Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
The rejection of record has been overcome.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 2-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-37 of U.S. Patent No. 11893715 in view of Lee US Patent Pub 20050187866 in view of McMahon 20060200409 and further in view of Horwitz 20060253387
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences between the instant claims and the patent are the following:
to a further description of the determine an initial price of the plurality of fractional interests; make the plurality of fractional interests available in a trading module-wherein receive an acquisition request from a user indicating a desire to acquire at least one of the plurality of fractional interests; receive funds from the user; and designate a portion of the received funds as reserved funds of the user.
when the first electronic account has enough available funds to fulfill the acquisition request, transfer to the first electronic account at least one of the interests in the person and reduce the available funds in the first electronic account based on a number of interests acquired;
responsive to the transfer, display via the first web-based graphical user interface an indication of the number of interests acquired in the person and an amount of the available funds in the first electronic account;
subsequent to acquiring interests in the person, receive from the first computing device a request to sell a number of interests in the person, wherein the request to sell indicates a number of interests to sell and a sales price at which to sell the interests;
transmit a second web-based graphical user interface to a second computing device;
display via the second web-based graphical user interface in the second computing device an indication of the request to sell;
receive from the second computing device a request to buy interests in the person, wherein the request to buy indicates a number of interests to buy and a purchase price;
responsive to the request to buy, determine whether a second electronic account has enough available funds to fulfill the request to buy;
determine whether a selling price of the request to sell and a purchase price of the request to buy match;
responsive to determining that the selling price and the purchase price match, transfer interests in the person from the first electronic account to the second electronic account, wherein the transfer includes to remove from the first electronic account, interests in the person sold via the first computing device and to add to the second electronic account, interests in the person purchased via the second computing device; and
responsive to the transfer, display via the first web-based graphical user interface an indication of the number of interests in the person contained in the first electronic account and display via the second web-based graphical user interface an indication of the number of interests in the person contained in the second electronic account.
The claims of the patent do include the following:
determine an initial price of the plurality of fractional interests;
make the plurality of fractional interests available in a trading module-wherein receive an acquisition request from a user indicating a desire to acquire at least one of the plurality of fractional interests;
receive funds from the user; and
designate a portion of the received funds as reserved funds of the user to a further description of the determine an initial price of the plurality of fractional interests; make the plurality of fractional interests available in a trading module-wherein receive an acquisition request from a user indicating a desire to acquire at least one of the plurality of fractional interests; receive funds from the user;
and designate a portion of the received funds as reserved funds of the user.
As set forth in the 103 rejection of record and as set forth below, the newly cited references are each taught by the additional references. Moreover, the rejection of these limitations have not been disputed or argued.
Claim Rejections - 35 USC § 101
Claims 2-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to the abstract idea of securitization without significantly more. This judicial exception is not integrated into a practical application and does not amount to significantly more than the judicial exception for the following reasons.
Issue: Do the claims fall within at least one of the four categories of patent eligible subject matter.
Analysis: Issue 1: Statutory Category? Yes — an apparatus which is statutory.
Issue 2A - Prong 1: Is the representative claim directed to a Judicial Exception Recited?
The following steps fall within methods of organizing human behavior and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the “certain methods of organizing human activity”.
Collecting research data is a fundamental economic practice and method of organizing human activity. See Alice, 573 U.S. at 219.
