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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 4/9/2026 has been entered. Claims 1-20 are pending. Claims 1, 2, 5, 19, and 20 are amended.
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 USC 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. The judicial exception is not integrated into a practical application, The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Under Step 1 of the Subject Matter Eligibility Test for Products and Processes, the claims must be directed to one of the four statutory categories (See MPEP 2106.03(II)). In the instant application, claims 1-18 are directed to a process, claim 19 is directed to an apparatus, and claim 20 is directed to a manufacture. All the claims are directed to one of the four statutory categories (YES).
Under Step 2A of the Patent Subject Matter Eligibility Test (see MPEP 2106.04), it is determined whether the claims are directed to a judicially recognized exception. Step 2A is a two-prong inquiry.
Under Prong 1, it is determined whether the claim recites a judicial exception (See MPEP 2106.04). (YES). Taking Claim 1 as representative, the claim recites limitations that fall within the certain methods of organizing human activity groupings of abstract ideas, including:
A method comprising:
at an electronic device including memory and one or more processors in communication with a display and one or more input devices:
storing, using the memory of the electronic device, a file that defines a virtual object, a plurality of configurations of the virtual object, and a source of the virtual object;
displaying, using the display, the virtual object based on the file, wherein the virtual object is displayed with a first configuration of the plurality of configurations of the virtual object;
receiving, via the one or more input devices, an input corresponding to a request to display the virtual object with a second configuration of the plurality of configurations of the virtual object, the second configuration different from the first configuration;
in response to receiving the input corresponding to the request to display the virtual object with the second configuration, transmitting, to the source of the virtual object, a request to update dynamic metadata of the file that defines the virtual object;
receiving, from the source of the virtual object, updated dynamic metadata of the file that defines the virtual object including an indication of availability of a physical object corresponding to the virtual object with the second configuration, wherein the indication indicates that the physical object corresponding to the virtual object is available with the second configuration;
in response to receiving, from the source of the virtual object, the updated dynamic metadata including the indication of the availability of the physical object corresponding to the virtual object with the second configuration:
updating the file with the dynamic metadata including the indication of the availability of the physical object corresponding to the virtual object with the second configuration; and
in accordance with a determination that the indication indicates that the physical object corresponding to the virtual object is available with the second configuration, displaying, via the display, the virtual object with the second configuration.
Independent claims 19-20 recite similar limitations as claim 1.
Certain methods of organizing human activity include:
fundamental economic principles or practices (including hedging, insurance, and mitigating risk)
commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; and business relations)
managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
The limitations, as emphasized above, recite the concept of requesting and displaying items for purchase. These limitations, under their broadest reasonable interpretations, fall with the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP because these limitations recite a commercial interaction (such as marketing or sales activities). Specifically, the claims recite requesting to display a virtual object with a second configuration different from a first configuration, querying the availability of the virtual object with the second configuration receiving an indication of availability of a physical object corresponding to the virtual object with the second configuration, and displaying the virtual object with the second configuration in response to degerming that the physical object is available with the second configuration. Applicant’s specification describes that obtaining the availability of the physical object with the required configuration means obtaining the purchase availability from a manufacturer or retailer of the object (see specification [0016], [0034]) and that the source of the virtual object corresponds to a retailer or manufacturer of the physical object, i.e. a sofa (see specification [0035]). The configurations can correspond to characteristics of the product, and in the example of a sofa could include upholstery style, foot style, and size (specification [0035]). The dependent claims further clarify that the virtual objects are identified based on a real image and obtained from a catalog (see dependent claim 12). In other words, the virtual objects are merely product listings offered by retailers. Accordingly, independent claims 1 and 19-20, as a whole, are directed to requesting the availability of a certain product with a certain configuration and presenting the product to the user in response to determining the product is available with the certain configuration. These processes fall within “Certain Methods of Organizing Human Activity” because the claims recite sales activity which are commercial or legal interactions and therefore recite an abstract idea.
Under Prong 2, it is determined whether the claim recites additional elements that integrate the exception into a practical application of the exception. This judicial exception is not integrated into a practical application (NO).
