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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on July 20, 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of Claims
The following is a Final Office Action in response to communications received on 7/1/2026. Claims 1, 4-12, and 14-23 are currently pending and have been examined. Claims 1, 5-7, 9, 11, 12, 14-17, 19-20 have been amended. Claims 21-23 have been added. Claims 2-3 and 13 are cancelled.
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, 4-12, and 14-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. This judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The steps for determining eligibility under 35 U.S.C. 101 can be found in the MPEP § 2106.03-2106.05.
Under Step 1, the claims are directed to statutory categories. Specifically, the method, as claimed in claims 1, 4-11, and 21-23, are directed to a process. Additionally, the system, as claimed in claims 12, 14-19, are directed to a machine. Furthermore, the non-transitory computer-readable medium, as claimed in claim 20, are directed to an article of manufacture.
While the claims fall within statutory categories, under Step 2A, Prong 1, the claimed invention recites the abstract idea of identifying items as not-for-sale. Specifically, representative claim 1 recites the abstract idea of, except for the emphasized portions:
A method comprising:
receiving information for an item for sale on an online marketplace, the information including first image data of the item and a category of the item;
identifying , based on the category of the item, a portion of the first image data, the portion corresponding to one or more features for pattern- matching;
generating, by an embedding generator of a trained model, a multi-dimensional vector mapping of the portion of the first image data;
generating, by a match predictor of the trained model and based on the multi- dimensional vector mapping, probability distribution data indicating a likelihood that the first image data matches second image data in a database, the second image data being associated with a set of items that have been confirmed as counterfeit or stolen; and
causing, based on the probability distribution data indicating that the likelihood is higher than a threshold value, suspending of the item on the online marketplace.
Under Step 2A, Prong 1, it is necessary to evaluate whether the claim recites a judicial exception by referring to subject matter groupings articulated in the guidance. When considering MPEP §2106.04(a), the claims recite an abstract idea. For example, representative claim 1 recites the abstract idea of identifying items as not-for-sale, as noted above. This concept is considered to be a certain method of organizing human activity. Certain methods of organizing human activity are defined in the MPEP as including “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” MPEP §2106.04(a)(2) subsection II. In this case, the abstract idea recited in representative claim 1 is a certain method of organizing human activity because
receiving information for an item for sale on an marketplace, the information including first image data of the item and a category of the item; identifying, based on the category of the item, a portion of the first image data, the portion corresponding to one or more features for pattern- matching; suspending of the item on the marketplace is a sales activity. Thus, representative claim 1 recites an abstract idea.
The recited limitations of representative claim 1 also recite an abstract idea because they are considered to be mental processes. As described in the MPEP, mental processes are “concepts performed in the human mind (including an observation, evaluation, judgment, opinion)”. MPEP §2106.04(a)(2) subsection III. In this case, receiving information for an item for sale on an online marketplace, the information including first image data of the item and a category of the item is a type of observation. Additionally, identifying, based on the category of the item, a portion of the first image data, the portion corresponding to one or more features for pattern- matching; causing, based on the probability distribution data indicating that the likelihood is higher than a threshold value, suspending of the item on the marketplace are types of judgement. Furthermore, generating, by an embedding generator of a model, a multi-dimensional vector mapping of the portion of the first image data; generating, by a match predictor of the model and based on the multi- dimensional vector mapping, probability distribution data indicating a likelihood that the first image data matches second image data, the second image data being associated with a set of items that have been confirmed as counterfeit or stolen are types of evaluation. Thus, representative claim 1 recites an abstract idea.
Under Step 2A, Prong 2, if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. See MPEP §2106.04(d). In this case, representative claim 1 includes additional elements such as
online marketplace, a trained model, and a database.
