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 the Claims
Claims 1-12, and 14-20 are currently pending in the present application, with claim 1 being independent. Claims 1, 6, 11, 12, and 20 have been amended and claim 13 has been cancelled.
Response to Arguments
Applicant’s arguments, see page 6, filed 13 August 2026, with respect to the objection to the claims, along with accompanying amendments received on the same date, have been fully considered and are persuasive. The objection to the claims has been withdrawn.
Applicant’s arguments, see page 6-7, filed 13 August 2026, with respect to the objection to the specification, along with accompanying amendments received on the same date, have been fully considered and are not persuasive. The objection to the specification has been maintained.
The specification does not appear to describe the active step of associating a digital token with at least one real-world asset, wherein the digital token includes information identifying the real-world asset, as set forth in claim 1. The specification describes associating a token with a user account (see for instance, fig. 8) and already having the digital token associated with the real-world asset (see for instance, paragraphs 120 and 122). Applicant points to paragraphs 54, 108, 123, and 124 to provide additional support to applicant’s claimed language. However, the paragraphs pointed to by the applicant do not appear to set forth the claimed step of associating the digital token with a real-world asset, where the digital token includes information about identifying the real-world asset (after the steps of determining the location information of the user and identifying the at least one real world asset). Accordingly, the objection to the specification has been maintained.
Applicant’s arguments, see page 6-7, filed 13 August 2026, with respect to the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph rejection of claims 1-20, along with accompanying amendments received on the same date, have been fully considered and are not persuasive. Claim 13 has been cancelled. The 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph rejection of claims 1-12, and 14-20 has been maintained, while the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph rejection of claim 13 has been withdrawn..
With respect to associating a digital token with at least one real-world asset, wherein the digital token includes information identifying the real-world asset, the specification describes associated a token with a user account (see for instance, fig. 8) and already having the digital token associated with the real-world asset (see for instance, paragraphs 120 and 122). While the applicant points to paragraphs 54, 108, 123, and 124 as providing support for the claimed limitation, the cited paragraphs do not appear to set forth the claimed step. For instance, paragraph 54 describes creating an NFT in response to opening a virtual wrapper and having the transaction system record information about the ownership of the NFT. Paragraph 108 as set forth by the applicant (emphasis applicant’s), "the token 610 can be ... created after the container unit 620 is dispensed . . . If created after the dispensing, information for creating the token can be associated, in the virtual object information 216, with the container unit's 620 identifier. This information can be a set of instructions executable to invoke a creation procedure." However, this paragraph does not perform the active step of associating a digital token with at least one real-world asset, after identifying the location of the real-world asset. Rather, the paragraph creates a token for a container dispensed, which is different than he claimed active step. In paragraph 123, the digital token is already associated with the object (“A token can be added to the user account or wallet, where the token includes information identifying the item and providing proof of purchase”). Similarly, in paragraph 124, the digital token has already been associated with the healthcare item (“A token can be added to the user account, where the token includes information identifying the item and providing an authorization to obtain it (the healthcare item)”). That is, the disclosure does not appear to provide an explanation, algorithm, description of the active step of associating the digital token with the one real-world asset (after determining the location information of the user device and identifying the at least one real-world asset).
Applicant’s arguments, see page 7-11, filed 13 August 2026, with respect to the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejection of claims 1-20, along with accompanying amendments received on the same date, have been fully considered and are partially persuasive. The 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejection of claims 11, 12, 15, and 16 has been maintained, while the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejection of claims 1-10, 13, 14, and 17-20 has been withdrawn.
With respect to claims 1 and 13, applicant’s amendments have clarified the scope of the claimed limitation. Claim 13 has been cancelled. Accordingly, the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejection of claims 1-20 has been withdrawn
With respect to claim 11, given the plain and ordinary meaning of the words when interpreted afforded their broadest reasonable interpretation in light of the corresponding disclosure the scope of the claimed limitation is unclear. For instance, it is not immediately clear as to what constitutes an access right. An access right to what? How is the digital token which is associated with the real-world asset an access right? Is the asset right to a real-world asset or is the claim claiming the access right is the real-world asset and if so, how is that a real-world asset? The disclosure appears to only use access right in paragraph 128, which recites “One reason is an NFT or tokens having limited fungibility provide for high fidelity management of access rights. Each time a token owner obtains an NFT or uses the NFT, the corresponding transaction is recorded on the notarized ledger thereby creating an audit trail of who does what with the data and when”. The example cited by the example deals with a the token representing a ticket to access a venue or space, however, in that case, it is unclear as to how the digital token corresponding to the real-world object, which represents an ownership of the real-world asset represents a generically worded access right and what the access right in the case claim language represents. Since it remains unclear as to what constitutes the access right and how that ties in with the real world asset in claim 1, the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejection of claim 11 has been maintained.