Independent claims 1 and 19-20 recite additional elements beyond the abstract idea, including:
an electronic device including memory and one or more processors in communication with a display and one or more input devices
a virtual object
a file that defines the virtual object
an electronic device, comprising: one or more processors; memory; and one or more programs, wherein the one or more programs are stored in memory and configured to be executed by the one or more processors including instructions for a method
a non-transitory computer readable storage medium storing one or more programs, the one or more programs comprising instructions, which when executed by the one or more processors of an electronic device including memory, cause the electronic device to perform a method
The additional elements of claims 1 and 19-20 are recited at a high level of generality (i.e. as generic computing hardware) in Applicant’s specification without meaningful detail regarding their structure, configuration, or function. As such, the additional elements amount to nothing more than mere instructions to implement or apply the abstract idea on a generic computing hardware (or, merely use a computer as a tool to perform an abstract idea.) Specifically, the additional element of the display, is recited at a high-level of generality (i.e., as a generic display or interface for a computer) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Further, the additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use (such as computers or computing networks). For example, stating that the physical objects correspond to virtual objects (i.e. item listings on a computer), only generally links the commercial interactions to a computer environment. Employing well-known computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not integrate the exception into a practical application.
Additionally, the additional elements are insufficient to integrate the abstract idea into a practical application because the claim fails to i) reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, ii) apply the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, iii) effect a transformation or reduction of a particular article to a different state or thing, or iv) apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, the judicial exception is not integrated into a practical application.
Under Step 2B, it is determined whether the claims recite additional elements that amount to significantly more than the judicial exception. The claims of the present application do not include additional elements that are sufficient to amount to significantly more than the judicial exception (NO).
As discussed above with respect to Prong Two of Step 2A, although additional computer related elements are recited, the claim merely invokes such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Moreover, the limitations of claims 1 and 19-20 are manual processes (e.g., displaying information about an object (i.e. a product), receiving a request to display the object with a certain configuration, querying the availability of the object with the certain configuration, and in response to determining that the object is available with the certain configuration, displaying the object with the certain configuration, etc.). The courts have indicated that mere automation of manual processes is not sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)). Furthermore, as discussed above with respect to Prong Two of Step 2A, claims 1 and 19-20 merely recite the additional elements in order to further define the field of use of the abstract idea, therein attempting to generally link the use of the abstract idea to a particular technological environment, such as the Internet or computing networks (see Ultramercial, Inc. v. Hulu, LLC. (Fed. Cir. 2014); Bilski v. Kappos (2010); MPEP 2106.05(h)). Similar to FairWarning v. Iatric Sys., claims 1 and 19-20 specifying that the abstract idea of requesting and displaying items for purchase is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claim to the computer field, i.e., to execution on a generic computer.
Even when considered as an ordered combination, the additional elements do not add anything that is not already present when they are considered individually. In Alice Corp., the Court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘[a]dd nothing…that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Id. (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, viewed as a whole, claims 1 and 19-20 simply convey the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claims 1 and 19-20 that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Even considered as an ordered combination (as a whole), the additional elements do not add anything significantly more than when considered individually. Therefore, claims 1 and 19-20 do not provide an inventive concept and do not qualify as eligible subject matter.
Claims 2-18 are dependencies of claim 1. When analyzed, as a whole, the dependent claims are held to be patent-ineligible under 35 U.S.C. 101 because they are directed to the judicial exception, do not integrate the judicial exception into a practical application, nor do they add “significantly more” to the judicial exception. Dependent claims 2-5, 7-9, 11-13, 15, and 17-18 do recite additional elements but rather recite limitations that further define the abstract idea. Therefore, dependent claims 2-5, 7-9, 11-13, 15, and 17-18 are not indicative of integration into a practical application and are not significantly more than the judicial exception.
Dependent claims 6, 10, 14, and 16 identify further additional elements, such as:
digital rights management information
a second file
a common file format
a respective application
a first application
a second application different from the first application
an application provided by the source of the virtual object
Similar to discussion above the with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). As such, under Step 2A, dependent claims6, 10, 14, and 16 are “directed to” an abstract idea. Similar to the discussion above with respect to independent claims 1 and 19-20, dependent claims 6, 10, 14, and 16, when analyzed individually and as an ordered combination, invoke such additional elements as a tool to perform the abstract idea and merely indicate a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, and therefore, do not amount to significantly more than the abstract idea itself. See MPEP 2106.05(f)(2).
Accordingly, under the Alice/Mayo test, the Examiner concludes that there are no meaningful limitations in claims 1-20 that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself. The analysis above applies to all statutory categories of invention.
