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 .
Status of Claims
This action is in reply to the communications filed on March 12, 2026. The Applicants’ Amendment and Request for Reconsideration has been received and entered.
Claims 1, 3-5, 8-9, 11-12, 14-15, 17, and 21-24 are currently pending and have been examined. Claims 1, 9, 12, and 15 have been amended. Claims 6-7, 13, and 18-19 have been canceled.
The previous rejection of claim 18 under 35 USC 112(b) has been withdrawn.
Response to Arguments
Applicants’ amendments necessitated any new grounds of rejection.
The previous rejection of claim 18 under 35 USC 112(b) has been withdrawn in view of the cancellation of claim 18.
Applicants’ arguments regarding the rejection under 35 USC 101 have been fully considered but they are not persuasive. Applicants argue at pages 9-10 of Applicants’ Reply dated March 12, 2026 (hereinafter “Applicants’ Reply”) that the “present disclosure is directed to reconciliation of disputes in virtual world transactions. The present disclosure describes the difficulty in online dispute resolution (ODR) in a virtual world due to lack of a trusted third party when a second user disputes a transaction after receiving a physical object delivered as a result of a transaction in a virtual world.” Applicants further argue at page 10 of Applicants’ Reply that the “claimed features of amended claim 1 address this computer-centric problem by providing automated reconciliation of disputes in virtual world transactions using computer vision techniques to determine values of attributes of a digital rendering and compare those values to a list of attributes.” The Examiner respectfully disagrees.
First, per MPEP 2106.05(a), improvements to computer functionality include a modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage; inventive distribution of functionality within a network to filter Internet content; a method of rendering a halftone digital image; a distributed network architecture operating in an unconventional fashion to reduce network congestion while generating networking accounting data records; a memory system having programmable operational characteristics that are configurable based on the type of processor, which can be used with different types of processors without a tradeoff in processor performance; technical details as to how to transmit images over a cellular network or append classification information to digital image data; a particular structure of a server that stores organized digital images; a particular way of programming or designing software to create menus; a method that generates a security profile that identifies both hostile and potentially hostile operations, and can protect the user against both previously unknown viruses and "obfuscated code," which is an improvement over traditional virus scanning; an improved user interface for electronic devices that displays an application summary of unlaunched applications, where the particular data in the summary is selectable by a user to launch the respective application; a specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers; and a specific method of restricting software operation within a license.
Per MPEP 2106.05(a), some examples that the courts have said “may not be sufficient to show an improvement in computer-functionality” include generating restaurant menus with functionally claimed features; accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer; mere automation of manual processes, such as using a generic computer to process an application for financing a purchase; recording, transmitting, and archiving digital images by use of conventional or generic technology in a nascent but well-known environment, without any assertion that the invention reflects an inventive solution to any problem presented by combining a camera and a cellular telephone; affixing a barcode to a mail object in order to more reliably identify the sender and speed up mail processing, without any limitations specifying the technical details of the barcode or how it is generated or processed; instructions to display two sets of information on a computer display in a non-interfering manner, without any limitations specifying how to achieve the desired result; providing historical usage information to users while they are inputting data, in order to improve the quality and organization of information added to a database, because "an improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality”; and arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly.
With this guidance in mind, the Examiner respectfully asserts that the claims are not directed to a computer-centric problem. Instead, online dispute resolution appears to be mere automation of a manual dispute resolution process. While Applicants have asserted that there is “lack of a trusted third party” in the online world, they have not indicated why the lack of a trusted third party is specific to the online world, i.e., why is this a computer-centric problem. Instead, the lack of a trusted third party is also present in the non-Internet world, leading to the creation of inspection services, escrow services, arbitration services, etc. Thus, the Examiner respectfully asserts that online dispute resolution is not a computer-centric or technology-oriented problem.
Applicants further argue at page 11 of Applicants’ Reply that amended claim 1 “recites a specific computer-implemented process that uses computer vision techniques applied to a digital rendering and comparison of attribute values [to] a list of attributes.” The Examiner respectfully disagrees.
First, the Examiner notes that “computer vision techniques” are very broadly recited and lack details as to how computer vision is actually applied to the digital rendering as well as details about how specific attributes are actually determined from the digital rendering. For example, how is the digital rendering analyzed, i.e., from all angles, internal scans, size, color, shape, texture, etc. in order to determine attributes?