receive from a first computing device a request to create interests in an intangible representation of a person, wherein the interests in the intangible representation of the person are present created property rights that have no intrinsic value and no interest in or obligation by the person, and wherein the request comprises a number of the interests to create and an initial price of each of the interests;
transmit a first web-based graphical user interface to the first computing device;
creating the interests in the intangible representation of the person by the at least one
processor and fractional interests in the intangible representation of the person, wherein the interests in the intangible representation of the person are electronically transferrable transferrable, wherein creating further comprises when a trading price of the fractional interests exceeds a maximum, increasing a number of fractional interests created, and when a trading price of the fractional interests is below a minimum, reducing the number of fractional interests created;;
display via the first web-based graphical user interface an indication that interests in the
intangible representation of the person are available for purchase at the initial price and the fractional interests in the intangible representation of the person are available for purchase at another initial price;
receive an acquisition request from the first computing device indicating a desire to acquire at least one of the interests in the person at the initial price;
responsive to the acquisition request, determine whether a first electronic account has enough available funds to fulfill the acquisition request when the first electronic account has enough available funds to fulfill the acquisition request, transfer to the first electronic account at least one of the interests in the person and reduce the available funds in the first electronic account based on a number of interests acquired;
responsive to the transfer, display via the first web-based graphical user interface an indication of the number of interests acquired in the person and an amount of the available funds in the first electronic account;
subsequent to acquiring interests in the person, receive from the first computing device a request to sell a number of interests in the person, wherein the request to sell indicates a number of interests to sell and a sales price at which to sell the interests;
transmit a second web-based graphical user interface to a second computing device;
display via the second web-based graphical user interface in the second computing device an indication of the request to sell;
receive from the second computing device a request to buy interests in the person, wherein the request to buy indicates a number of interests to buy and a purchase price;
responsive to the request to buy, determine whether a second electronic account has enough available funds to fulfill the request to buy;
determine whether a selling price of the request to sell and a purchase price of the request to buy match;
responsive to determining that the selling price and the purchase price match, transfer interests in the person from the first electronic account to the second electronic account, wherein the transfer includes to remove from the first electronic account, interests in the person sold via the first computing device and to add to the second electronic account, interests in the person purchased via the second computing device; and
responsive to the transfer, display via the first web-based graphical user interface an indication of the number of interests in the person contained in the first electronic account and display via the second web-based graphical user interface an indication of the number of interests in the person contained in the second electronic account.
Issue 2A - Prong 2 : Is the representative claim directed to a Practical Application?
Having determined, for the reasons discussed above, that the claims are directed to the judicially recognized exceptions we next consider whether the claims recite additional elements that integrate that exception into a practical application. 84 Fed. Reg. at 54—55.
A judicial exception a practical application when they (i) improve the functioning of a computer or some other technology, (ii) effect a particular treatment or prophylaxis for a disease or medical condition, (iii) implement or use the judicial exceptions in conjunction with particular machines or manufactures that are integrates the claim, (iv) transform or reduce a particular article to a different state or thing, or (v) do more than merely link the judicial exceptions to a particular technological environment. Id. at 55. Additional elements do not a judicial exception into a practical application when they (i) merely include instructions to implement the judicial exception on a computer, (ii) add insignificant pre- or post- solution activity, or (iii) do no more than link the judicial exception toa particular technological environment. Id.
The examiner finds that the elements beyond the abstract idea are the processor , medium and graphical interfaces.
The examiner finds no indication in the specification that the operations recited in the claims performed by any or all of these elements invoke any non-abstract steps and/or programming that necessitates a written description of for the steps carried out by the device. That is, the lack of any teaching of how a processor creates an interest and /or a fractional interest is indicative of a lack of improvement in the processor.
More directly, the specification is limited to a generic description of how the elements making up the technology achieve the claimed results. The specification describes these elements generically without any indication that Applicant invented any of these components or improved any their capabilities. This type of generic description of the structure and data processing functions of the additional elements confirms that they do not improve computers or other technology to integrate the abstract idea into a practical application. Thus, there is no evidence supporting any specialized computer hardware or other inventive computer components, i.e., a particular machine.
Issue 2B: Claim(s) Provide(s) an Inventive Concept?
We next determine whether the additional element cited in 2A-2 /or the sequence of steps performed by the elements are an inventive concept. And we see whether these concepts well understood, routine, conventional.
The additional elements are cited above. The functions performed by the each of these elements along or in combination merely gather and analyze and store data, each steps requiring nothing more than conventional generic technology. Considered as an ordered combination, the generic computer, server / network do nothing more that is not already present when the limitations are considered separately. Claim 1 read in the light of the specification does not purport to improve the functioning of this elements. As a matter of fact, the specification does not teach beyond the device itself.
Claims 3-8 provide further elements of the abstract idea but as they are classified as further steps of organizing human behavior without additional elements beyond the abstract idea, these claims fail to overcome 2A-2 and 2B.
