DETAILED ACTION
Status of Claims
• The following is an office action in response to the communication filed 06/29/2026.
• Claims 1, 7, and 9-10 have been amended.
• Claims 2-5 have been canceled.
• Claims 11-12 have been added.
• Claims 1 and 6-12 are currently pending and have been examined.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of Application No. JP2022120670, filed on 07/28/2022 has been received.
The examiner acknowledges that the instant application is a national stage entry of PCT/JP2023/024856, filed 07/05/2023.
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 .
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 and 6-12 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. The 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.
First, it is determined whether the claims are directed to a statutory category of invention. See MPEP 2106.03(II). In the instant case, claims 1, 6-8, and 11-12 are directed to a machine, claim 9 is directed to a process and claims 10 is directed to a manufacture. Therefore, claims 1 and 6-12 are directed to statutory subject matter under Step 1 of the Alice/Mayo test (Step 1: YES).
The claims are then analyzed to determine if the claims are directed to a judicial exception. See MPEP 2106.04. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong 1 of Step 2A), as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Prong 2 of Step 2A). See MPEP 2106.04.
Taking claim 1 as representative, claim 1 recites at least the following limitations that are believed to recite an abstract idea:
receive, from a user, input of specifying information including at least a product name or a product code of an item to be listed;
specify what product the item to be listed is based on the specifying information;
search whether a purchased product matching the specified product is included in a purchase history;
acquire, from the user, an image of an item to be listed after the purchased product matching the specified product is searched;
acquire feature information about the item to be listed based on the acquired image, the feature information including an appearance feature of the item to be listed;
determine, based on the feature information about the item to be listed and a feature of the searched purchased product, whether the item to be listed matches the purchased product included in the purchase history of the product purchased by a listing person from a seller by comparing the acquired image with a stored image of the searched purchased product; and
determine, whether the item to be listed can be listed, based on a determination result of whether the item to be listed matches the purchased product.
The above limitations recite the concept of determining whether an item can be listed based on information. These limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors. Specifically, the determination regarding listing of an item is sales activity because it pertains to commerce. This is further illustrated in paragraph [0002] of the Specification, describing the invention relates to commerce. Further, these limitations, under their broadest reasonable interpretation, fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, including observations, evaluations, judgments, and opinions. Specifically, the analysis and determination are observations, evaluations, and judgements. Independent claims 9-10 recite similar limitations as claim 1 and as such, claims 9-10 fall within the same identified grouping of abstract ideas. Accordingly, under Prong One of Step 2A of the Alice/Mayo test, claims 1 and 9-10 recite an abstract idea (Step 2A, Prong One: YES).
Under Prong Two of Step 2A of the MPEP, claims 1 and 9-10 recite additional elements, such as a transaction support system; at least one memory storing instructions; and at least one processor configured to execute the instructions; a user device; an e-commerce platform; and a non-transitory recording medium having stored therein a program causing a computer to execute. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Although these additional computer-related elements are recited, claims 1 and 9-10 merely invoke such additional elements as a tool to perform the abstract idea. Implementing an abstract idea on a generic computer is not indicative of integration into a practical application. Similar to the limitations of Alice, claims 1 and 9-10 merely recite a commonplace business method (i.e., determining whether an item can be listed based on information) being applied on a general purpose computer. See MPEP 2106.05(f). Furthermore, claims 1 and 9-10 generally link the use of the abstract idea to a particular technological environment or field of use. The courts have identified various examples of limitations as merely indicating a field of use/technological environment in which to apply the abstract idea, such as specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer (see FairWarning v. Iatric Sys.). Likewise, claims 1 and 9-10 specifying that the abstract idea of determining whether an item can be listed based on information is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. As such, under Prong Two of Step 2A of the MPEP, when considered both individually and as a whole, the limitations of claims 1 and 11 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claims 1 and 9-10 recite an abstract idea and fail to integrate the abstract idea into a practical application, claims 1 and 9-10 are “directed to” an abstract idea (Step 2A: YES).