Subject Matter Free of Prior Art
Claims 1, 19 and 20 are determined to have overcome the prior art of rejection and are free of prior art, however the claims remain rejected under 35 USC 101, as set forth above. All dependent claims are also free of prior art by virtue of dependency, but remain rejected under 35 USC 101.
Taking amended claim 1 as a representative claim, the claims as amended are found to overcome the prior art rejection for the reasons set forth below.
In the decision dated 2/10/2026, the PTAB states “Appellant argues that Funk does not display a virtual object in another configuration or update the file in response to an indication from a source of the virtual object that a physical object for the virtual object is available when a customer requests another configuration. See Appeal Br. 26-27. Funk's teaching that inventory data on service computing device 204 is updated upon receiving new items, making sales, receiving manual input, or receiving updates periodically from a merchant does not address whether Funk updates a file of inventory data on service computing device 204 with an indication a second configuration is available when the source indicates availability in response to a query from a customer as claimed. Instead of sending a query of availability of the virtual object in a second configuration to the source of the virtual object, Funk determines availability of the virtual object in a second configuration based on inventory data already stored in service computing device 204 and updated by activity that does not include responding to a customer query of availability of the item in the second configuration as claimed. Funk, 14:11-23. A customer can indicate a desire to receive a notification when an item is restocked. Id. at 25:47-26:2. Chaturvedi’s display of items in requested configurations does not cure this deficiency in Funk [see pages 26-27 of the Patent Board Decision].
After further search and consideration, the following closest prior art, in addition to the previously cited references, were found and are herein cited:
Mott US9734634 discloses presenting an augmented reality preview of an item in a space that is available for purchase. As shown in at least Figure 7, various options of the items (i.e. different sizes) can be selected for view within the interface depicting a room.
Baker US 11204678 discloses showing an item available for purchase within a room along with the options available for the item, such as finish, color, prices (shown in Figure 3A and 2B.
Gabriele US 10134084 discloses an augmented reality mode that allows for the customization of an item or service that is available for purchase at a merchant (Col. 18 lines 65-Col. 19 lines 45). The reference further discloses determining the items’ availability in inventory to determine if the request can be fulfilled (Col. 9 lines 45-55).
NPL: “Virtual Furniture Shop” discloses 3D modeling which represents the customization of a furniture item requested by the customer that is then fulfilled for purchase.
However, the references cited above do not cure the deficiencies set forth in the PTAB decision directed to the claimed invention, alone or in combination. Therefore, none of the cited references disclose or render obvious each and every feature of the claimed invention and the claimed invention is determined to be free of the prior art. Although individually the claimed features could be taught, any combination of references would teach the claimed limitations using a piecemeal analysis, since references would only be combined and deemed obvious based on knowledge gleaned from the applicant's disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The examiner emphasizes that it is the interrelationship of the limitations that renders these claims free of the prior art/additional art.
Therefore, it is hereby asserted by the Examiner that, in light of the above, that the claims are free of prior art as the references do not anticipate the claims and do not render obvious any further modification of the references to a person of ordinary skill in art.
Response to Arguments
It is noted that the new grounds of rejection added in the PTAB decision dates 2/10/2026 has been addressed with the claim amendments and is withdrawn.
Applicant's arguments filed 4/9/2026 have been fully considered but they are not persuasive.
With respect to the remarks directed to 35 USC 101, the remarks are not found to be persuasive. The alleged improved efficiency is not an improvement to the technology itself, but merely consequential to the arrangement/steps of the claimed invention. That is, if the arrangement requires less inputs to maintain the file it will consequentially reduce the error and reduce the power consumption. This is not an improvement to the computer itself, but at most an improvement to the process for maintaining the file which is rooted in the abstract idea. Further, the mere automation of dynamically updating the metadata of the file, comes from the implementation on a computer device. As set forth in MPEP 2106.05 (f), the use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).
For at least these reasons the claims remain rejected under 35 USC 101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA E. FRUNZI whose telephone number is (571)270-1031. The examiner can normally be reached Monday- Friday 7-4 (EST).
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, Marissa Thein can be reached at (571) 272-6764. 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.
VICTORIA E. FRUNZI
Primary Examiner
Art Unit TC 3689
/VICTORIA E. FRUNZI/Primary Examiner, Art Unit 3689 5/26/2026
Prosecution Insights