DETAILED ACTION
This Office Action is in reply to Applicants response after Non-Final rejection received on August 13, 2025. Claim(s) 18-21, and 23-37 is/are currently pending in the instant application.
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 .
Response to Amendment
The Examiner acknowledges the Applicants amendments to claims 18-20, 23, 25, 27, 32-34 and 37 in the response filed on August 13, 2025. Claim 22 has been canceled at this time. Claims 1-17 were previously canceled.
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 18-21, and 23-37 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.
Claims 18-21, and 23-37 are directed to one of the four statutory classes of invention (e.g. process, machine, manufacture, or composition of matter). The claims include a system, method, or product and is a method for proposal and donation of an item which is a process (Step 1: YES).
The Examiner has identified independent method Claim 18 as the claim that represents the claimed invention for analysis and is similar to independent method Claim 15. Claim 1 recites the limitations of (abstract ideas highlighted in italics and additional elements highlighted in bold)
at a donor device, performing matching services on the one or more objects that a donor wishes to donate or lend, to a donee who wishes to be a recipient of the one or more objects, via a donee device to generate one or more matched objects, wherein the matching services include:
receiving object information entered on the donor device, wherein the object information describes the one or more objects;
receivinq validation of the object information from an administrator device;
addinq at least a subset of the object information to a catalogue, wherein the catalogue lists objects offered for donation or loan;
transmitting the catalogue for display on a single or plurality of donee devices;
receivinq one or more proposals to acquire or receive the object from one or more donee devices;
receivinq validation of the one or more proposals from the administrator device;
transmitting the stored proposals to the donor device at the end of the submission period; and
receivinq a selection of one proposal from the donor device;
at the donor device and/or at the donee device, performing logistics and administrative services for the one or more matched objects wherein the logistics and administrative services includes automatically causing the one or more matched objects to be shipped; and
placing the one or more matched objects with a donee via the donee device, according to the performed logistics and administrative services,
wherein the one or more objects is selected from the group consisting of oil painting, watercolor painting, pastel painting, acrylic painting, spray painting, hot wax painting, encaustic painting, enamel painting, drawings, canvas, murals, posters, portraits, maps, globes, cartoons, collages, enamel works, holograms, laser artworks, engravings, etchings, reproductions, and photographs; jewelry; fabric work selected from the group consisting, mosaics, needlework, knitting, and crochet; decorative arts; and sculptures consisting of carvings, ceramics, figurines, maquettes, glass sculptures and stencils.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as mental processes. Matching donors and donees for one or more objects including receiving object information, receiving validation of the object, adding the object to a catalogue, receiving a proposal, receiving validation of the proposal, receiving a selection, and performing administrative and logistics for shipping recites a concept(s) performed in the human mind. But for the “donor device”, “donee device” and “one or more objects” language , the claim encompasses matching a donor and a donee for transferring an object, managing logistics and administrative services, and transferring the object between two parties using his/her mind and/or pen and paper. The mere nominal recitation of transmitting information between devices and arranging services does not take the claim limitation out of the mental processes grouping. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a concepts performed in the human mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The donation management system in Claim 34 is just applying generic computer components to the recited abstract limitations. Claim 34 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
Additionally, the limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity. Matching donors and donees for one or more objects including receiving object information, receiving validation of the object, adding the object to a catalogue, transmitting a catalogue, receiving a proposal, transmitting a proposal, receiving validation of the proposal, receiving a selection, and performing administrative and logistics for shipping, and placing the object with the donee recites managing personal behavior or relationships of interactions between people and/or legal interactions. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as managing personal behavior or relationships of interactions between people, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The donation management system in Claim 34 is just applying generic computer components to the recited abstract limitations. Claim 34 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
This judicial exception is not integrated into a practical application. In particular, the claims only recite donor and donee devices, and an administration device (Claim 18) and/or a donor terminal and donee terminal (claim 34). The computer hardware is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore claims 1 and 14 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are 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 because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See Applicant’s specification para. [0049] about implantation using general purpose or special purpose computing devices (the programmable computer may be a programmable logic unit, a mainframe computer, server, and personal computer, cloud-based program or system, laptop, personal data assistance, cellular telephone, smartphone, and tablet device. [0056] Each of the devices 110, 120, 130 may be a computer, laptop, tablet, smartphone, or the like, having an input interface (e.g., a keyboard, mouse or touch screen), a display (e.g., a screen or touchscreen) and network communication components (e.g., a Wi-Fi transceiver). [0059] The devices 110, 120, 130, 140 further include a memory for storing computer-readable instructions, and a processor coupled to the memory for executing the instructions. The memory may include random access memory (RAM) or similar types of memory. Also, the memory may store one or more applications (i.e., computer programs) for execution by the processor.) and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus claims 1 and 14 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 19-21, 23-33 and 35-37 further define the abstract idea that is present in their respective independent claims 18 and 34 and thus correspond to Certain Methods of Organizing Human Activity and/or Mental Processes and hence are abstract for the reasons presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. The dependent claims include steps or processes which are similar to that disclosed in MPEP 2106.05(d), (f), (g), and/or (h) which include activities and functions the courts have determined to be well-understood, routine, and conventional when claimed in a generic manner, or as insignificant extra solution activity, or as merely indicating a field of use or technological environment in which to apply the judicial exception. Therefore, the claims 19-21, 23-33 and 35-37 are directed to an abstract idea. Thus, the claims 18-21, and 23-37 are not patent-eligible.
