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 the Claims
Claims 21-40 were previously pending and subject to a non-final office action mailed October 8, 2025. Claims 21-22 and 34-35 were amended, claims 41-42 were newly added, claims 23-33 and 36-40 were left as previously presented and claims 1-20 were canceled. Claims 21-42 are currently pending and subject to the final office action below.
Response to Arguments
Applicant's arguments filed on January 8, 2026 concerning the previous rejections of claims 21-40 under 35 USC 101 have been fully considered but are not persuasive.
Examiner respectfully notes that the test to subject matter eligibility under 35 USC 101 for product and process: first, determine whether the claims are directed to a process, machine, manufacture, or composition of matter. Second, (Step 2A Prong 1) determining whether the claims are directed to a law of nature, a natural phenomenon, or abstract idea (judicially recognized exceptions). Third, (step 2 A prong 2) determine whether the claims recite additional elements that integrate the judicial exception into a practical application. Fourth, (step 2B) determining whether the claims recite additional elements that amount to significantly more than the judicial exception.
Applicant argues that the claims result in a practical solution of automatically reordering products when the return shipping label is used. In response, Examiner states that the system is receiving data, processing data and displaying results to an end user. It is merely receiving and generating data over a network in order to ship a replacement item. Therefore, the system is adding an insignificant extra-solution activity to the abstract idea of generating a replacement product for items (MPEP 2106.05 (g)). Claims 21-40 are ineligible under 35 USC 101 prong 2.
Applicant’s arguments with respect to the 35 USC 103 rejection of claims 21-40 has been fully considered and persuasive. The 35 USC 103 rejection of claims 21-40 has been withdrawn.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The 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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,131,286. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-19 of patent # 12,131,286 contain every element of claims 21-40 of the instant application and as such anticipate claims 21-40 of the instant application.
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 21 and 34 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite “receive an order from a customer for a product, wherein the order is associated with a customer account associated with the customer; retrieve a unique identifier to be associated with the order; generate and print a return shipping label with the unique identifier; generate and provide instructions to ship the order with the return shipping label and an exchange item; receive a notification message indicating that the exchange item with the return shipping label has shipped, wherein the notification message includes the unique identifier; generate queries to retrieve customer account information from the at least based on the unique identifier; compare results of the queries to identify the customer account associated with the return shipping label; and generate a reorder for at least a portion of the order for the customer account in response to receiving the notification message.”
The recited limitations above are a process that, under the broadest reasonable interpretation, covers performance of the limitation done by a human using generic computer components under mental process under human using pen and paper. That is, other than reciting “processors” and “memory device” nothing in the claim element precludes the steps from practically being performed by a human using pen and paper. For example, “receive”, “retrieve”, “generate”, “generate”, “receive”, “generate”, “compare” and “generate” in the context of this claim encompasses the user to manually receive an order from a customer for a product to be shipped.
This judicial exception is not integrated into a practical application. In particular, the claims only recite the following additional elements- a “processor”, “memory device” “database” and a “computer device” to perform the above recited steps. The computer elements recited at a high-level of generality (generic computer elements performing a generic computer function of receiving information, identifying solutions and determining what should be presented to a user) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, the additional elements recited do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The claims do 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 element of using the computer elements to perform the steps of claims 21 and 34 amount to no more than mere instructions to apply the exception using a generic computer component cannot provide an inventive concept.
The limitations of the dependent claims 22-33 and 35-40, further describe the identified abstract idea. In addition, the limitations of claims 27-28, 30 and 36-39 define how the how the products are shipped and handled which further describes the abstract idea. The generic computer component of claims 29, 31-33, 35 and 40 (database, processor, computer device, advanced programming interface) merely serve as the generic computer component and the functions performed by the generic computer components essentially amount to the abstract idea identified above. None of the dependent claims when taken separately in combination with each dependent claims parent claim overcome the above analysis and are therefore similarly rejected as being ineligible.
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 ZEINA ELCHANTI whose telephone number is (313)446-6561. The examiner can normally be reached M-F 8:00 AM-5:00 PM EST.
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/ZEINA ELCHANTI/ Primary Examiner, Art Unit 3628