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 .
DETAILED ACTION
Continued Examination under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12 December 2025, has been entered.
The following is a Non-Final office action on the merits in response to the communications filed on 12 December 2025. Claims 91-110 are currently pending. The rejections under 35 USC § 101 directed to double patenting and non-statutory subject matter are maintained. The rejections are as stated below.
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 91-110 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
Claim 91 (exemplary) recites a series of steps for performing trading negotiations between parties.
The claim is directed to a machine, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception. The claim recites the limitations of receive structured transaction parameters associated with offers and requests; transform the structured transaction parameters into weighted numerical scores by applying weighting factors to multiple parameter types including user-defined explicit parameters, behavioral parameters, historical parameters, and external parameters; storing the behavioral parameters, historical parameters, and external parameters, generate composite scores associated with respective offers and requests; compare the composite scores associated with the offers and requests, identify candidate matches based on score proximity, and automatically filter candidate matches prior to negotiation initiation based on the composite scores; execute a negotiation comprising successive negotiation states including offer evaluation, counteroffer generation, and negotiation convergence, based on prior negotiation data; present match suggestions and negotiation state information to the user and to receive updated transaction parameters during negotiation; and apply anonymization by suppressing identity-related data during negotiation until a transaction reaches a finalized state, wherein the filtering of candidate matches reduces the number of negotiation state transitions performed by the system.
The claimed system simply describes series of steps for performing trading negotiations between parties. These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations via transactional activities/interactions, but for the recitation of generic computer components. That is, other than reciting a computer-enabled transaction system, comprising: a transaction data interface module, a scoring engine accesses a plurality of databases, a suggestion matching engine, a negotiation engine, a system-controlled negotiation state machine, a communication module, an anonymization module configured to apply system-enforced anonymization and a plurality of user computing devices with graphical user interfaces, nothing in the claim precludes the limitations from practically being performed by organizing human activity. For example, without the structure elements language, the claim encompasses the activities that can be performed between the users and a third party. These limitations are directed to an abstract idea because they are interactions, and more specifically, a type of sales activities, which is identified as a certain method of organizing human activity according to the 2019 Guidance (84 Fed. Reg. at 52). Additionally, negotiating trading is a long-standing economic practice, which also falls under the recognized category of commercial or legal interaction (including agreements in the form of contracts; legal obligations; advertising, marketing, or sales activities or behaviors; business relations), and managing personal behavior or relationships or interactions between people (including following rules or instructions). Therefore, the claim falls within the enumerated group of “certain methods of organizing human activity” in the 2019 PEG. See MPEP 2106.04(a)(2).
Next, the claim is analyzed to determine if it is integrated into a practical application. The recited judicial exception may be integrated into a practical application by identifying whether there are any additional elements recited in the claim beyond the judicial exception and evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The claim recites additional limitation of a computer-enabled transaction system, comprising: a transaction data interface module, a scoring engine accesses a plurality of databases, a suggestion matching engine, a negotiation engine, a system-controlled negotiation state machine, a communication module, an anonymization module configured to apply system-enforced anonymization and a plurality of user computing devices with graphical user interfaces to perform the steps. The processor of the system in the steps is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea. See MPEP 2106.05(h).
Next, the claim is 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 ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the computer at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept. See MPEP 2106.05(h).
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to all statutory categories of invention including claims 91, 99 and 107. Furthermore, the dependent claims 92-98, 100-106 and 108-110 do not resolve the issues raised in the independent claims.
The dependent claims do not add limitations that meaningfully limit the abstract idea. Dependent claims 92-98, 100-106 and 108-110, recite additional limitations and steps. However, as mentioned above with respect to the independent claims, the claimed limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
These claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a device, and is considered to amount to nothing more than requiring a generic device to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application or amounts to significantly more than the abstract idea itself.
Accordingly, claims 91-110 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Response to Arguments
Applicant's arguments with respect to 35 USC § 101 directed to non-statutory subject matter been fully considered but they are not persuasive.
Examiner incorporates herein the response to arguments from the previous office actions.
Examiner respectfully disagrees. Claims 91-110 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Applicant canceled all of the previous claims and added the above-mentioned limitations. However, the concept is directed to performing trading negotiations between parties which does not make it less abstract. The newly added additional element, even when limited to a particular context does not change its character as information or data and therefore, remains within the realm of the abstract idea.
Examiner respectfully disagrees with Applicant’s assertion that the claims can not be performed by the human mind. In the present office action, Applicant’s claimed process simply describes series of steps for “performing negotiations between parties”. Negotiating trading is a long-standing economic practice, which also falls under the recognized category of commercial or legal interaction (including agreements in the form of contracts; legal obligations; advertising, marketing, or sales activities or behaviors; business relations), and managing personal behavior or relationships or interactions between people (including following rules or instructions). Therefore, it seems reasonable to Examiner to refer to group the abstract idea under “Certain methods of organizing human activity” as enumerated in Section I of the 2019 PEG.
Applicant argues in substance that the claims integrate the alleged abstract concept into a practical application.
Examiner respectfully disagrees, in the second prong of step 2A of the 2019 Revised Guidance, we determine whether the claims recite a practical application of the recited judicial exception. For example, (1) any additional elements of the claims reflect an improvement in the functioning of a computer or to another technological field, (ii) an application of the judicial exception with, or by use of, a particular machine, (iii) a transformation or reduction of a particular article to a different state or thing (iv) or a use of the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55; See also MPEP § 2106.05(a){(c), (e}(h).
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.-see MPEP 2106.05(f). The instant claims do not attempt to solve an unconventional technological solution. Using the processor as a tool to implement the abstract idea and the way the information is processed and displayed does not make it less abstract. The claimed use of computer elements recited at a high level of generality is an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Applicant argues that the claims are directed to an improvement in automated transaction processing technology using the filtering process as claimed. Examiner respectfully disagrees, as found by the courts “In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly . . ..” SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); see also Content Extraction, 2013 WL 3964909, at *12 (“the mere use of a computer to more quickly and efficiently . . . accomplish a given task does not create meaningful limitation on an otherwise abstract and wide-ranging concept”).
A claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, examiner notes that "claiming the improved efficiency inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
Examiner notes that the focus of the claimed invention in the present application is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.
The courts found that “… if a patent’s recitation of a computer amounts to a mere instruction to ‘implement[t]’ an abstract idea ‘on . . . a computer,’ that addition cannot impart patent eligibility.” Alice Corp., 134 S.Ct. at 2358. The claimed invention does not indicate that specialized computer hardware is necessary to implement the claimed systems, similar to the claims at issue in Alice Corp. See Alice Corp., 134 S.Ct. at 2360 (determining that the hardware recited in the claims was “purely functional and generic,” and did not “offer [] a meaningful limitation beyond generally linking the use of the [method] to a particular technological environment, that is, implementation via computers”).
Applicant further argues that "when viewed as an ordered combination, the claim limitations amount to significantly more” than the alleged abstract idea. Here, the claims recite an inventive concept, by their recitation of an ordered, non-conventional and non- generic combination of additional elements for purpose of providing a “technology-based solution."
Examiner respectfully disagrees, the claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem. Also, limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.”
Examiner notes that the processor limitations and the claim as a whole do not add significantly more than the abstract idea itself, because the claim does not amount to an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment. A generic recitation of a processor/device performing its generic computer functions does not make the claims less abstract.
As mentioned previously, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer. Taking the additional elements individually and in combination, each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
Lastly, dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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Respectfully Submitted
/HANI M KAZIMI/Primary Examiner, Art Unit 3691