Response to Arguments
Applicant's remarks have been fully considered but they are not persuasive. The remarks begin on page 9 of the response with the summary of the claim amendments.
The arguments move to the rejection under 35 U.S.C § 101 (remarks pages 11-13) where the Applicant submits that “performed logistical and administrative services for the one or more matched objects, wherein the logistics and administrative services includes automatically causing the one or more matched objects to be shipped” as claimed is not an abstract idea capable of being performed in the mind. Applicants indicate that one cannot ship goods by thought alone, and not automatically). Additionally the Applicant argues that the claim is integrated into a practical application as it’s not merely organizing human activity based on the limitation of causing one or more objects to be shipped. Applicants position is that the limitation constitutes one or more actions taken by some mechanical devices and is, for example, automatically according to preprogrammed instructions provided therein.
The Examiner does not agree. There are several limitations within at least claim 18 which can be considered a mental process. There are limitations such as transmitting and shipping which are not, however simply arguing a single limitation is not a mental process does not remove the concept of the claims being directed to a Judicial Exception. Further, while the claim states the shipping is automatically caused the one or more objects to be shipped, the specification does not support the object being shipped automatically. There is no control from either device to perform this step. The action the applicant is pointing to is detailed in [0148] where the disclosure states “the system described herein may automatically prompt all the registered users of the curatorial staff of the donee museum to provide shipping arrangements for scheduling the pickup for the object.” This is not automatically causing shipping, rather it’s an automatic prompt to specific users of the donee staff (or curator or other personnel) to provide shipping arrangements for an object. This prompt is not more than a display or request for information such as address and instructions for handling. The system, nor the method, include where a system automatically ships and object. Additionally, the limitation also states “to be shipped” meaning that the event is not more than a preparation of the action which will occur in the future. This future action being processed by a human following instructions.
The Arguments reiterate the specific recitation of physical goods in claims 18 and 34 make it clar that “automatically causing the one or more matched objects to be shipped”, performed at the donor device and/or the donee device, refers to a physical action and undertaken by a physical device, and therefore not a method of organizing human activity or a mental process.
The Examiner has answered this in the above arguments. Some of the claim limitations still constitute functions which are considered mental processes. Additionally, as previously stated and supported from the disclosure, the automatic shipping limitation is not causing the object to be shipped. Rather it’s prompting a device for information form a human input. Further, the method and related system have no control of executing a shipping function automatically in a manner related to Examiner 46, where the system collects, analyzes and automatically, without human intervention, actuates a sorting gate or actually dispenses the necessary food, vitamins, minerals, necessary. The instant claims are simply an automatic prompt for user input related to shipping.
The Applicant also argues that claim 18 is integrated into a practical application because the matching, logistic, and administrative services are performed in support of the automatic shipping function. Again the Applicant recites that the claims include performing a physical action (causing to ship) that is performed efficiency and accurately that’s to matching, logistics, and administrative services performed at computer devices.
The Examiner disagrees with the Applicants assertion of practical application. In fact the courts have been clear that simply applying one or more computer devices to perform generic computer functions for the purpose of efficiency and accuracy are no indicative of practical application and do not render the judicial exception into eligible subject matter. The Applicant is directed to MPEP 2106.04(III)(C) A claim that requires a computer mat still recite a mental process: (3) Using a computer as a tool to perform a mental process. [The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading.] The Applicants claimed automatically shipping is not actually performing shipping or any control related to shipping. Rather, it’s shipping to be performed and the automatic step is a prompt for user or donee input related to shipping. The prompt is equivalent to the prompt limitation cited above which is a request for information.
Further, OIP Technologies, Inc., v. Amazon.com, Inc., says relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible. This argument has been cited by Patent Trial and Appeals Board regarding the claim of accuracy and efficiency.
The Applicants arguments recite the same arguments for claim 34 and further states that claims solve the problem by enabling efficient donation services. Citing claim 20 the Applicants point to the plurality of terms and conditions for a perspective donee to receive the object offered for donation or loan. The argument is that the computer implementation of the claim improves information handling for intelligently matching donors and donees. The Argument further cites McRO for the automating of lip synchronization. The applicant cites support to the limitation where the disclosure indicates “the devices 110, 120, 130, 140, may perform an act automatically…” equating the limitation to McRO as specific rules to achieve results that were previously accomplished through human effort.
Applicant’s arguments that the claims of the present invention are analogous to those of McRO (Remarks page 13), are not found persuasive. In McRO, the court examined the specification, which described the claimed invention as improving computer animation through the use of specific rules, rather than human artists. Further, the court indicated that it was the incorporation of the particular claimed rules in computer animation that “improved [the] existing technological process”, unlike cases such as Alice where a computer was merely used as a tool to perform an existing process. The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools for the purpose of accuracy and efficiency.
The arguments move on to the rejection under 35 U.S.C § 102 (remarks pages 14-16) where the Applicants position is that the claims are no longer anticipated by the cited prior art reference as claim 22 was not rejected in the prior Office Action and the content of claim 22 has been moved to claims 18 and 34.
The Examiner has withdrawn the rejection in view of the amendments.
In summary, the rejection under 35 U.S.C § 101 remains and is applied against claims 18-37. The rejection under 35 U.S.C § 102 has been withdrawn. The claims are not in condition for allowance.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/DYLAN C WHITE/Primary Examiner, Art Unit 3683 December 3, 2025