DETAILED ACTION
This action is in reply to the submission filed on 2/11/2026.
Status of Claims
Applicant’s cancellation of claim 57, and amendments to claims 43, 47-49, 55 and 57 are acknowledged.
Claims 43-55 and 57 are currently pending and have been examined.
Request for Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/11/2026 has been entered.
Response to Remarks
Applicant's remarks filed 2/11/2026 have been fully considered and have been found not persuasive in full. The amendments overcome the art of record, but are still subject matter ineligible, as the combination of a graphical user interface, user access terminal, server, application, controller executing software, memory, data store, communications interface, and a network being used to perform the process of data analysis relating to pricing of gemstones, and presenting said analysis to user is seen as applying said abstract idea to computing technology in its ordinary capacity to perform said exception. Enabling said exception to enjoy the benefits of, and perform as expected in, a networked computer environment, using the combination of the claimed components, is not significantly more, or a practical application of said abstract idea. The additional elements are integrated at level that does not significantly limit a monopoly on the abstract idea, in the realm of networked computing environments.
Regarding pages 7-10 of remarks, the claimed algorithm effectively calculates an average price from a database of different prices. This is not seen as a technical solution to a technical problem, even in combination with the rest of the additional limitations. Querying databases, aggregating data, calculating average prices, and computing markup and markdown prices is seen as sales/marketing/business activity. Using computers to connect to online platforms is seen as generally linking said exception to a technological field. Automating business processes is not an improvement in computing technology.
Additionally, even if the claims necessarily required network communication protocols, API integration, and coordinated simultaneous querying of multiple external databases, the combination of implementing said technology with computer algorithms aggregating and analyzing data for calculating averages and percentages, and generating historical data analysis is seen as using computing technology in its ordinary capacity to perform the abstract idea of sales and marketing activities. The posited improvements to gemstone inventory management would be seen in the exception itself, not in the ordered combination of additional elements used to link the idea to a technical environment. Said elements are used in their ordinary capacity to perform the idea, and are further seen as automating a business process; said elements as claimed do not solve a technological problem of gemstone inventory management by providing pricing transparency.
Regarding page 7 of remarks, MPEP 804(I)(B)(1) states a complete response to a NSDP rejection is either a showing the claims are distinct or filing a terminal disclaimer, and such a filing should not be held in abeyance, and omission should be treated by MPEP 714.03, which deals with not fully responsive amendments. Then, the double patenting rejection is reiterated, in light of the amendments.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 43-48, 50 and 55-56 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/781,339 (‘339) in view of Thuesen (US 2017/0357993). Claim 49 is likewise rejected over ‘339 in view of Thuesen and Taira (US 2015/0206162). Claims 51-54 are likewise rejected over ‘339 in view of Thuesen and Almogy (US 2019/0152634). Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of claims 43-57 can be found in ‘339 with the exception of the arrangement grid of gemstones, displaying historical pricing data, and calculating price discounts. It would have been obvious to combine ‘339 with Thuesen, Taira and Almogy for the same reasons it would have been obvious to combine Thuesen, Taira and Almogy with Gambhir, outlined in current/present art rejection.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 43-55 and 57 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: the claims fall under statutory categories of processes and/or machines.
Step 2A Prong 1: the claims recite: interacting with a user to engage with an inventory of gemstones by accessing the inventory, presenting a user with an option to select a gemstone presented in either or both electronic or physical state, receiving the user option decision of selection of stone/presenting a stone, construct a query based on stone type and characteristics that are stored in a data store, initiate the query in trading platforms for same type and characteristics, aggregating all pricing, calculating average pricing for dealer/wholesale/retail, said retail is greater than dealer/wholesale price; and presenting the user with pricing and a historical chart of pricing. These limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, specifically commercial interactions, including advertising, marketing or sales activities and business relations. Coordinating multiple suppliers to share inventory data, and accomplishing price changing and for said inventory and presenting for consumer interest is in the realms of business relations, advertising and marketing/sales activities. Further, the claims are directed to following rules and instructions, and managing personal behavior.
Step 2A Prong 2: Said judicial exception is not integrated into a practical application because the claims as a whole, looking at the additional elements: server, application executing an algorithm, controller to execute software, memory, data store, communications interface, a network, a GUI, one or more user access terminals, online gemstone trading platforms, individually and in combination, merely use a computer or other machinery as a tool to perform the abstract idea (see MPEP 2106.05f.) The claims use these machines in their ordinary capacity, including the characterization of “automatically” and “simultaneously” initiating queries and calculating “live” prices, for the purpose of applying the abstract idea(s). Therefore, these limitations are invoking computers or other machinery merely as a tool to perform an existing process, such that it amounts to no more than mere instructions to apply the exception. Then, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea, and the claim is directed to an abstract idea. Additionally, the said elements are generally linking the use of the exception to a field of use such as online trading platforms and e-commerce.
Step 2B: Said claims recite additional elements as listed above, which are not sufficient to amount to significantly more than the judicial exception because, as mentioned in Step 2A Prong 2, they use computers or other machinery to perform an abstract idea in such a way that amounts to no more than mere instructions to apply the exception using computers or other machinery. Mere instructions to apply an exception using computers or other machinery cannot provide an inventive concept. Therefore, the claim is not patent eligible.
Claim 44 recites a pricing application. This is interpreted as a broadly claimed computer product and is not subject matter eligible: see analysis above. Claims 45-54 and 57 recite limitations concerning data analysis and sales activities and are part of said abstract idea(s).
For these reasons the claims are not subject matter eligible.
Reasons why the Claims Would be Allowable over Prior Art
The following is a statement of reasons for the indication of allowable subject matter:
No prior art has been found that teaches the claimed limitations of automatically calculate in real-time an average live market dealer/wholesale price of the aggregated live market dealer/wholesale pricing data; automatically calculating in real-time a retail price for the selected gemstone based on the calculated average live market dealer/wholesale price, wherein the calculated retail price is a pre-defined amount greater than the calculated average live market dealer/wholesale price, wherein the retail price is a price at which the retailer would sell the gemstone to the user; automatically calculating in real-time a buy price for the selected gemstone based on the calculated average live market dealer/wholesale price, wherein the calculated buy price is a pre-defined amount less than the calculated average live market dealer/wholesale price, wherein the buy price is a price at which the retailer would buy the gemstone from the user; and presenting the user with the calculated average live market dealer/wholesale price, the calculated retail price for the selected gemstone, and the calculated buy price for the selected gemstone via a graphical user interface and displaying the calculated prices along with a historical chart showing one or more of the average dealer/wholesale price, retail price, and buy over a defined period of time, in combination with the other limitations found within the independent claim(s). Applicant’s remarks filed 2/11/2026, pages 11-16, are persuasive when positing reasons commensurate in scope with the claim limitations for allowability over prior art.
The closest prior art that reads on the claims are: Gambhir (US 2006/0095346). Gambhir teaches a multi network of inventory sharing in gemstone markets, but does not teach price transparency by showing buy, wholesale and retail pricing, or aforementioned limitations above. In summation, Applicant' s claims are distinct from the closest prior art. For these reasons, the 103 rejections are overcome.
The examiner notes the cited limitations above in combination with the other limitations found within the independent claim(s) are found to be allowable over the prior art of record. Independent claims recite the quoted allowable subject matter or substantially similar language. Accordingly, the claims and their dependent claims are allowable over the prior art for the reasons identified.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aaron Tutor, whose telephone number is 571-272-3662. The examiner can normally be reached Monday through Friday, 9 AM to 5 PM.
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/AARON TUTOR/Primary Examiner, Art Unit 3627
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