Next, under Step 2B, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05. The instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for at least the following reasons.
Returning to independent claims 1 and 9-10, these claims recite additional elements, such as a transaction support system; at least one memory storing instructions; and at least one processor configured to execute the instructions; a user device; an e-commerce platform; and a non-transitory recording medium having stored therein a program causing a computer to execute. As discussed above with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Moreover, the limitations of claims 1 and 9-10 are manual processes, e.g., receiving information, analyzing information, etc. The courts have indicated that mere automation of manual processes is not sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)). Furthermore, as discussed above with respect to Prong Two of Step 2A, claims 1 and 9-10 merely recite the additional elements in order to further define the field of use of the abstract idea, therein attempting to generally link the use of the abstract idea to a particular technological environment, such as the Internet or computing networks (see Ultramercial, Inc. v. Hulu, LLC. (Fed. Cir. 2014); Bilski v. Kappos (2010); MPEP 2106.05(h)). Similar to FairWarning v. Iatric Sys., claims specifying that the abstract idea of determining whether an item can be listed based on information is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claim to the computer field, i.e., to execution on a generic computer.
Even when considered as an ordered combination, the additional elements do not add anything that is not already present when they are considered individually. In Alice Corp., the Court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘[a]dd nothing…that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Id. (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, viewed as a whole, claims 1 and 9-10 simply convey the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claims 1 and 9-10 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims 6-8 and 11-12, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they recite an abstract idea, are not integrated into a practical application, and do not add “significantly more” to the abstract idea. More specifically, dependent claims 2-8 further fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they further recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors and managing personal behavior or relationships or interactions between people. Further, these claims, under their broadest reasonable interpretation, fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, including observations, evaluations, judgments, and opinions. Dependent claims 6-8 and 11-12 fail to identify additional elements and as such, are not indicative of integration into a practical application. As such, under Step 2A, dependent claims 6-8 and 11-12 are “directed to” an abstract idea. Similar to the discussion above with respect to claims 1 and 9-10, dependent claims 6-8 and 11-12, analyzed individually and as an ordered combination, merely further define the commonplace business method being applied on a general purpose computer and, therefore, do not amount to significantly more than the abstract idea itself. See MPEP 2106.05(f)(2). Further, these limitations generally link the use of the abstract idea to a particular technological environment or field of use. Accordingly, under the Alice/Mayo test, claims 1 and 6-12 are ineligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over newly cited Schubert et al. (US 20200160422 A1), hereafter Schubert, in view of newly cited Conn et al. (US 20230036252 A1), hereinafter Conn.
In regards to claim 1, Schubert discloses a transaction support system comprising (Schubert: [abstract]):
at least one memory storing instructions; and at least one processor configured to execute the instructions to (Schubert: [0163-0164]):
receive, from a user device, input of specifying information of an item to be listed (Schubert: [0122] and Fig. 8 – “In 810, an identification of a for sale object to be sold on an electronic marketplace is determined. For example, IE 102 may receive an image 108 of FSO 106, an e-mail receipt 304, or other indication of a purchased object 506, and identify a FSO 106 that a user wants to resell on EM 112”; [0033] – “Image 108 may include one or more pictures or videos of an FSO 106. For example, image 108 may include images taken from different angles, perspectives, or with different lighting or filters. In an embodiment, image 108 may include…identifying information”);
specify what product the item to be listed is based on the specifying information (Schubert: [0122-1023] and Fig. 8 – “In 810, an identification of a for sale object to be sold on an electronic marketplace is determined. For example, IE 102 may receive an image 108 of FSO 106, an e-mail receipt 304, or other indication of a purchased object 506, and identify a FSO 106 that a user wants to resell on EM 112. In 820, a set of items similar to the identification of the for sale object is identified from the electronic marketplace”; [0033] – “Image 108 may include one or more pictures or videos of an FSO 106. For example, image 108 may include images taken from different angles, perspectives, or with different lighting or filters. In an embodiment, image 108 may include pictures of…feature or identifying information”; [0039-0040] – “IE 102 may identify FSO 106 as being a tablet computer”);