With respect to claim 12, given the plain and ordinary meaning of the words when interpreted afforded their broadest reasonable interpretation in light of the corresponding disclosure the scope of the claimed limitation remains unclear. For instance, it is not immediately clear as to how the intellectual property work comprises at least one of a trademark, a copyrighted work, artwork, a program, an image, or a digital file. How would a program (e.g., an agenda, sequence of instructions, a list, etc) be an intellectual property work? The originally filed disclosure appears to describe intellectual property work with respect to only copyrighted work and trademarks (as examples). Accordingly the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejection of claim 12 has been maintained.
With respect to claim 15, given the plain and ordinary meaning of the words when interpreted afforded their broadest reasonable interpretation in light of the corresponding disclosure the scope of the claimed limitation remains unclear. For instance, it is not immediately clear as to how the digital token represents a right to vote. What constitutes a right to vote and how is the digital token which is associated with the real-world asset a right to vote? The specification merely recites “The asset can also be a functional element, such as an access control (e.g., a digital ticket to access a reserved and/or secured area), a program code, and/or a program code package...or even a right to vote in a decentralized autonomous organization (DAO)”. The originally filed disclosure does not appear to clarify the scope of the claimed limitation and it remains unclear as to how the digital token further represents a right to vote. The originally filed specification does not set forth a right to vote outside of a DAO or set forth the token comprising both the right to vote and ownership of a real-world asset. Accordingly the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejection of claim 15 and claims depending thereon has been maintained
With respect to claim 16, given the plain and ordinary meaning of the words when interpreted afforded their broadest reasonable interpretation in light of the corresponding disclosure the scope of the claimed limitation is unclear. For instance, it is not immediately clear as to how the digital token further represents a right to vote, which is associated with a decentralized autonomous organization. Is the decentralized autonomous organization associated with the real-world asset? The specification recites “The asset can also be a functional element, such as an access control (e.g., a digital ticket to access a reserved and/or secured area), a program code, and/or a program code package...or even a right to vote in a decentralized autonomous organization (DAO)”. While the asset can be a functional element, the claim does not set forth its relationship with the real-world asset to which the digital token is associated. Accordingly, the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejection of claim 16 has been maintained.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification does not appear to describe the active step of associating a digital token with the at least one real-world asset, wherein the digital token includes information identifying the real-world asset, as set forth in claim 1. The specification describes associating a token with a user account (see for instance, fig. 8) and already having the digital token associated with the real-world asset (see for instance, paragraphs 120 and 122). Associating a token with a user account and already having the token be associated with the real-world asset is different than the claimed step of associating the digital token with the one real-world asset (after determining the location information of the user device and identifying the at least one real-world asset). In addition, the specification does not set forth the generically recited right to vote as set froth in claim 15. Rather, the specification in paragraph 114 recites “The asset can also be a functional element, such as an access control (e.g., a digital ticket to access a reserved and/or secured area), a program code, and/or a program code package...or even a right to vote in a decentralized autonomous organization (DAO)”. The right to vote in a specific type of organization is not the same as the broadly claimed right to vote.
Claim Interpretation
Multi-token set is a term of art and is being interpreted along the lines of paragraph 127.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12, and 14-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “obtaining location information of a user device; identifying at least one real-world asset based at least in part on the location information; associating a digital token with the at least one real-world asset, wherein the digital token includes information identifying the real-world asset; causing the user device to present the digital token for user interaction; in response to a user interaction with the digital token, associating the digital token with a user account associated with the user device; recording a transaction on a notarized ledger indicating the association of the digital token with the user account; and wherein the digital token represents at least an ownership of the real-world asset”. These limitations correspond to computer-implemented functional claim limitations as discussed in MPEP 2161.01. Applicant’s disclosure regarding these functions does not appear to describe the methodology by which the claimed functions are performed.
With respect to associating a digital token with the at least one real-world asset, wherein the digital token includes information identifying the real-world asset, the specification describes associated a token with a user account (see for instance, fig. 8) and already having the digital token associated with the real-world asset (see for instance, paragraphs 120 and 122). The disclosure does not appear to provide an explanation, algorithm, description of the active step of associating the digital token with the one real-world asset (after determining the location information of the user device and identifying the at least one real-world asset).
