embodiment, the at least one immutable ledger includes: an NFT blockchain to which the smart contracts for each NFT are written; and a permissioned analytics blockchain to which media consumption data is written.” and [0032] – “In another additional embodiment, the at least one immutable ledger includes: an NFT blockchain and the at least one computer system configured as an NFT registry service is configured to mint NFTs to the NFT blockchain; and a permissioned analytics blockchain and user devices are configured by media wallet applications to cause media consumption data to be written to the permissioned analytics blockchain.”).
Regarding Claim 8, the combination discloses:
The method of claim 1, wherein the NFT issuance does not require transaction signatures, improving the overall user and viewing experience (See Vijiyan: Para. [0045] – “In a still yet further embodiment again, the media wallet applications are capable of requesting that the plurality of computer systems authenticate that an NFT was minted by a particular content creator. In addition, the plurality of computer systems authenticate the NFT based upon at least one process selected from the group including: a comparison of a signature of a content creator that minted the NFT and cryptographic information published by the particular content creator identified by a specific media wallet application; and confirming that transactions in the at least one immutable ledger involving the NFT and the particular content creator are consistent with a smart contract underlying the NFT.”).
Regarding Claims 9 and 20, the combination discloses:
wherein the system can be adapted for various types of content, platforms, and devices (See Vijiyan: Para. [0009] – “Systems and methods in accordance with many embodiments of the invention are utilized in the implementation of blockchain-based content engagement platforms. In several embodiments, the content engagement platform includes a registry service which enables verified content creators to mint Non-Fungible Tokens (NFTs). NFTs can be created around a large range of real world media content and intellectual property. Movie studios can mint digital collectibles for their movies, characters, notable scenes and/or notable objects. Record labels can mint digital collectibles for artists, bands, albums and/or songs. Similarly, official digital trading cards can be made from likeness of celebrities, cartoon characters and/or gaming avatars. Virtually any media intellectual property that can be merchandised and licensed in the real world can also be tokenized into a digital collectible. However, unlike real world collectibles, which can have limited utility other than for display, NFTs minted using content engagement platforms in accordance with various embodiments of the invention can have multifunctional programmable use cases including as rewards, private access to premium content and experiences, as discounts toward the purchase of goods, among many other value-added use cases. Furthermore, they are not bound to the restrictions of their native environments, allowing them to be transferred into and used by 3rd party applications and platforms.”).
Regarding Claims 10 and 18, the combination discloses:
wherein the system can incorporate additional incentives or rewards for viewers based on their engagement levels, social sharing, referrals, or other actions that benefit the content provider and the overall community (See Vijiyan: Para. [0091] – “n several embodiments, an application such as (but not limited to) a media wallet application or a browser plugin, executes in the background as a user consumes media and captures media consumption data passively in real-time. Once a particular media property is identified, users can opt-in or opt-out of sharing media consumption data or rely on previously established data sharing settings. Where data is shared, many embodiments also generate a user interface that enables the user can also opt-in or opt-out of receiving in real-time push notifications, survey prompts, advertisements, and/or offers related to the specific media being consumed. For example, if a user is identified to be watching a movie on a streaming platform, a pop-up notification might alert the user about an exclusive deal to buy merchandise related to that movie at discounted rates not available elsewhere. With limited interaction, users can make direct purchases of limited-time offers and deals of media products, which can be loaded directly into the media wallet application on their user device. Another example involves a user streaming an album on a platform that was just released, an application stored on the user device and communicating with the content engagement platform can identify the media content, the content creator could send a direct push notification to the user to offer them to participate in a survey providing them feedback on the content. For their participation in the survey, the content creator can reward the listener with reward tokens while simultaneously gaining valuable, real-time feedback from the consumer. In a further example, when a user viewing a video such as (but not limited to) a tutorial via the YouTube service provided by Alphabet, Inc. of Mountain View, Calif. posted by a favorite vlogger, an application on their user device could identify the particular video being viewed and send a push notification to the user with a direct path to purchase one or more products being promoted in the video. This functionality acts as a real-time point of sale opportunity for artists and brands to collaborate beyond in-running ads and sponsorships. By paying for goods using fungible tokens, both the artist and the brands can be compensated responsibly for any sales that are generated by the campaign.”).