search whether a purchased product matching the specified product is included in a purchase history (Schubert: [0123] – “In 820, a set of items similar to the identification of the for sale object is identified from the electronic marketplace. For example, as described above, IE 102 may identify a set of sold items 110 from EM 112 that are similar to FSO 106… identifying objects that are the same or similar to FSO 106”);
acquire, from the user device, an image of an item to be listed after the purchased product matching the specified product is searched (Schubert: [0039-0040] – “IE 102 may identify multiple objects that may be visually similar to FSO 106. IE 102 may request from the user additional information about one or more features 124 of FSO 106 that may distinguish between different subsets of the objects to more accurately identify (122) FSO 106…IE 102 may identify FSO 106 as being a tablet computer. IE 102 may identify a set of visually similar tablet computers with the manufacturer or model from EM 112, and may request that the user provide additional information…IE 102 may request that the user use the mobile device 116 to take a picture (that is, an image 108) of particular identifying information, such as a model number, bar code, clothing label, etc., from FSO 106”);
acquire feature information about the item to be listed based on image, the feature information including an appearance feature of the item to be listed (Schubert: [0033] – “Image 108 may include one or more pictures or videos of an FSO 106. For example, image 108 may include images taken from different angles, perspectives, or with different lighting or filters. In an embodiment, image 108 may include…feature or identifying information. In an embodiment, image 108 may include pictures taken of markings, including damage, on FSO 106”; [0038] – “Example features 124 may include make, model, manufacturer, configuration, customization, color, …condition indicators (e.g., poor, used, like new, new)”);
determine, based on the feature information about the item to be listed and a feature of the searched purchased product, whether the item to be listed matches the purchased product included in the purchase history of the product purchased by a listing person from a seller by comparing image with a stored image of the searched purchased product (Schubert: [0037] – “IE 102 may receive image 108 and may automatically identify one or more FSOs 106 from image 106 through image recognition. To achieve this function, IE 102 may employ any well-known image recognition technique, process, module, apparatus, system, method, computer program product and/or technology. For example, IE 102 may compare image 108 to one or more images 118…previously sold objects 110 from EM 112…IE 102 (or another matching system) may compare visual features of FSO 106 from image 108 to visual features of the other previously identified objects or images, including but not limited to images 118 from EM 112, Based on the comparison, IE 102 may receive or determine an identification 122 of FSO 106 from image 108”; [0048] – “a user may see their listing and purchase history through accessing their user account 134”); and
determine, whether the item to be listed can be listed on an e-commerce platform, based on a determination result of whether the item to be listed matches the purchased product (Schubert: [0096] – “each purchased object 506 that is eligible for resale through EM 112. In an embodiment, certain items or purchases may be prohibited from being resold on EM 112 (e.g., such services, downloaded electronic media (e.g., such as music files, electronic books, computer programs), or items with profanity or nudity)”; [0098] – “IE 102 may perform an identification 122 and features 124 comparison to identify similarly listed 120 and sold objects 110 in EM 12, retrieve price information 128, and generate a price 104 for purchased object 506”; [0113] and Fig. 6 – “In 640, a price for each of at least a subset of the set of similar items that have sold is determined from the electronic marketplace. For example, IE 102 may determine a price 128 for the sold objects 110 that are similar to purchased object 506”; [0101] – “plugin 501 may generate price 104 (e.g., via resell button 502)…IE 102 may…identify and price the objects 506 available for resale. IE 102, via plugin 510, may similarly indicate that certain purchased objects 506 are not eligible for resale”).
Schubert further discloses receiving a product code (Schubert: [0040]), an image feature analysis (Schubert: [0037]), and that users may resell items from purchase history (Schubert: [0096]). It is noted that while Schubert discloses receiving a product code and feature information from an acquired, Schubert does not explicitly disclose that the product name or code are received from the specific input information, or that the feature information is received from the specific acquired image. Schubert does not explicitly disclose specifying information including at least a product name or a product code; the information based on the acquired image; and comparing the acquired image with a product.