Further, regarding the comparison of attribute values to a list of attributes, there is very little detail regarding this comparison and the rules that govern the comparison. For example, claim 1 recites “making, by the processor set, a determination that the physical object matches or does not match the virtual world rendering of the object based on whether values of compared attributes are sufficiently similar.” The Examiner respectfully asserts that this does not provide an automated method of dispute resolution because there is no objective method for determining a match. In other words, to determine a match, is there a threshold number of attributes that must be sufficiently similar to the list of attributes? Must more than 50% of the attributes be sufficiently similar to the list of attributes? Are some attributes more important than others for determining a match? Etc.
Further, claim 1 recites “automatically reconciling, by the processor set, the dispute involving the transaction in the virtual world using the determination.” The Examiner respectfully asserts that this does not provide an automated method of dispute resolution because there is no objective method for reconciling the dispute. In other words, how is the dispute reconciled? If the determination is that there is/is not a match, how is the dispute reconciled? Is this an automated process based on rules?
Further, Applicants reference the Desjardins decision at page 12 of Applicants’ Reply. Per the Appeal Review Panel Decision in Ex parte Desjardins, per MPEP 2106.04(d)(1), “the specification identified the improvement to machine learning technology by explaining how the machine learning model is trained to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting,” and that the claims reflected the improvement identified in the specification. Indeed, enumerated improvements identified in the Desjardins specification included disclosures of the effective learning of new tasks in succession in connection with specifically protecting knowledge concerning previously accomplished tasks; allowing the system to reduce use of storage capacity; and the enablement of reduced complexity in the system. Such improvements were tantamount to how the machine learning model itself would function in operation and therefore not subsumed in the identified mathematical calculation.”
With this in mind, the Examiner respectfully notes that, in Ex parte Desjardins, the claim reflected the technological improvement because the claim identifies how the machine learning model is actually trained, i.e., assigning values and using training data to adjust those values to optimize a particular function. However, Applicants’ instant claims do not recite any specific rules or policies that the system follows/implements in order to determine if there is actually a match between the object and the physical object and how to automatically reconcile the dispute based on the determination.
Applicants further argue at page 13 of Applicants’ Reply that, similar to McRO, “where the Federal Circuit held that claims applying specific computational rules to data were not directed to the abstract idea. Here, the claimed use of computer vision techniques to determine attribute values for respective attribute types and to compare those values using sufficiently similar alternative values constitutes a defined technical process, not a mental abstraction.” There Examiner respectfully disagrees.
Per MPEP 2106.05(a), the "basis for the McRO court's decision was that the claims were directed to an improvement in computer animation. The court relied on the specification's explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated." Further, the "McRO court indicated that the incorporation of the particular claimed rules in computer animation 'improved [the] existing technological process', rather than merely used the computer [as] a 'tool to automate conventional activity." Further, the "McRO court also noted that the claims at issue describe a specific way (use of particular rules to set morph weights and transitions through phonemes) to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters and thus were not directed to an abstract idea."
With this guidance in mind, McRO, like Ex parte Desjardins, specified a particular way to solve the technological problem with a particular process and rules. The Examiner respectfully asserts that the instant claims do not do this. First, regarding computer vision, as discussed above, “computer vision techniques” are very broadly recited and lack details as to how computer vision is actually applied to the digital rendering as well as details about how specific attributes are actually determined from the digital rendering using computer vision. Further, as discussed above, Applicants’ instant claims do not recite any specific rules or policies that the system follows/implements in order to determine if there is actually a match between the object and the physical object and how to automatically reconcile the dispute based on the determination. There is merely the recitation of making a determination of whether there is a match and then automatically reconciling the dispute based on the determination. However, there are no specific processes or rules or algorithms for the system to use to determine whether there is a match and what to do based on that determination. Thus, the rejection is maintained.
Applicants’ remaining arguments regarding the rejections under 35 USC 101 have been fully considered but they have either been addressed above or they are moot in view of the new grounds of rejection.
Applicants’ arguments regarding the rejections under 35 USC 103 have been fully considered but they are moot.
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, 3-5, 8-9, 11-12, 14-15, 17, and 21-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent claims 1, 9, and 15 recite a method, a computer program product, and a system for determining if a virtual world rendering of an object matches a physical object. With respect to claim 1, claim elements providing the list of attributes to a second user, defining at least one alternative value for at least one of the list of attributes, determining values of attributes of the digital rendering, comparing the determined values of attributes to respective values in the list of attributes, determining whether at least one of the corresponding respective values is sufficiently similar, making a determination that the physical object matches or does not match the virtual world rendering of the object, automatically reconciling the dispute involving the transaction, and notifying the first and second user of the determination, as drafted, illustrate a series of steps that, under their broadest reasonable interpretation, cover a mental process. That is, other than reciting (in claims 1 and 15) that a processor performs the method, nothing in the claim precludes the steps from practically being performed in the mind. Claims 9 and 15 recite similar limitations.