Although reciting additional elements, the additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. Similar to the limitations of Alice, representative claim 1 merely recites a commonplace business method (i.e., identifying items as not-for-sale) being applied on a general purpose computer. See MPEP §§2106.04(d) and 2106.05(f). Thus, the claimed additional elements are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. Since the additional elements merely include instructions to implement the abstract idea on a generic computer or merely use a generic computer as a tool to perform an abstract idea, the abstract idea has not been integrated into a practical application. As such, representative claim 1 is directed to an abstract idea.
Under Step 2B, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). See MPEP §2106.05.
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 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 simply recite intermediated settlement as performed by a generic computer.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014). (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Also see MPEP §2106.05(f). Similarly, when viewed as a whole, representative claim 1 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B, 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.
Dependent claims 4-11 do not aid in the eligibility of independent claim 1. For example, claims 7-8, 10-11, and 21-23 merely further define the abstract limitations of claim 1. Also, claims 4-6 and 9 merely provide further embellishments of the limitations recited in independent claim 1. It is noted that the updating of the training data associated with the trained model in claims 21 and the tuning the trained model in claim 23 are recited at a high level of generality and therefore do not integrate the judicial exception into a practical application.
Additionally, it is noted that claims 4-10 do not include further additional elements. Therefore, the claims do not integrate the abstract idea into a practical application because they merely amount to 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. The claims also do not amount to significantly more than the abstract idea because they merely amount to 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.
Furthermore, it is noted that claim 11 includes additional elements of a pixel-level comparison. However, these additional elements do not integrate the abstract idea into a practical application because they merely amount to 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. These additional elements are merely generic elements and are likewise described in a generic manner in Applicant’s specification. Additionally, the additional elements do not amount to significantly more because they merely amount to 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.
Thus, dependent claims 4-11 are also ineligible.
Lastly, the analysis above applies to all statutory categories of invention. Although literally invoking a machine and article of manufacture, respectively, claims 12-19 and 20 remain only broadly and generally defined, with the claimed functionality paralleling that of claims 1, 4-6, 9-11; and 1, respectively. It is noted that claim 12 includes further additional elements of A system comprising: one or more processors; and a memory storing computer-executable instructions that when executed by the one or more processors cause the system to perform operations, and claim 20 includes further additional elements of a non-transitory, computer-readable medium storing instructions that when executed by one or more processors cause the one or more processors to perform operation. However, these additional elements do not integrate the abstract idea into a practical application because they merely amount to 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. These additional elements are merely generic elements and are likewise described in a generic manner in Applicant’s specification. Additionally, the additional elements do not amount to significantly more because they merely amount to 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. As such, claims 12,14-19 and 20 are rejected for at least similar rationale as discussed above.
Therefore all pending claims are rejected under 35 USC 101.
Subject Matter Free of Prior Art
Claims 1, 12 and 20 are determined to have overcome the prior art of rejection and are free of prior art, however the claims remain rejected under 35 USC 101, as set forth above. All dependent claims are also free of prior art by virtue of dependency, but remain rejected under 35 USC 101.
Taking amended claim 1 as a representative claim, the claims as amended are found to overcome the prior art rejection for the reasons set forth below.
Claim 1 now recites the additional claimed features of generating, by an embedding generator of a trained model, an embedding of the first data that includes a multi-dimensional vector mapping of the portion of the first image data; generating, by a match predictor of the trained model and based on the multi- dimensional vector mapping, probability distribution data indicating a likelihood that the first image data matches second image data in a database, the second image data being associated with a set of items that have been confirmed as counterfeit or stolen; and causing, based on the probability distribution data indicating that the likelihood is higher than a threshold value, suspending of the item on the online marketplace.