Regarding Claim 12, the combination discloses:
wherein the status of the streaming of the content includes a signal indicating that one of a designated marker has occurred (See Dalmia: Para. [0139 - 0141] – “moment associated with an EGM may correspond to a particular win such as wining a jackpot or having a winning streak. Other moments may include losing streaks, certain levels achieved, certain rewards received and the like. The NFT moment data can include any data associated with a moment corresponding to the player and the EGM. For example, the NFT moment data may include a timestamp, player identifier which in some cases may be a public key, machine identifier, game identifier, media data, winning amount, reward information, and the like. Media data may include audio, image, and/or video data such as a video recording of the user and/or the EGM during at least a portion of the moment … EGM 920 can transmit NFT moment data 962 to cross-channel application 910 and/or to blockchain platform 930. Cross-channel application 910 can send a message 964 to the blockchain platform 930 to save the new NFT within the blockchain platform. The blockchain platform stores the new or updated NFT data at 966. In some examples, the blockchain can create a new moment NFT at 966 using the new and/or updated NFT data. The blockchain platform can record one or more transactions to represent the updated NFT data and/or new moment NFT … In another example, EGM 920 can transmit NFT moment data 962 to the blockchain platform or Intermediary server system 30 in addition to or in place of transmitting the data to the cross-channel application 910. The intermediary server system 30 or blockchain platform can create a new NFT representing the moment and transfer the NFT to the player, such as through a transaction to the cross-channel application or a digital wallet associated with the player.”).
Regarding Claim 13, the combination discloses:
wherein the status of the streaming of the content includes a signal indicating that completion of the streaming of the content has occurred (See Dalmia: Para. [0139 - 0141] – “moment associated with an EGM may correspond to a particular win such as wining a jackpot or having a winning streak. Other moments may include losing streaks, certain levels achieved, certain rewards received and the like. The NFT moment data can include any data associated with a moment corresponding to the player and the EGM. For example, the NFT moment data may include a timestamp, player identifier which in some cases may be a public key, machine identifier, game identifier, media data, winning amount, reward information, and the like. Media data may include audio, image, and/or video data such as a video recording of the user and/or the EGM during at least a portion of the moment … EGM 920 can transmit NFT moment data 962 to cross-channel application 910 and/or to blockchain platform 930. Cross-channel application 910 can send a message 964 to the blockchain platform 930 to save the new NFT within the blockchain platform. The blockchain platform stores the new or updated NFT data at 966. In some examples, the blockchain can create a new moment NFT at 966 using the new and/or updated NFT data. The blockchain platform can record one or more transactions to represent the updated NFT data and/or new moment NFT … In another example, EGM 920 can transmit NFT moment data 962 to the blockchain platform or Intermediary server system 30 in addition to or in place of transmitting the data to the cross-channel application 910. The intermediary server system 30 or blockchain platform can create a new NFT representing the moment and transfer the NFT to the player, such as through a transaction to the cross-channel application or a digital wallet associated with the player.”).
Regarding Claim 19, the combination discloses:
wherein the viewing device is one of a computer, smart phone,tablet and the like capable of receiving and displaying online video content (See Vijiyan: Para. [0106] – “Operation of a media wallet application implemented in accordance with an embodiment of the invention is conceptually illustrated in by way of the sequence of user interfaces shown in FIGS. 4A-4C. In many embodiments, the media wallet application is an application that is installed upon a user device such as (but not limited to) a mobile phone or tablet computer running the iOS or Android operating systems. Launching the media wallet application can provide a number of user interface contexts. In many embodiments, transitions between these user interface contexts can be initiated in response to swipe gestures received via a touch user interface. As can readily be appreciated, the specific manner in which a user interfaces with a media wallet application is largely dependent upon the user input capabilities of the underlying user device.”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS K PHAN whose telephone number is (571)272-6748. The examiner can normally be reached M-F 1 pm-9 pm EST.
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/NICHOLAS K PHAN/Examiner, Art Unit 3699