However, Conn teaches a similar listing system (Conn: [abstract]), including
specifying information including at least a product name or a product code (Conn: [0029] – “product identification technique determination engine 200 is configured to receive initial user input 202 that may be provided by the user 110 via the user interface 106 of the electronic marketplace application 104. The initial user input 202 may be indicative of an item that the user 110 is attempting to list for sale via the electronic marketplace application 104. The initial user input 202 may comprise textual input, such as one or more keywords that may be initially entered by the user 110”; [0031] – “mapping one or more keywords provided in the initial user input…keywords such as book, story, novel…keywords such as phone, iPhone, Android…keywords such as sneaker, shoe, sandal…keywords laptop, portable computer…detecting that the user is entering a novel title, such as a Harry Potter novel title”);
the information based on the acquired image (Conn: [0038] – “The product identification technique determination engine 121 of the suggestion service 120 may determine, based on the initial user input received from the user device 102, a product identification technique that may best assist the user in listing the item for sale via the application 104. For example, the product identification technique determination engine 121 may determine one or more computer vision services that may be employed to identify a product that may match the item being listed for sale by the user 110. The one or more computer vision services may include, but are not limited to, i) image recognition”; [0040] – “the suggestion service 120 may generate an additional user input request indicating the product identification technique determined by the identification technique determination engine 121…The prompt 302 may be, for example, a button or an icon that may provide an entry point to a camera that may be used to provide one or more images of the item, as in the case when the item being listed by the user 110 is a trading card, as in the illustrated embodiment. The user 110 may therefore tap on or otherwise engage with the button or the icon to launch a camera experience in the application 104. The user 110 may then point a camera of the user device 102 at the trading card, thereby providing one or more images of the trading card to the product identification service 120”); and
comparing the acquired image with a product (Conn: [0021] – “one or more computer vision services that may be employed to identify a product that may match the item being listed for sale by the user 110. The one or more computer vision services may include, but are not limited to, i) image recognition…determine that the item being listed is a trading card, and may determine that image recognition may best assist the user in identifying a trading card that matches the trading card being listed by the user 110”; [0025] – “use the additional user input to identify the item and/or to create a listing for the item. For example, the product identification engine 123 of the product identification service 120 may search one or more product catalogues 134 in the database 111 for catalogue entries that may match the item and to obtain”).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have included the analysis of the acquired image of Conn in the system of Schubert because Schubert already discloses product images and information and Conn is merely demonstrating how information may be gleaned from images. Additionally, it would have been obvious to have included specifying information including at least a product name or a product code; the information based on the acquired image; and comparing the acquired image with a product as taught by Conn because image analysis is well-known and the use of it in a listing system would lead to more accurate product identification (Conn: [0001-0002]).
In regards to claim 7, Schubert/Conn teaches the system of claim 1. Schubert further discloses wherein the at least one processor is further configured to execute the instructions to: offer an incentive usable for purchase of the product from the seller to the listing person who is permitted to list the purchased product purchased from the seller (Schubert: [0151] – “the incentive implemented by the new seller enhancement module 137 may be characterized as follows. if a new seller generates X new listings 1106, then the new seller may be allowed to purchase one or more FSOs 106 offered in certain ones of listings 141 on the EM 112 at no or reduced cost. The certain listings may be referred to herein as eligible listings 1108 (as shown in FIG. 11)”; [0096] – “plugin 510 may generate or display, via browser 508, a resell button 502 for each previously purchased object 506 listed in purchase history page 512A. For example, if purchase history 512A includes five purchased objects 506, plugin 510 may generate a resell button 502 next to each purchased object 506 that is eligible for resale through EM 112”; see also [0163-0164]).