In addition to the previously cited art, the closest prior art was found to be as follows:
Hanina (US 9290010) discloses in [Col. 5 lines 50-65] In such a manner, not only is the fractal image used to prevent against counterfeiting as it is difficult or reproduce, but further various characteristics of the object, such as color, shape, texture, markings and the like, may combine with such a fractal image to produce a unique fractal/object characteristic combination. As the characteristics of the fractal alone are known, the fractal image may act as a calibration tool to determine any influence the color, for example, of the pill may have on the actual fractal color, thus allowing for an accurate determination of pill color. In such a manner, these noted characteristics of the object may cause one or more distortions in the shape, color, or other attribute of the printed fractal image, these distortions being potentially resolvable and recognizable at differing desired imaging resolutions, providing differing levels of security
[Col. 19 lines 25-35] Thus, even if identification is confirmed, a threshold may determine confidence over suspicion of counterfeit (i.e. how confident the system is that the item is authentic). Many instances of low confidence levels (even if above threshold levels), as received and accumulated over time from any number of different users at a centralized location, may indicate a potential counterfeit issue and raise a flag remotely to anti-counterfeit authorities to double check a medication source, or alert a user to report the possibility of a counterfeit medication source. [Col. 22 lines 55-50] This creates a frequency distribution n(s, r) which is the number of boxes of size r with s pixels. After computing n(s, r) for each p and for several box sizes r, the frequency distributions may be converted into probability distributions
While the reference discloses the concepts of image analysis and probability distributions in the field of counterfeiting, the reference does not disclose the claimed invention including, but not limited to, using multi-dimensional vector mapping to generate the probability distributions and where the image data is from items confirmed to have been counterfeit or stolen. The reference uses fractal patterns as the calibration to determine if the item under scrutiny may be counterfeit.
“Anti-Counterfeit Scheme Using Monte Carlo Simulation for E-commerce in Cloud Systems” discloses evaluating sample data distributions (shown in Figure 1) to represent a comparison of real products and counterfeits and estimate the model’s ability to detect counterfeits. However, the reference does not disclose the invention as claimed.
It was found that no references alone or in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of Applicant’s invention. The features of claim 1 (and parallel claims 12 and 20) in combination that overcome the prior art are:
Therefore, none of the cited references disclose or render obvious each and every feature of the claimed invention and the claimed invention is determined to be free of the prior art. Although individually the claimed features could be taught, any combination of references would teach the claimed limitations using a piecemeal analysis, since references would only be combined and deemed obvious based on knowledge gleaned from the applicant's disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The examiner emphasizes that it is the interrelationship of the limitations that renders these claims free of the prior art/additional art.
Therefore, it is hereby asserted by the Examiner that, in light of the above, that the claims are free of prior art as the references do not anticipate the claims and do not render obvious any further modification of the references to a person of ordinary skill in art.
Response to Arguments
Applicant's arguments filed 7/1/2026 have been fully considered but they are not persuasive.
With respect to the remarks directed to the objection, the objection is withdrawn in light of the amendment.
With respect to the remarks directed to 35 USC 103, the examiner found the claim amendments and the remarks directed to Sharma to be persuasive. In particular, the remarks directed to Sharma not specifically addresses the probability distribution. That is, generating by a match predictor and the multi-dimensional vector mapping, a probability distribution. The image data of the second item from items that have been confirmed as stolen and then using the probability distribution to determine suspending the item from the marketplace. As noted by the response, Sharma, does not disclose the claims as amended. The additional reasons for withdrawing the rejection under 35 USC 103, are addressed above under Subject Matter Free of Prior Art.
With respect to the remarks directed to 35 USC 101, Step 2A prong 1, the examiner asserts that the amended claim language does not require the use of a computer to perform the operations recited. As shown in the rejection above, the limitations within the abstract idea are a certain method of organizing human activity because
receiving information for an item for sale on an marketplace, the information including first image data of the item and a category of the item; identifying, based on the category of the item, a portion of the first image data, the portion corresponding to one or more features for pattern- matching; suspending of the item on the marketplace is a sales activity. Thus, representative claim 1 recites an abstract idea.
