DETAILED ACTION
Status of Claims
Claims 1, 11, and 20 are currently amended.
Claims 1-20 are currently pending and have been examined.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/02/2026 is being considered by the examiner.
Response to Arguments
Double Patenting
Applicant's arguments and amendments filed 12/23/2025 with respect to the Double Patenting Rejection have been fully considered but they are not persuasive. While Applicant has amended the claims, the Double Patenting Rejection still remains. See rejection below.
35 USC 101
Applicant's arguments and amendments filed 12/23/2025 with respect to the 35 USC 101 Rejection have been fully considered but they are not persuasive. Applicant argues that the judicial exception is integrated into a practical application and is similar to Enfish because it reflects an improvement to computer system performance including reduced computational overhead, allowing faster avatar rendering via product record-based model selection, reducing end-to-end latency for user interface updates, and improving scalability across repeated and concurrent requests. Examiner respectfully disagrees. The claimed invention is not commensurate in scope with the alleged improvements in the remarks. The claims merely describe details to receiving a request to evaluate an item, identifying a plurality of closet items, determining a percentage value representing a number of closet items compatible with the item, identifying a personalized digital avatar associated with the user account and being generated by combining images uploaded to the user account with product record data associated with the item, and displaying the percentage value and digital avatar wearing the item and does not rise to the technical solution to a technical problem alleged in the remarks.
On page 8, the remarks include that the system generates the avatar by combining previously stored user image data with the product record data already maintained in a structured database thereby reducing the need for repeated image acquisition, body model recalculation, and full avatar construction pipelines at request time thereby lowering processor load and memory usage during runtime. However, as currently written, the claimed invention describes “identifying a personalized digital avatar associated with the user account, the personalized digital avatar being generated by combining one or more images uploaded to eh user account with product record data associated with the item.” There is nothing in the claims (nor in Applicant’s Specification) that recites a reduction of computational overhead that lowers processor load and memory usage during runtime. Applicant continues to describe how the invention allows for faster avatar rendering by a graphics processing module assembling the avatar model data using predefined mappings between user data and product data, thereby reducing GPU/CPU cycles required to generate the avatar. However, again, these details are not recited in the claimed invention. Clarification as to how the claimed invention accomplishes the technical solution is not detailed in the claimed invention in a technical manner. Rather, Applicant merely provides conclusory statements with the additional elements recited at a high level of generality.
On page 9, Applicant further argues that because the avatar is generated by combining stored user images with stored product record data that the system generates and transmits avatar model data with minimal round trip delay and minimizes back-and-forth communication with client devices thereby reducing end-to-end latency. Again, there is nothing in the claims nor the Specification that discloses the claimed invention solving the technical problem of reducing latency. Rather, the avatar is generated in a generic manner by retrieving stored data. There is nothing regarding “the architecture” that minimizes back-and-forth communication, how it avoids real-time image capture, or external processing calls. Clarification as to how the claimed invention accomplishes the technical solution is not detailed in the claimed invention in a technical manner.
On page 9, Applicant argues that using the same avatar reduces contention for processing resources thereby improving overall system throughput and responsiveness. However, as currently claimed, the claimed invention is merely identifying information (i.e., digital avatar) from the user account. There is nothing regarding subsequent avatar generation inputs that are cached and reused as well as multiple evaluation requests being handled concurrently. Instead, it appears to be generic data retrieval from an account.
On pages 9-10, Applicant argues that he claims are not merely recited at a high level of generality but instead recite a specific data-combination technique. Examiner respectfully disagrees. There is nothing in the claims that goes into detail regarding a “specific data-combination technique.” It only uses the term “combining” with regard to generating an avatar using images uploaded to the user account with product record data associated with the item. There is nothing how this “combining” is some sort of specific data-combination operation that leverages persistent storage architecture to achieve performance improvements, as well as that it is not a generic instruction to use a computer as a tool. The additional elements are claimed at a high level of generality and do not amount to a particular device or unconventional device. Rather, the additional elements are generic components that act to generally link the abstract ideas to a particular environment, e.g., computing environment. The avatar is merely described as being part of the user account and generated by combining various data. The type of data (images/product record) combined is not a technical improvement. Thus, the claimed additional elements are generic elements that merely generally link the abstract idea to a particular computing environment and are not applying the judicial exception in a meaningful way.
Examiner recommends amending the claims to reflect the alleged improvements to be commensurate in scope and as supported with the disclosure. However, it is noted without specific amendments to consider, the examiner does not concede this alone may overcome the rejection under 35 USC 101.
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.
US Patent 12,008,619
Claims 1, 4-5, 9-11, 14-15, and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 8-9, 11-13, and 18-20 of U.S. Patent No. 12,008,619 (Application number 17/700175). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the patented claims.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1, as exemplary, recites the abstract idea of receiving a request to evaluate an item, the request being associated with a user account; identifying a plurality of closet items associated with the user account; determining a percentage value representing a number of closet items from the plurality of closet items that are compatible with the item; identifying a personalized avatar associated with the user account; and causing display of the percentage value and personalized avatar wearing the item.