In regards to claim 8, Schubert/Conn teaches the system of claim 1. Kotas further discloses wherein the at least one processor is further configured to execute the instructions to: recognize deterioration of the item to be listed from the image; and determine a listing price according to a result of recognizing the deterioration (Schubert: [0033] – “image 108 may include images taken from different angles, perspectives, or with different lighting or filters. In an embodiment, image 108 may include…object or feature or identifying information. In an embodiment, image 108 may include pictures taken of markings, including damage, on FSO 106”; [0038] – “Example features 124 may include…condition indicators (e.g., poor, used, like new, new)”; [0096] – “plugin 510 may generate or display, via browser 508, a resell button 502 for each previously purchased object 506 listed in purchase history page 512A. For example, if purchase history 512A includes five purchased objects 506, plugin 510 may generate a resell button 502 next to each purchased object 506 that is eligible for resale through EM 112”; [0041] – “IE 102 may first identify similar objects from EM 112 based on the identification 122 and features 124 comparison. IE 102 may then request the pricing histories 128 for the similarly identified objects”; see also [0163-0164]).
In regards to claim 9, claim 9 is directed to a method. Claim 9 recites limitations that are substantially parallel in nature to those addressed above for claim 1 which is directed towards a system. The combined system of Schubert/Conn teaches the limitations of claim 1 as noted above. Schubert further discloses a transaction support method (Schubert: [0005]). Claim 9 is therefore rejected for the reasons set forth above in claim 1 and in this paragraph.
In regards to claim 10, claim 10 is directed to a medium. Claim 10 recites limitations that are substantially parallel in nature to those addressed above for claim 1 which is directed towards a system. The combined system of Schubert/Conn teaches the limitations of claim 1 as noted above. Schubert further discloses a non-transitory recording medium having stored therein a program causing a computer to execute (Schubert: [0172]). Claim 10 is therefore rejected for the reasons set forth above in claim 1 and in this paragraph.
In regards to claim 11, Schubert/Conn teaches the system of claim 1. Schubert further discloses wherein the feature information includes an individual identification feature of the item to be listed for identifying an individual of the item (Schubert: [0039-0040] – “IE 102 may identify multiple objects that may be visually similar to FSO 106. IE 102 may request from the user additional information about one or more features 124 of FSO 106 that may distinguish between different subsets of the objects to more accurately identify (122) FSO 106…IE 102 may identify FSO 106 as being a tablet computer. IE 102 may identify a set of visually similar tablet computers with the manufacturer or model from EM 112, and may request that the user provide additional information…IE 102 may request that the user use the mobile device 116 to take a picture (that is, an image 108) of particular identifying information, such as a model number, bar code, clothing label, etc., from FSO 106”).
In regards to claim 12, Schubert/Conn teaches the system of claim 1. Schubert further discloses wherein determining whether the item to be listed matches the purchased product includes: comparing the feature information of the item to be listed only with a feature of the searched purchased product that matches the specified product, without comparing with features of other purchased products in the purchase history that do not match the specified product (Schubert: [0039-0040] – “IE 102 may identify multiple objects that may be visually similar to FSO 106. IE 102 may request from the user additional information about one or more features 124 of FSO 106 that may distinguish between different subsets of the objects to more accurately identify (122) FSO 106…IE 102 may identify FSO 106 as being a tablet computer. IE 102 may identify a set of visually similar tablet computers with the manufacturer or model from EM 112, and may request that the user provide additional information such as the amount of memory (e.g., 32 GB or 64 GB) or processing power of the FSO 106. This may enable IE 102 to more accurately identify which subset of visually similar objects from EM 112 corresponds to FSO 106 for pricing purposes…IE 102 may request that the user use the mobile device 116 to take a picture (that is, an image 108) of particular identifying information, such as a model number, bar code, clothing label, etc., from FSO 106”; the examiner notes that only visually similar objects are compared and thus other purchased products that do not match are not compared).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Schubert, in view of Conn, in view of previously cited Rangasamy et al. (US 11244349 B2), hereinafter Rangasamy.
