DETAILED ACTION
This Office Action is in response to Applicants Request for Continued Examination received on June 8, 2026. 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 and 34 in the response filed on June 8, 2026. Claims 1-17 and 22 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 34. Claim 18 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;
receiving validation of the object information from an administrator device;
adding 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;
receiving one or more proposals to acquire or receive the object from one or more donee devices;
receiving 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
receiving 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,
automatically physically shipping the one or more matched objects to the donee;
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.
Claims 19-21, 26-29, 31, 32, and 36 are considered under MPEP 2106.05(d)II. iii. Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
Claim 23, 25 are covered by MPEP 2106.05(f)(2) v. Requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370-71, 115 USPQ2d 1636, 1642 (Fed. Cir. 2015);
Claim 24 and 37 are drawn to MPEP 2106.05(d)II. i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network);
Claims 30, 33 and 35 are directed to MPEP 2106.05(d)II. Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1316, 120 USPQ2d 1527, 1549 (Fed. Cir. 2016), BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1348, 119 USPQ2d 1236, 1241 (Fed. Cir. 2016). Courts have held computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking).
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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 18-21, 23-37 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.
Regarding claim 18, the Applicant has amended the claim limitations to include “automatically physically shopping the one or more matched objects to the donee”. The limitation is found as indefinite since the disclosure does not automatically ship the object.
The disclosure states [0148] that the system may automatically prompt all of the registered users of the curatorial staff of the done museum to provide shipping arrangements for scheduling the pickup for the object. The prompt may be generated in form of an email. The prompt may include a request for assigning a shipping arrangement agent for providing shipping arrangements for scheduling the pickup for the object. This is an exchange of information in the forming of an electronic communication regarding the eventual shipping of the object. While this eventually results in the moving of the object it does not eliminate the judicial exception using the exchange of information regarding shipping including but not limited to address of pickup, time, instructions for packing and handling, restrictions, dimensions, weight, and fragility. An automatic prompt to one or more humans to perform one or more actions regarding shipping of the object is not indicative of the system actually shipping the physical object. It’s managing human behavior to perform a task related to the donation.
Claim 34 suffers the same deficiency. The remaining claims are rejected as dependents of either 18 or 34.
Response to Arguments
Applicant's remarks begin on page 9 of the response with the summary of the claim amendments. The Applicants position is that the amended language of “automatically physically shipping the one or more matched objects to the transferee” and the support is in the specification.
In response to the rejection under 35 U.S.C § 101, the Applicant argues the amended claim language is added to make even more apparent the physical and thus patentable nature of the instant claims. Applicant argues that physically shipping an object cannot be performed in the mind (i.e telekinetically). The other elements of the impugned independent claims are performed in service to ultimately shopping physical goods between a donor and donee (or lender and borrower).
The Examiner disagrees with the position. The disclosure does not support the limitation as written in the limitation. Also, the Applicant expressed within their own argument that “are performed in service to ultimately shipping the physical good between donor and donee”. This makes it clear that the steps involved are to eventually ship the object, however the automatic element of the limitation is merely to provide information regarding the eventual shipping. The computer or electronic device do not perform the shipping nor do the automatically send the commands to a shipping company to handle the shipping. The automatic step is simply to send the pertinent information, pickup schedule, object description, dimensions, weight, and instructions to another person. This is not indicative of integration into a practical application, rather mere use of computers and the technological field to exchange information.
The Applicants direction to the paragraph of the specification include [0128-0129]
The donor submits the donor preliminary information including the physical address to pick up the object, the contact information of the donor or his/her representative responsible for the shipping and general availability. In general availability, the donor may provide a preferred time and location for pickup of the object, restrictions, and if an pre-shipping inspections.
Additionally, the donor may provide object shipping information to facilitate the donee museum with arranging shipping and preparing a loan agreement. The object shipping information includes the weight of the object, whether the object is framed, the dimensions of the object (height, width and depth). The donor may provide condition notes to describe any fragility or handling concerns pertaining the conditions of the object. The donor may provide an insurance value of the object for shipping purposes.
This is simply information related to shipping the object and is not considered automatically shipping the object in the context of the claim limitation. The donor providing an address and additional instructions is merely an exchange of information.
Paragraphs [0138, 0148, 0151] do not remedy the issue. Consideration of shipping the object as a loan is part of the consideration or contract. Not indicative of automatic shipping. Paragraph [0148] describes the “automatic” prompt of registered users of the curatorial staff of the done museum to provide shipping arrangements. This is merely information or notification that it needs to be done. This is managing personal behavior or relationships and transmitting and receiving information over a network.
Paragraph [0151] is a step in the flow chart of Fig. 6, where shipping occurs at step 610. This is not indicative of automatically shipping the object. It’s a step in the process.
The Examiner also previously answered the same argument in the Final Rejection mailed on December 9, 2025. “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.”
In summary, the rejection under 35 U.S.C § 101 remains and is applied against claims 18-21, 23-37. The application is not in condition for allowance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DYLAN C WHITE whose telephone number is (571)272-1406. The examiner can normally be reached M-F 7:30-4:00 EST.
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/DYLAN C WHITE/Primary Examiner, Art Unit 3683 June 25, 2026
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