These recited limitations fall within the “Certain Methods of Organizing Human Activities” grouping of abstract ideas as it relates to commercial interactions of sales activities or behaviors. Accordingly, the claim recites an abstract idea. See MPEP 2106.
This judicial exception is not integrated into a practical application. The examiner acknowledges that the representative claim 1 does recite additional elements including a system comprising one or more hardware processors and a non-transitory computer-readable medium, personalized digital avatar generated by combining one or more images uploaded with product record data, and user interface on a device. Although reciting these additional elements, taken alone or in combination these elements are recited at a high-level of generality (i.e., as a generic device performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. In this case, as noted above, the additional elements recited in independent claim 1 are recited and described in a generic manner merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Even when considered as an ordered combination, the additional elements of representative claim 1 do not add anything that is not already present when they are considered individually. In Alice, the court considered the additional elements “as an ordered combination,” and determined that “the computer components...‘ad[d] nothing. ..that is not already present when the steps are considered separately’... [and] [v]iewed as a whole...[the] claims simply recite intermediated settlement as performed by a generic computer.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, (2014) (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, when viewed as a whole, representative claim 1 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in representative claim 1 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
As such, representative claim 1 is ineligible.
As for dependent claims 2-10, these claims recite limitations that further define the same abstract idea noted in claim 1. Therefore, claims 2-10 are considered patent ineligible for the reasons give above. Thus, dependent claims 2-10 are ineligible.
Independent claims 11 and 20 recite the same abstract idea represented in representative claim 1. Substantially similar to Intendent Claim 1, Independent claim 11 recites the additional elements of a personalized digital avatar and user interface on a device. Substantially similar to Independent Claim 1, Independent claim 20 recites the additional elements of a non-transitory computer-readable medium, one or more hardware processors, a personalized digital avatar, and a user interface on a device. The additional elements in Independent claims 11 and 20 do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea for the reasons described above with respect to claim 1.
Similarly, the dependent claims 12-19 do not recite additional elements supplemental those recited in claims 2-10. Therefore, the additional elements to not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea for the reasons described above with respect to claims 2-10, respectively. Thus, dependent claims 12-19 are also ineligible.
Subject Matter Free of Prior Art
As discussed in the 09/26/2025 Office Action, Claims 1, 11, and 20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 and Double Patenting, set forth in this Office action. Claims 2-10 and 12-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101 and Double Patenting, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of subject matter free of prior art:
The Examiner hereby asserts that the totality of the evidence neither anticipates nor renders obvious the particular combination of elements as claimed. That is, the Examiner emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for combining or otherwise modifying the available prior art to arrive at the claimed invention. The combination of features as claimed would not be obvious to one of ordinary skill in the art because any combination of the evidence at hand to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias.
One piece of pertinent prior art is Juan et al. (US 2014/0279186) disclosing providing access to a digital wardrobe upon request form a user and facilitating creation of at least one combination outfit of a first wearable item and other wearable items, identifying wearable items purchased by the user in their digital wardrobe, determining a percentage value of the plurality of closet items that are compatible with the first item. See at least paragraph [0033], [0038], [0044]. Another piece of pertinent prior art is Paul (US 2015/0186965) disclosing displaying an indication of compatibility. See at least paragraph [0014], [0023]-[0024], Figs. 10-11. Another piece of pertinent prior art is Adeyoola et al. (US 2014/0176565) disclosing receiving one or more images of a user associated with the user account and generating personalized digital avatar that resembles the user based on the one or more images. See at least paragraph [0028], Fig. 5-6. Another piece of pertinent prior art is Tang (US 2014/0201023) disclosing a virtual fitting process that captures image of consumer and processes images of apparels and the consumer to give visual result of consumer wearing the apparels. See at least paragraph [0019]. Another piece of pertinent prior art is Di (US 2015/0302505) disclosing receiving an image of a user and a set of spatial data to identify fashion preferences of user within an inventory of fashion items and generate a recommendation. See Abstract. Another piece of pertinent prior art is Ajala (US 2014/0188670) disclosing a graphical representation of a user having dimensions of the person to determine whether a particular article of clothing may fit the persons dimension. See at least Abstract. Another piece of prior art is NPL: “50 ways to update your wardrobe for cheap” (Marcin, Ashley, “50 ways to update your wardrobe for cheap”, 2014, April 11, Wisebread, pps. 1-17.) disclosing determining a cost per use of the first item based on the number of outfits. See at least pages 4 and 6. However, none of these pieces of prior art, nor any others anticipate nor render obvious the particular combination of elements as claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITTANY E BARGEON whose telephone number is (571)272-2861. The examiner can normally be reached Monday-Friday 9:00am to 6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey A Smith can be reached at (571) 272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.E.B/Examiner, Art Unit 3688
/Jeffrey A. Smith/Supervisory Patent Examiner, Art Unit 3688