DETAILED ACTION
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, 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 30, 2026 has been entered.
Status of the Claims
Claims 1, 3-19, and 21-22 were previously pending. Claims 1, 14, 18, and 22 were amended, claim 21 was canceled, and new claim 23 was added in the reply filed June 30, 2026. Claims 1, 3-19, and 22-23 are currently pending.
Response to Arguments
Applicant's arguments filed with respect to the rejection made under § 101 have been fully considered but they are not persuasive. "Claim 1 as amended recites 'automatically performing, by the computing device without user interaction and responsive to the determining, an operation to resolve an item return request associated with the item based on a result of the determining, the operation including communicating to a recipient computing device that the item return request is approved or cancelling the item return request.' This amendment reflects a specific technological improvement directed toward how the computing device itself operates to resolve disputes." Remarks, 9. Resolving disputes is not a technology to be improved and instead falls within the abstract category of certain methods of organizing human activities. As set forth in the previous Office Actions, automating this activity via generic computers used as tools is not patent-eligible. "In sum, 'software can make non-abstract improvements to computer technology just as hardware improvements can.' Enfish, 822 F.3d at 1335. But to be directed to a patent-eligible improvement to computer functionality, the claims must be directed to an improvement to the functionality of the computer or network platform itself." Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) (emphasis added).
Applicant's arguments that the claims improve the computer itself (Remarks, 9-10) are not persuasive for reasons already of record. Final Rejection mailed 4/22/2026, ¶ 6.
"Moreover, the Application explains that conventional manual review approaches are 'subjective' and 'can be subject to error,' resulting in 'incomplete consideration of all of the transaction information available' and 'inaccuracies.' Application, [0027]. By contrast, the claimed invention using one or more machine learning models to determine whether the item is not as described results in 'disputes [being] resolved more quickly and with increased accuracy relative to conventional approaches.' Application, [0035]. Remarks, 10. As above, this describes using a computer as a tool to increase the accuracy, efficiency, etc. of an abstract commercial interaction, which cannot confer eligibility. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) ("claiming the improved speed or efficiency inherent with applying the abstract idea on a computer [does not] provide a sufficient inventive concept"); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter."). "[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible." OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2359). "Finally, the claimed methods are not rendered patent eligible by the fact that (using existing machine learning technology) they perform a task previously undertaken by humans with greater speed and efficiency than could previously be achieved." Recentive Analytics, Inc. v. Fox. Corp., Fed Cir. No. 2023-2437 (Apr. 18, 2025), slip op. at 15. See also CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) aff’d, 134 S. Ct. 2347 (2014) ("[Sjimply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility." (citations omitted)). Accordingly, the rejection is maintained.
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, 3-19, and 22-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 1, 3-19, and 22-23, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., an abstract idea) without significantly more.
MPEP 2106 Step 1:
The claims are all directed to eligible classes of subject matter. Particularly, while claim 18 is directed to "a computer-readable storage medium," the disclosure provides a special definition that excludes transitory signals (published Specification, ¶ 0132).
MPEP 2106 Step 2A – Prong 1:
The claims recite an abstract idea reflected in the representative functions of the independent claims—including:
receiving an item listing of an item and a delivered condition description of the item;
identifying a marketed condition description of the item based on the item listing;
generating an edited marketed condition description describing attributes of the item based on keywords from the marketed condition description and an edited delivered condition description describing attributes of the item based on keywords from the delivered condition description;
comparing the edited marketed condition description with the edited delivered condition description;
determining whether the item is not as described by the item listing based on the comparing; and
performing, responsive to the determining, an operation to resolve an item return request associated with the item based on a result of the determining, the operation including communicating to a recipient that the item return request is approved or cancelling the item return request.
These limitations taken together qualify as a certain method of organizing human activities because they recite collecting, analyzing, and outputting information for confirming that delivered goods are in the condition in which they were marketed for sale and facilitating a return or a denial of the return of the goods (i.e., in the terminology of the 2019 Revised Guidance, commercial interactions (including marketing or sales activities or behaviors; business relations). Additionally, it recites processes that can be performed mentally (e.g., a person observing and mentally comparing listed/marketed conditions of items with their delivered conditions, and arriving at a judgment on whether or not they are significantly not as described and can be returned).
