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 .
Status of Claims
This Office Action is in response to the communication filed on 04/30/2026.
Claims 10 and 20 have been previously cancelled.
Claims 1-9 and 11-19 are currently pending and are considered below.
Information Disclosure Statement
5. The information disclosure statement (IDS) submitted on 05/04/2026; 06/05/2026; 08/11/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
6. 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.
7. Claims 1-9 and 11-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,052,456. Although the claims at issue are not identical, they are not patentably distinct from each other because each reference claim anticipates the claim under examination.
Claim Rejections - 35 USC § 101
8. 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.
9. Claims 1-9 and 11-19 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. Representative claim 1, recites a system (a machine), which is a statutory class, configured to facilitate quality control of merchandise, the system comprising: one or more physical processors configured by machine-readable instructions to:
calculate a level of print resolution quality of a digital asset based on one or more of a dimension of the digital asset, a dimension of a printing area on physical merchandise, or a placement of the digital asset on the physical merchandise, the level of print resolution quality being a print resolution of the digital asset dictating how the digital asset will physically appear on the physical merchandise;
identify a potential recipient from a set of potential recipients as being eligible to receive the physical merchandise created using the digital asset based on a characteristic of the potential recipient being correlated with the level of print resolution quality calculated for the digital asset, wherein different characteristics are correlated with different levels of print resolution quality; and
authorize creation of the physical merchandise using the digital asset for the potential recipient by virtue of the potential recipient having the characteristic correlated with the level of print resolution quality calculated for the digital asset.
The steps of
calculating a level of print resolution quality of a digital asset based on one or more of a dimension of the digital asset, a dimension of a printing area on physical merchandise, or a placement of the digital asset on the physical merchandise, the level of print resolution quality being a print resolution of the digital asset dictating how the digital asset will physically appear on the physical merchandise;
identify a potential recipient from a set of potential recipients as being eligible to receive the physical merchandise created using the digital asset based on a characteristic of the potential recipient being correlated with the level of print resolution quality calculated for the digital asset, wherein different characteristics are correlated with different levels of print resolution quality; and
authorize creation of the physical merchandise using the digital asset for the potential recipient by virtue of the potential recipient having the characteristic correlated with the level of print resolution quality calculated for the digital asset,
as drafted, is a process that, under its broadest reasonable interpretation, covers a method of organizing human activity. Given the broadest reasonable interpretation, the claim recites a process to facilitate quality of benefit items created for subscribers of a membership platform. The above identified method steps recite commercial interactions such as sales activities and/or tailored personalized marketing relating to providing data associated with the person.
If a claim limitation, under its broadest reasonable interpretation, covers commercial interaction such as tailored personalized marketing, then it falls within the “certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of one or more processors. The one or more processors configured by machine-readable instructions are recited at a high-level of generality (i.e., as a generic processor performing a generic computer functions of
calculating a level of print resolution quality of a digital asset; identify a potential recipient from a set of potential recipients as being eligible to receive the physical merchandise; and authorize creation of the physical merchandise) such that they amount to no more than mere instructions to apply the exception using generic computer components. 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. 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. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements one or more processors amount to no more than mere instructions to apply the exception using generic computer components. The additional elements are similar to the additional elements found by courts to be mere instructions to apply an exception because they do no more than merely invoke computers or machinery to perform an existing process such as: a common business method or mathematical algorithm being applied on a general purpose computer (Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573 US 208, 223; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Thus, considered as an ordered combination, the additional elements add nothing that is not already present when the steps are considered separately. That is, one or more processors, performing commercial interactions including: calculating a level of print resolution quality of a digital asset; identify a potential recipient from a set of potential recipients as being eligible to receive the physical merchandise; and authorize creation of the physical merchandise, amount to mere instructions to apply the steps to a computer comprising of a processor.
Thus, claims 1 and 11 are not eligible.
As for dependent claims 2 and 12, these claims recite “wherein the one or more physical processors are further configured by the machine-readable instructions to: generate a quality control notification conveying the level of print resolution quality calculated for the digital asset; and effectuate presentation of the quality control notification in a user interface.”, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind or using pen and paper but for the recitation of generic computer components. For example but for the “ one or more processors” language in claims 1 and 11. The claim falls into the mental process grouping of abstract ideas. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not amount to significantly more than the abstract idea itself.