As explained in MPEP 2161.01 I, paragraphs 6-8, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. … An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002). Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008) (internal citation omitted). It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement.” With respect to the claimed computer functional limitations of “associating a digital token with the at least one real-world asset, wherein the real-world asset includes information identifying the real-world asset”, although the disclosure provides examples of desired outcomes with respect to the functional limitations, there is no description of an algorithm, steps, or procedure showing how the inventor(s) intended the functions to be performed. Therefore the functions recited in claim 1 corresponds to subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention
Claims depending thereon do not cure the noted deficiencies and are also rejected using substantially similar rationale as to that set forth with respect to the claims from which they depend.
Claims 11, 12, 15, and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 11, given the plain and ordinary meaning of the words when interpreted afforded their broadest reasonable interpretation in light of the corresponding disclosure the scope of the claimed limitation is unclear. For instance, it is not immediately clear as to what constitutes an access right. An access right to what? How is the digital token which is associated with the real-world asset an access right? Is the asset right to a real-world asset or is the claim claiming the access right is the real-world asset and if so, how is that a real-world asset? The disclosure appears to only use access right in paragraph 128, which recites “One reason is an NFT or tokens having limited fungibility provide for high fidelity management of access rights. Each time a token owner obtains an NFT or uses the NFT, the corresponding transaction is recorded on the notarized ledger thereby creating an audit trail of who does what with the data and when”. The examiner respectfully requests the applicant clarify the scope of the claimed limitation.
With respect to claim 12, given the plain and ordinary meaning of the words when interpreted afforded their broadest reasonable interpretation in light of the corresponding disclosure the scope of the claimed limitation is unclear. For instance, it is not immediately clear as to how the intellectual property work comprises at least one of a trademark, a copyrighted work, artwork, a program, an image, or a digital file. How would a program (e.g., an agenda, sequence of instructions, a list, etc) be an intellectual property work? The originally filed disclosure appears to describe intellectual property work with respect to only copyrighted work and trademarks (as examples). How is the intellectual property work related to the ownership of the real-world asset and does the token allow for having different types of items associated with it? The examiner respectfully requests the applicant clarify the scope of the claimed limitation.
With respect to claim 15, given the plain and ordinary meaning of the words when interpreted afforded their broadest reasonable interpretation in light of the corresponding disclosure the scope of the claimed limitation is unclear. For instance, it is not immediately clear as to how the digital token represents a right to vote. What constitutes a right to vote and how is the digital token which is associated with the real-world asset a right to vote? The specification merely recites “The asset can also be a functional element, such as an access control (e.g., a digital ticket to access a reserved and/or secured area), a program code, and/or a program code package...or even a right to vote in a decentralized autonomous organization (DAO)”. The originally filed disclosure does not appear to clarify the scope of the claimed limitation and it remains unclear as to how the digital token further represents a right to vote. The examiner respectfully requests the applicant clarify the scope of the claimed limitation.
Claims depending thereon do not cure the noted deficiencies and are accordingly also rejected using substantially similar rationale as to that set forth for the claims from which they depend.
With respect to claim 16, given the plain and ordinary meaning of the words when interpreted afforded their broadest reasonable interpretation in light of the corresponding disclosure the scope of the claimed limitation is unclear. For instance, it is not immediately clear as to how the digital token further represents a right to vote, which is associated with a decentralized autonomous organization. Is the decentralized autonomous organization associated with the real-world asset? The specification recites “The asset can also be a functional element, such as an access control (e.g., a digital ticket to access a reserved and/or secured area), a program code, and/or a program code package...or even a right to vote in a decentralized autonomous organization (DAO)”. While the asset can be a functional element, the claim does not set forth its relationship with the real-world asset to which the digital token is associated. The examiner respectfully requests the applicant clarify the scope of the claimed limitation.
Allowable Subject Matter
Claims 1-12, and 14-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US PG Publication 2023/0009304 to Jakobsson et al. teaches systems and methods for token management in augmented and virtual environments.
US PG Publication 2022/0067707 to Yantis et al. teaches a system for facilitating transactions for real-world items in video games using digital tokens, see for instance, abstract.
US PG Publication 2018/0198617 to Drouin et al. teaches System and method for digital token exchange and delivery. A token includes a unique identifier that references a physical object or locations, see for instance, paragraph 21 and fig. 5.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J COBB whose telephone number is (571)270-3875. The examiner can normally be reached Monday - Friday, 11am - 7pm ET.
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/MICHAEL J COBB/Primary Examiner, Art Unit 2615