The judicial exception is not integrated into a practical application. In particular, claims 1, 9, and 15 recite receiving/retrieving data. Further, claim 15 recites adding data. These limitations are considered to recite insignificant extra-solution activity. Further, claim 15 recites one or more computer readable storage media and claims 1 and 15 recite a processor. These elements are recited at a high level of generality i.e., as generic computer components performing generic computer functions. Accordingly, these additional elements 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, 9, and 15 are directed to the abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, claims 1, 9, and 15 recite receiving/retrieving data and claim 15 recites adding data. Per MPEP 2106.05(q)(II), elements such as receiving or transmitting data over a network, using the Internet to gather data, and storing and retrieving information in memory are considered to be computer functions that are well-understood, routine, and conventional functions. See Versata Dev. Group, inc. v. SAP Am, inc., 793 F.3d 1306, 1334, 115 USPG2d 1681, 1701 (Fed. Cir. 2015). OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1368, 115 USPQ2d 1090, 1093 (Fed. Cir. 2075) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1360, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2074) (computer receives and sends information over a network)).
Further, as discussed above, claim 15 recites one or more computer readable storage media and claims 1 and 15 recite a processor. These elements are recited at a high level of generality (i.e., as generic computer components performing generic computer functions). Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Claims 3-5, 8-9, 11-12, 14-15, 17, and 21-24 depend from claims 1, 9, and 15. Claim 3 is directed to determining that the physical object matches the virtual world rendering and causing payment to be provided and is further directed to the abstract idea. Claim 4 is directed to determining that the physical object does not match the virtual world rendering and causing payment to be returned and is further directed to the abstract idea. Claims 5, 11, and 17 are directed to the virtual world rendering being viewable in the virtual world and are further directed to the abstract idea. Claims 8 and 14 are directed to storing and retrieving data which, as discussed above, are considered to be computer functions that are well-understood, routine, and conventional. Claim 12 is directed to the type of algorithm used in conjunction with the computer vision and is further directed to the abstract idea. Claim 21 is directed to the block of the blockchain and is further directed to the abstract idea. Claim 22 is directed to displaying the list of attributes which, as discussed above, is a function that is well-understood, routine, and convention. Claim 23 is directed to the second user providing input and is further directed to the abstract idea. Claim 24 is directed to the first user providing a certification regarding the list of attributes and is further directed to the abstract idea.
Thus, the claims are not patent eligible.
Potentially Allowable Subject Matter
Claims 1, 3-5, 8-9, 11-12, 14-15, 17, and 21-24 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 set forth in this Office action.
With respect to claim 1, the prior art of record, alone or combined, neither anticipates nor renders obvious, a method comprising: receiving, by a processor set, and as part of a transaction in a virtual world, a list of attributes of a virtual world rendering of an object for sale by a first user, the list of attributes having been created by the first user; providing, by the processor set, the list of attributes to a second user prior to completion of the transaction in the virtual world; defining, by the processor set, at least one sufficiently similar alternative value for at least one of the list of attributes; in response to the second user initiating a dispute involving the transaction in the virtual world, receiving, by the processor set, a digital rendering of a physical object provided to the second user as a result of the transaction in the virtual world; determining, by the processor set, using one or more computer vision techniques, values of attributes of the digital rendering for respective attribute types included in the list of attributes; comparing, by the processor set. the determined values of attributes of the respective attribute types to corresponding respective values in the list of attributes, including determining whether at least one of the corresponding respective values is sufficiently similar based on the at least one sufficiently similar alternative value; making, by the processor set, a determination that the physical object matches or does not match the virtual world rendering of the object based on whether values of compared attributes are sufficiently similar; automatically reconciling, by the processor set, the dispute involving the transaction in the virtual world using the determination; and notifying, by the processor set, the first user and the second user of the determination that the physical object matches or does not match the virtual world rendering of the object.
With respect to claims 9 and 15, the prior art of record, alone or combined, neither anticipates nor renders obvious, a computer program product and a system reciting similar features.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNE MARIE GEORGALAS whose telephone number is (571)270-1258 E.S.T.. The examiner can normally be reached on Monday-Friday 8:30am-5:00pm.
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/Anne M Georgalas/
Primary Examiner, Art Unit 3689
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