In regards to claim 6, Schubert/Conn teaches the system of claim 1. Schubert further discloses wherein the at least one processor is further configured to execute the instructions to: reject listing of the item to be listed (Schubert: [0096] – “each purchased object 506 that is eligible for resale through EM 112. In an embodiment, certain items or purchases may be prohibited from being resold on EM 112 (e.g., such services, downloaded electronic media (e.g., such as music files, electronic books, computer programs), or items with profanity or nudity)”; [0101] – “plugin 501 may generate price 104 (e.g., via resell button 502)…IE 102 may…identify and price the objects 506 available for resale. IE 102, via plugin 510, may similarly indicate that certain purchased objects 506 are not eligible for resale”; see also [0163-0164]),
yet Schubert does not explicitly disclose reject overlapping listing based on a listing history of the purchased product of the listing person.
However, Rangasamy teaches a similar listing system (Rangasamy: [abstract]), including
reject overlapping listing of the item based on a listing history of the purchased product of the listing person (Rangasamy: Col. 2, Ln. 49-54 – “a spam listing is simply identified when duplicate listings are entered by the same seller. The online marketplace tries to either prevent the seller from listing the same item”; see also Col. 4, Ln. 54-56).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have included the rejection of Rangasamy in the system of Schubert because Schubert already discloses rejection and Rangasamy is merely demonstrating how items may be rejected. Additionally, it would have been obvious to have included reject overlapping listing of the item based on a listing history of the purchased product of the listing person as taught by Rangasamy because rejection is well-known and the use of it in a listing system would have prevented misleading listings (Rangasamy: Col. 2, Ln. 54-60).
Response to Arguments
Applicant’s arguments, filed 06/29/2026, have been fully considered.
35 U.S.C. § 101
Applicant argues the claims are patent eligible because the claims “provide[] a technical improvement by preventing unnecessary image acquisition and processing…the load of the determination processing…can be reduced” (Remarks pages 7-8). The examiner disagrees. The MPEP provides guidance on how to evaluate whether claims recite an improvement in the functioning of a computer or an improvement to other technology or technical field. For example, the MPEP states “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” The MPEP further states that “[t]he specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art,” and that, “conversely, if the specification explicitly sets forth an improvement but in a conclusory manner…the examiner should not determine the claim improves technology” (see MPEP 2106.04). That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. Looking to the specification is a standard that the courts have employed when analyzing claims as it relates to improvements in technology. For example, in Enfish, the specification provided teaching that the claimed invention achieves benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Additionally, in Core Wireless the specification noted deficiencies in prior art interfaces relating to efficient functioning of the computer. Core Wireless Licensing v. LG Elecs. Inc., 880 F.3d 1356 (Fed Cir. 2018). With respect to McRO, the claimed improvement, as confirmed by the originally filed specification, was “…allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters…’” and it was “…the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks”. McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, (Fed. Cir. 2016).
While the examiner acknowledges that improvements to the functioning of a computer or to any other technology or technical field may constitute integration into a practical application (see MPEP 2106.05(a)), the instant claims do not provide a technical improvement. Rather, the claims provide an improvement to the abstract idea of determining whether an item can be listed based on information. This is further illustrated in page 2, ln. 9-11 of the Specification, describing the invention relates to reliable listing of products. While the Examiner acknowledges Applicant’s arguments regarding reduced processing load, the Examiner notes that receiving an image after a step is merely activity encompassed by the abstract idea and does not represent a technical improvement but an improvement to the abstract idea.
Although the claims include computer technology such as a transaction support system; at least one memory storing instructions; and at least one processor configured to execute the instructions; a user device; an e-commerce platform; and a non-transitory recording medium having stored therein a program causing a computer to execute, such elements are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea of determining whether an item can be listed based on information in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. This is unlike the improvements recognized by the courts in cases such as Enfish, Core Wireless, and McRO. Unlike precedential cases, neither the specification nor the claims of the instant invention identify such a specific improvement to computer capabilities. The instant claims are not directed to technological improvements but are directed to improving the business method of determining whether an item can be listed based on information. The claimed process, while arguably resulting in a better process for determining whether an item can be listed based on information, is not providing any improvement to another technology or technical field as the claimed process is not, for example, improving the server and/or computer components that operate the system. Rather, the claimed process is utilizing data sets related to products while still employing the same server and/or computer components used in conventional systems to improve determining whether an item can be listed based on information, e.g. a business method, and therefore is merely applying the abstract idea using generic computing components. As such, the claims are not integrated into practical application.
