Detailed Action
Acknowledgements
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the application filed on February 26, 2026.
Claims 1-20 are pending.
Claims 1-20 are examined.
This Office Action is given Paper No. 20260918 for references purposes only.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. The instant application claims the benefit of application 18/334,839.
Information Disclosure Statement
The Information Disclosure Statements filed on March 26, 2026; June 22, 2026; and August 21, 2026 have been considered. An initialed copy of the Form 1449 is enclosed herewith.
Claim Objections
Claims 1 and 15 are objected to because they recite “a non-fungible token (NFTs).” Examiner assumes that Applicant intended “a non-fungible token (NFT).” Appropriate correction is required.
Claim 8 is objected to because it recites “wherein the metadata contains.” Examiner assumes that Applicant intended “wherein the metadata file contains.” Appropriate correction is required.
Claim 10 is objected to because it recites “a non-fungible tokens (NFT).” Examiner assumes that Applicant intended “a non-fungible token (NFT).” Claim 10 also recites “a digital representation one or both shoes.” Examiner assumes that Applicant intended “a digital representation of one or both shoes.” Appropriate correction is required.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 of the instant application are rejected on the grounds of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of US patent 12,587,375; claims 1-21 of US patent 11,032,072; claims 1-25 of US patent 10,505,726; and claims 1-18 of US patent 11,736,284.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter of the instant application would have been obvious to one of ordinary skill in the art in light of the disclosures of US patent 12,587,375, US patent 11,032,072, US patent 10,505,726, and US patent 11,736,284.
The instant application is directed to receiving a physical pair of shoes; creating make and model data; generating a non-fungible token (NFT) including a metadata file and a digital shoe; registering the NFT to a blockchain ledger; assigning the NFT to the physical shoes; storing the metadata file in a cryptocurrency wallet; receiving an NFT rights request; and assigning ownership of the NFT and ownership of the physical shoes to a first account (see claim 1).
US patent 12,587,375 is directed to receiving a first limited number of physical shoes; scanning the physical shoes to determine makes and models; generating a second limited number of non-fungible tokens (NFTs) each including a digital shoe, wherein the second number is equal to the first number; registering the NFTs to a blockchain ledger; placing the NFTs in a cryptocurrency wallet; assigning each of the NFTs to a pair of the physical shoes; receiving, from a first device, an NFT request to acquire a first NFT; assigning ownership of the first NFT and ownership of the first pair of physical shoes to a first account of the first user (see claim 1).
US patent 11,032,072 is directed to receiving a transaction confirmation of a completed transaction of footwear from a first party to a second party; determining a unique owner ID code; transmitting a cryptographic block to record transfer of the digital asset to the second party, wherein the block comprises a unique shoe ID code representative of a digital shoe and the unique owner ID code; receiving a digital transfer proposal; determining a unique owner ID code of a third party; linking the digital asset with the unique owner ID code of the third party; transmitting the unique shoe ID code and the unique owner ID code to the ledger; wherein the digital asset is transferable to the third party separate from the footwear (see claim 1).
US patent 10,505,726 is directed to receiving a transaction confirmation of a transfer of footwear from a first party to a second party; determining a unique owner ID code; generating a digital asset associated with the footwear, the digital asset including a digital shoe and a unique shoe ID code; linking the digital asset with the unique owner ID code; transmitting the unique shoe ID code and the unique owner ID code to record transfer to the second party; receiving a digital transfer proposal; determining a new unique owner ID code; linking the digital asset with the new unique owner ID code; and transmitting the unique shoe ID code and the new unique owner ID code to the blockchain (see claim 1).
US patent 11,736,284 is directed to receiving a transaction confirmation of a completed transaction of a product from a first party to a second party; determining a unique owner ID code; recording or transmitting a request to record ownership of the digital asset to the unique owner ID code; receiving a request to transfer the digital asset to a second unique owner ID code; recording or transmitting a request to record ownership to the second owner ID code; wherein the digital asset is transferable to the second owner ID code, wherein the digital asset has a unique digital ID code, and determining a rarity score for the digital asset (see claim 1).
The instant application would have been obvious to one of ordinary skill in the art in light of US patent 12,587,375, US patent 11,032,072, US patent 10,505,726, and US patent 11,736,284 because they encompass receiving footwear; generating digital assets (e.g. NFTs) that are digital representations of the footwear; assigning each of the NFTs to a respective footwear (e.g. unique ID codes); receiving a request from a first user; and assigning ownership of an NFT to a first user.
Claim Interpretation
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure (see attached form PTO-892).
Youb et al. (US 12,737,804) discloses a method for creating commodity assets from unrefined commodity reserves utilizing blockchain and distributed ledger technology.
Please see Response After Final mailed on October 27, 2025 and Notice of Allowance mailed on November 28, 2025 in application 18/334,839 regarding 101 eligibility and prior art.
Conclusion
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from Examiner should be directed to Chrystina Zelaskiewicz whose telephone number is 571-270-3940. Examiner can normally be reached on Monday-Friday, 9:30am-5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Neha Patel can be reached at 571-270-1492.
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/CHRYSTINA E ZELASKIEWICZ/Primary Examiner, Art Unit 3699