As for dependent claims 3 and 13, these claims recite “wherein the one or more physical processors are further configured by the machine-readable instructions to: obtain information defining the digital asset input by a content creator through a user interface, the user interface being configured to facilitate design of the physical merchandise based on the digital asset, the content creator being hosted on a membership platform and having subscribers who subscribe to the content creator through the membership platform, wherein the set of potential recipients are the subscribers, and characteristics of potential recipients are subscribership characteristics; in response to determining a subscribership characteristic of a subscriber is correlated with the level of print resolution quality calculated for the digital asset, authorize creation of the physical merchandise using the digital asset for the subscriber; and in response to determining the subscribership characteristic of the subscriber is correlated with a different level of print resolution quality, deny the creation of the physical merchandise using the digital asset for the subscriber.”, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind or using pen and paper but for the recitation of generic computer components. For example but for the “ one or more processors” language in claims 1 and 11. The claim falls into the mental process grouping of abstract ideas. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not amount to significantly more than the abstract idea itself.
As for dependent claims 4 and 14, these claims recite “wherein the one or more physical processors are further configured by the machine-readable instructions to: in response to determining the subscribership characteristic of the subscriber is correlated with the different level of print resolution quality, generate a quality control notification conveying denial of the creation; and effectuate presentation of the quality control notification in the user interface.”. These claims recite limitations that further define the same abstract idea in claims 3 and 14, generating a quality control notification conveying denial of the creation; and effectuate presentation of the quality control notification in the user interface. Therefore, they are considered patent ineligible for the reasons given above. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not amount to significantly more than the abstract idea itself.
As for dependent claims 5 and 15, these claims recite “wherein the one or more physical processors are further configured by the machine-readable instructions to: obtain subscribership information for the content creator, the subscribership information including the subscribership characteristics of the subscribers to the content creator; and effectuate presentation of the user interface on a computing platform associated with the content creator.”. These claims recite limitations that further define the same abstract idea in claims 3 and 14, obtain subscribership information for the content creator and effectuate presentation of the user interface on a computing platform associated with the content creator. Therefore, they are considered patent ineligible for the reasons given above. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not amount to significantly more than the abstract idea itself.
As for dependent claims 6 and 16, these claims recite “wherein calculating the level of print resolution quality of the digital asset includes determining a dots-per-inch (DPI) value.”, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind or using pen and paper but for the recitation of generic computer components. For example but for the “ one or more processors” language in claims 1 and 11. The claim falls into the mental process grouping of abstract ideas. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not amount to significantly more than the abstract idea itself.
As for dependent claims 7 and 17, these claims recite “wherein the physical merchandise includes clothing.”. These claims recite limitations that further define the same abstract idea in claims 1 and 11, wherein the physical merchandise that were authorized to be created includes clothing. Therefore, they are considered patent ineligible for the reasons given above. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not amount to significantly more than the abstract idea itself.
As for dependent claims 8 and 18, these claims recite “wherein the one or more physical processors are further configured by the machine-readable instructions to: in response to authorizing the creation of the physical merchandise using the digital asset, effectuate communication of fulfillment instructions to a reward fulfillment system, wherein the fulfillment instructions cause the reward fulfillment system to create the physical merchandise using the digital asset.”, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind or using pen and paper but for the recitation of generic computer components. For example but for the “ one or more processors” language in claims 1 and 11. The claim falls into the mental process grouping of abstract ideas. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not amount to significantly more than the abstract idea itself.
As for dependent claims 9 and 19, these claims recite “wherein the fulfillment instructions further include timing information dictating timing of creation and/or sending of the physical merchandise by the reward fulfillment system.”. These claims recite limitations that further define the same abstract idea in claims 8 and 18, wherein the fulfillment instructions further include timing information of the creation and/or sending of the physical merchandise. Therefore, they are considered patent ineligible for the reasons given above. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not amount to significantly more than the abstract idea itself.
Claims 1-9 and 11-19 are therefore not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Response to Arguments
10. Applicant's arguments filed on 04/30/2026 with respect to the Double Patenting Rejection is acknowledged by the examiner.
11. Applicant's arguments filed on 04/30/2026 with respect to the rejection of claims 1-9 and 11-19 under 35 U.S.C. 101 have been fully considered but they are not persuasive.
12. Examiner notes that claim 1 is ineligible. Claim 1 is abstract except for the “processor.” Claim 1 is directed to the abstract idea of selecting proper recipients based on print resolution. The processor and memory of the computer still works in the same manner that they would normally would in that they execute software to perform operation. As such, the claims do not improve the computer itself. Instead, the applicant’s claims merely require a general-purpose computer with generic computer components executing software to merely apply an abstract idea which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2. The rejection of claims 1-9 and 11-19 have been maintained.
Conclusion
13. 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.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARILYN G MACASIANO whose telephone number is (571)270-5205. The examiner can normally be reached Monday-Friday 12:00-9:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, llana Spar can be reached on 571)270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARILYN G MACASIANO/Primary Examiner, Art Unit 3622 08/19/2026
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