Applicant argues that the claims do not recite an abstract idea because “[a] human cannot mentally compare digital images pixel-by-pixel or extract and compare appearance features from images without technological assistance…the claims therefore do not fall within the ‘Mental Processes’ grouping of abstract ideas…feature extraction from images is…not a mental process or a method of organizing human activity”. Remarks pages 8-9. The examiner disagrees. As shown in the rejection of claims under 35 U.S.C. 101 above, the limitations directed to the abstract idea are directly quoted and concepts within the identified as belonging to the Certain Methods of Organizing Human Activity and Mental Processes groupings of abstract ideas. With respect to the instant claims, a transaction support system; at least one memory storing instructions; and at least one processor configured to execute the instructions; a user device; an e-commerce platform; and a non-transitory recording medium having stored therein a program causing a computer to execute have been analyzed as additional elements and accordingly are not analyzed under Step 2A, Prong 1. The claims further recite determining whether an item can be listed based on image analysis and matching. These claims fall into the Methods of Organizing Human Activity grouping, which includes activity that falls within the enumerated sub-grouping of commercial or legal interactions, including subject matter relating to advertising, marketing or sales activities or behaviors. Specifically, these claims recite sales activities because they pertain to product listings. These claims further fall within the Mental Processes grouping of abstract ideas. Specifically, specifying information and a product, acquiring images, acquiring information from the images, comparing the images, and determining whether an item can be listed are observations, evaluations, and judgements that can be performed in the human mind or by a human using pen and paper. The examiner notes, with respect to the image analysis, that the claims recite acquiring feature information from an image and comparing an acquired image with a stored image. These steps could be performed within the human mind, by a human identifying appearance features of an image and then comparing the image with another image. Accordingly, these claims recite an abstract idea.
Applicant argues the claims provide “an inventive step” because “the specific combination of elements…is not well-understood, routine, or conventional” (Remarks page 9). The examiner disagrees. The MPEP sets forth that if a claim has been determined to be directed to a judicial exception under revised Step 2A, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, Applicant's claims merely recite steps of a method with generic computer components being recited in a generic manner. While electronic devices such as a transaction support system; at least one memory storing instructions; and at least one processor configured to execute the instructions; a user device; an e-commerce platform; and a non-transitory recording medium having stored therein a program causing a computer to execute are included within the claims, they are claimed in a generic manner and merely perform generic functions. The additional elements are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. Applicant’s disclosure does not articulate or suggest how these additional elements function, individually or in combination, in any manner other than using generic functionality nor does the disclosure articulate how the elements provide a technical improvement. Accordingly, the additional elements do not amount to significantly more because they merely amount to using the additional elements as a tool to perform the abstract idea. Accordingly, these claims do not provide significantly more.
35 U.S.C. § 103
Applicant argues the claims are allowable because the Kotas/Rangaswamy does not teach or disclose “determine, based on the feature information about the item to be listed and a feature of the searched purchased product, whether the item to be listed matches the purchased product included in the purchase history of the product purchased by a listing person from a seller by comparing the acquired image with a stored image of the searched purchased product” (Remarks pages 9-11). The examiner disagrees. The amendments have necessitated a new grounds of rejection and different references have been cited to teach or disclose this limitation. Thus, this argument is moot.
Applicant argues that claims 9-10 and the dependent claims are allowable for the same reasons as the independent claims (Remarks pages 11-12). The examiner disagrees. The rejections to claim 1 have been maintained for the reasons discussed in the paragraphs above and the rejections to claims 9-10 and the dependent claims are maintained for the same reasons.
Conclusion
NPL Reference U, initially cited in the Office action dated 03/27/2026, teaches a marketplace for relisting items. Information from an original listing may be copied to a new listing. Relisting items can attract more viewers.
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.
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/ANNA MAE MITROS/Examiner, Art Unit 3689
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