It shares similarities with other abstract ideas held to be non-statutory by the courts (see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)—obtaining and comparing intangible data, similar because at another level of abstraction the claims could be characterized as obtaining and comparing item condition data; Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)—process of gathering and analyzing information of a specified content, then displaying the results, similar because at another level of abstraction the claims could be characterized as process of gathering and analyzing information of item conditions, then displaying the results; Electronic Comm. v. Shopperschoice.com, LLC, 958 F.3d 1178, 1181 (Fed. Cir. 2020)—business practices designed to advise customers of the status of delivery of their goods, similar because at another level of abstraction the claims could be characterized as business practices designed to advise customers of the conditions of their delivered goods).
These cases describe significantly similar aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
MPEP 2106 Step 2A – Prong 2:
This judicial exception is not integrated into a practical application because there are no meaningful limitations that transform the exception into a patent eligible application. The elements merely serve to provide a general link to a technological environment (e.g., computers and the Internet) in which to carry out the judicial exception (computing devices, computer-readable storage media storing instructions which, when executed by the one or more computing devices, cause the one or more computing devices to perform operations, computer-readable storage medium storing executable instructions that, responsive to execution by one or more processing devices, causes the one or more processing devices to perform operations, machine learning models—all recited at a high level of generality). Although they have and execute instructions to perform the abstract idea itself (e.g., modules, program code, etc. to automate the abstract idea "without user interaction"), this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it."
Aside from such instructions to implement the abstract idea, they are solely used for generic computer operations (e.g., receiving, storing, retrieving, transmitting data), employing the computer as a tool. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.") (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,1256 (Fed. Cir. 2014)) (emphasis added). See also Recentive Analytics, Inc. v. Fox. Corp., Fed Cir. No. 2023-2437 (Apr. 18, 2025) (slip op. at 18) ("patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.").
The claims only manipulate abstract data elements into another form. They do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools to improve the functioning of the abstract idea identified above. Looking at the additional limitations and abstract idea as an ordered combination and as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Rather than any meaningful limits, their collective functions merely provide generic computer implementation of the abstract idea identified in Prong One. None of the additional elements recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
At the levels of abstraction described above, the claims do not readily lend themselves to a finding that they are directed to a nonabstract idea. Therefore, the analysis proceeds to step 2B. See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.") (citations omitted).
MPEP 2106 Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons as presented in Step 2A Prong 2 (i.e., they amount to nothing more than a general link to a particular technological environment and instructions to apply it there). Moreover, the additional elements recited are known and conventional computing elements (computing devices, computer-readable storage media storing instructions which, when executed by the one or more computing devices, cause the one or more computing devices to perform operations, computer-readable storage medium storing executable instructions that, responsive to execution by one or more processing devices, causes the one or more processing devices to perform operations, machine learning models—see published Specification ¶¶ 0113, 126 describing these at a high level of generality and in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy the statutory disclosure requirements). Although they have and execute instructions to perform the abstract idea itself (e.g., modules, program code, etc. to automate the abstract idea "without user interaction"), this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it."
The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, transmitting data—see Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these basic computer functions).
"The use and arrangement of conventional and generic computer components recited in the claims—such as a database, user terminal, and server— do not transform the claim, as a whole, into 'significantly more' than a claim to the abstract idea itself. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea." Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (citations and quotation marks omitted). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Dependent Claims Step 2A:
The limitations of the dependent claims but for those addressed below merely set forth further refinements of the same abstract idea identified above without changing the analysis already presented (i.e., they merely narrow the same abstract idea identified above by adding more certain methods of organizing human activities and mental steps, and without adding any new additional elements beyond it). Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment and instructions to implement the abstract idea as the independent claims (i.e., generic computers and generic machine learning models). Claim 5 adds a convolutional neural network or a generative adversarial network. Claim 8 adds the one or more machine learning models are trained. When viewed in combination, these generic elements merely specify the general link to a technological environment in which the abstract idea is performed.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. Although they add the elements identified in 2A above (convolutional neural network or a generative adversarial network, the one or more machine learning models are trained), these do not amount to significantly more for the same reasons they fail to integrate the abstract idea into a practical application. Moreover, the Specification also indicates this is the routine use of known components for the same reasons presented with respect to the elements in the independent claims above (see ¶¶ 0064, 113 describing these at a high level of generality and without technical specifics). Accordingly, they are not directed to significantly more than the exception itself, and are not eligible subject matter under § 101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL VETTER whose telephone number is (571)270-1366. The examiner can normally be reached M-F 9:00-6:00.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628
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