The recited limitations of representative claim 1 also recite an abstract idea because they are considered to be mental processes. As described in the MPEP, mental processes are “concepts performed in the human mind (including an observation, evaluation, judgment, opinion)”. MPEP §2106.04(a)(2) subsection III. In this case, receiving information for an item for sale on an online marketplace, the information including first image data of the item and a category of the item is a type of observation. Additionally, identifying , based on the category of the item, a portion of the first image data, the portion corresponding to one or more features for pattern- matching; causing, based on the probability distribution data indicating that the likelihood is higher than a threshold value, suspending of the item on the marketplace are types of judgement. Furthermore, generating, by an embedding generator of a model, a multi-dimensional vector mapping of the portion of the first image data; generating, by a match predictor of the model and based on the multi- dimensional vector mapping, probability distribution data indicating a likelihood that the first image data matches second image data, the second image data being associated with a set of items that have been confirmed as counterfeit or stolen are types of evaluation. Thus, representative claim 1 recites an abstract idea. The examiner does not find the recited claims to be a technical approach, but merely additional elements recited at a high level implementing the abstract idea. Even assuming the limitations do not fall into the category of mental process, which the examiner does not concede, the limitations identified as part of the abstract idea, all fall into the category of method of organizing human activity as shown in the rejection above. Merely training of the data model is part of the additional element consideration under Prong 2, however, it is recited at a high level of generality and as an additional element does not integrate the judicial exception into a practical application.
With respect to the remarks directed to Prong 2, the examiner maintains the claims are rejected under 35 USC 101 as stated above. The claims do note recite a practical application that imposes meaningful limits on the judicial exception as was found in Core Wireless, Enfish, and McRo. These decisions recited technical solutions to a technical problem that improved the computer technology itself. Arguably the technology itself in the claimed invention is not required to implement the recited steps, in contrast to these discussed decisions. The claimed invention at most recites an improvement to the business process of determining counterfeit items and then removing them from the marketplace. It does not recite an technical solution to a technical problem and there is no evidence that there is a technical problem looking to be improved by the invention.
As to Step 2B, the claims when considered alone and in combination do not overcome the rejection under 35 USC 101, for the reasons discussed above. Further, with respect to DDR Holdings, the instant claimed invention does not recite a technical solution to a technical problem. The DDR Holdings case improved the manner in which web interfaces themselves interacted. The improvement did not lie in what was displayed, but rather the technical manner in which the interface operated.
With respect to the newly added claims addressing the training of the model, like in the case of Recentive, “The requirements that the machine learning model be “iteratively trained” or dynamically adjusted in the Machine Learning Training patents do not represent a technological improvement. Recentive’s own representations about the nature of machine learning vitiate this argument: Iterative training using selected training material and dynamic adjustments based on real-time changes are incident to the very nature of machine learning” [see page 12]. Merely training the model to improve over time is no more than having a trained model perform in the “already available [technology], with [its] already available basic functions, to use as [a] tool[] in executing the claimed process.” SAP Am., 898 F.3d at 1169–70. We think those cases are equally applicable in the machine learning context.” [page 15]
As to claim 11, the manner in which the claims have been amended does not detail the technical manner in which the pixel extraction occurs, and the comparison is performed. The amendment is still recited at a high level of generality. While the examiner does not concede that the recitation of a computer at a high level of generality for extracting pixel level data will overcome the rejection under 35 USC 101, the examiner welcomes the representative or inventor to discuss this element of the application with the examiner to determine if there is a path forward.
For these reasons, the claims remain rejected under 35 USC 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Burgin et. al. (US 10885531 B2) was used to understand other methods for identifying counterfeit items using artificial intelligence.
Chaloux et. al. (US 10691922 B2) was used to understand other methods for identifying counterfeit items using machine learning techniques.
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 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 VICTORIA E. FRUNZI whose telephone number is (571)270-1031. The examiner can normally be reached Monday- Friday 7-4 (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein can be reached at (571) 272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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VICTORIA E. FRUNZI
Primary Examiner
Art Unit TC 3689
/VICTORIA E. FRUNZI/Primary Examiner, Art Unit 3689 8/31/2026
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