DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant's arguments filed with respect to the rejection made under § 101 have been fully considered but they are not persuasive.
Applicant argues that the claims are directed to a practical application that provides “a specific technical solution that provides a technical implementation in which a seller can receive instant cash for items listed for sale, even though the transaction for the item has not consummated yet”. Examiner respectfully disagrees.
The practical application that transforms a generic computer into a special-purpose machine for solving the technical problem of inefficient (delayed payment settlement) is not a technical problem, but rather a business problem.
This is a problem at the abstract layer of organizing human activities, not one borne out of technology. The problems noted in Specification do not highlight any failures of modern computers. These are business implementation problems and do not set forth any deficiencies that are particular to computer capabilities or any other technology. "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).
Merely implementing the abstract idea using conventional computer elements does not provide a technical solution.
The claimed invention does not improve any particular machine or allow one to perform a new function that it was not previously able to do. Instead, it merely chooses one that is properly scaled. It is still using a generic computing element as a tool to perform an abstract function, without setting forth any technological improvements. "[P]atents 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. Recentive Analytics, Inc. v. Fox. Corp., Fed Cir. No. 2023-2437 (Apr. 18, 2025) (slip op. at 18).
Accordingly, the rejection is maintained.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 8 and 15 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 9 and 15 of U.S. Patent No. 11568478. Although the claims at issue are not identical, they are not patentably distinct from each other because all the elements of the application claims 1, 8 and 15 are to be found in patent claims 1, 9 and 15. The difference between the application claims and the patent claims lies in the fact that the patent claim includes more elements and is thus more specific. Thus the invention of claims 1, 9 and 15 of the patent is in effect a “species” of the “generic” invention of the application claims 1, 8 and 15. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claims 1, 8 and 15 are anticipated by claims 1, 9 and 15 of the patent, it is not patentably distinct from the claims of the patent.
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 non-statutory subject matter (a judicial exception 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 1-20, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 recites a method. Claim 8 recites a system. Claim 15 recites a non-transitory computer-readable medium.
Step 2A, prong 1: Claim 8 recites the abstract idea of providing funds in the selling environment. This idea is described by the following steps:
generating an item listing by at least listing an item for sale;
transmitting/sending to a lender the item listing and a request for a monetary amount to be distributed to a seller account; and
receiving a confirmation that the monetary amount has been distributed to the seller account.
Claims 1 and 15 recite equivalent limitations.
This idea falls into the certain methods of organizing human activity grouping of abstract ideas as it is directed towards commercial interactions including advertising, marketing or sales activities or behaviors (i.e., request for a monetary amount).
Step 2A, prong 2: Claims 1, 8 and 15 recite additional elements that fail to integrate the abstract idea into practical application.
Claims 1, 8 and 15 recite a processor, a memory and one or more non-transitory, computer-readable media storing instructions that are executable by the one or more processors to cause the computing system to perform operations. However, these elements are generic computing components (see at least paragraph 028) that are simply used to perform operations that would otherwise be abstract (see MPEP2106.05(f)).
Claims 1, 8 and 15 also recites the limitations “logging in to an e-commerce platform using seller authentication information”. However, these limitations are considered insignificant extra solution activity as they amount to necessary data gathering and outputting, wherein all uses of the recited abstract idea require such data gathering and data output (see2106.05(g)).
They are not "additional elements" to be analyzed under this part of the framework, and merely serve to add a general link to a technological environment in which the abstract idea/commercial interaction is carried out, and instructions to apply (execute) it. The additional elements do not amount to significantly more for the same reasons they do not integrate the abstract idea into a practical application (i.e., that they merely provide a general link to a particular technological environment and instructions to "apply it").
Step 2B: Claims 1, 8 and 15 fail to recite additional elements that amount to an inventive concept.
For the reasons identified with respect to Step 2A, prong 2, claims 1, 8 and 15 fail to recite additional elements that amount to an inventive concept. For example, use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more (see MPEP 2106.05(g)).
With respect to the limitations determined to be insignificant extra solution activity, these elements are similar to at least the following concepts determined by the courts to be insignificant extra solution activity that does not amount to significantly more than the abstract idea:
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information). Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93.
Dependent Claims Step 2A:
The limitations of the dependent claims merely set forth further refinements of the abstract idea identified at step 2A—Prong One, without changing the analysis already presented. 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 identified at step 2A—Prong Two.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. 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.
Thus, when considering the combination of elements and the claimed invention as a whole, the claims are not patent eligible.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action and upon approval of a Terminal Disclaimer to overcome the double patenting rejection above.
The following is an examiner’s statement of reasons for allowance:
The prior art of record neither anticipates nor renders obvious the combination of: logging in to an e-commerce platform using seller authentication information; generating an item listing by at least listing an item for sale on the e-commerce platform; transmitting, to a lender device, the item listing and a request for a monetary amount to be distributed to a seller account; and receiving a confirmation that the monetary amount has been distributed to the seller account.
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 MILA AIRAPETIAN whose telephone number is (571)272-3202. The examiner can normally be reached Monday-Friday 8:30 am-6:00 pm.
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, 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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/MILA AIRAPETIAN/Primary Examiner, Art Unit 3688
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