Response to Arguments
Applicant argues that claim 2 does not merely "recite a commercial interaction", but rather a specific, unconventional manner of dynamically increasing or decreasing the number of fractional interests created in response to trading price thresholds that is tied to a computer-implemented control mechanism. The Examiner is not persuaded by this argument as it is directed to the abstract idea rather than components in combination with the abstract idea.
Alternatively, this is an example of concepts performed in the human mind as mental processes because the steps of analyzing, generating, transmitting, receiving, displaying, and processing data mimic human thought processes of observation, evaluation, judgment, and opinion, perhaps with paper and pencil, where the data interpretation is perceptible only in the human mind. See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016). Claim 2, unlike the claims found nonabstract in prior cases, uses generic computer technology to perform data analysis, generation, transmission, reception, display, and processing and does not recite an improvement to a particular computer technology.
There is nothing in the specification to suggest that there is any feature of its instrument that requires the use of a processor for it to be created and or traded.
The applicant argues that the claims are patent eligible under The Step 2A, Prong II, and MPEP 2106.05(a), the claimed invention "reflect[ s] an improvement to [a] technical field" and thus integrates the alleged judicial exception into a practical application. The argument is that in the present application, "the at least one processor ... create interests in an intangible representation of a person .. . and fractional interests in the intangible representation of the person ... wherein the interests in the intangible representation of the person are property rights that have no intrinsic value and no interest in or obligation by the person ... "
The examiner disagrees. The teaching within the specification is sparse and limited as to what the processor does to “create” this interest. The courts have held that the lack of teaching via a written description as to how a result is achieved is indicative of ineligible subject matter. Here, the specification teaches that [s]ynthetic asset generator 110 generates synthetic assets. Synthetic asset generator 110 is capable of determining the initial aggregate number of fractional interests to be issued for each synthetic asset and the price at which the synthetic asset may be initially offered to users. Once the aggregate number of fractional interests and price of the fractional interests for a given synthetic asset have been determined, the synthetic asset is made available to trading module 104. P[0023]. There is no indication in the Specification, nor does the Applicant direct to any indication, that the operations recited in the claims require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any asserted inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2-6 and 8 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee US Patent Pub 20050187866 in view of McMahon 20060200409 and further in view of Horwitz 20060253387 further in view of Bertrand M. Roehner, Stock markets are not what we think they are: the key roles of cross-ownership and corporate treasury stock Institute for Theoretical and High Energy Physics, University Paris 7, Paris, France Received 22 July 2004.
Lee teaches the following;
processor and medium, paragraph [0011]):
The reference fails to tech but McMahon teaches a processor to receive from a first computing device a request to create interests (p [0054] in a representation of a person, wherein the interests in the representation of the person are created property rights that have no intrinsic value and no interest in or obligation by the person, and wherein the request comprises a number of the interests to create and an initial price of each of the interests; McMahon P[0053 and 0059]. ]; It would have been obvious to one skilled in the art at the time to trade the fractional interest in the intangible representation of the person of the secondary reference on the platform of the primary reference as motivated by the any of the advantages of electronic trading.
transmit a first web-based graphical user interface to the first computing device P[0206];
creating the interests in the intangible representation of the person by the at least one processor and fractional interests in the intangible representation of the person, wherein the interests in the intangible representation of the person are electronically transferrable McMahon p[0053 and 0059]; It would have been obvious to one skilled in the art at the time to trade the fractional interest in the intangible representation of the person of the secondary reference on the platform of the primary reference as motivated by the any of the advantages of electronic trading.
display via the first web-based graphical user interface an indication that interests Lee p[0110] in the intangible representation of the person are available for purchase at the initial price and the fractional interests in the intangible representation of the person are available for purchase at another initial price McMahon [0053 and 0059] ]; It would have been obvious to one skilled in the art at the time to trade the fractional interest in the intangible representation of the person of the secondary reference on the platform of the primary reference as motivated by the any of the advantages of electronic trading.
receive an acquisition request from the first computing device indicating a desire to acquire at least one of the interests in the person at the initial price (place bids: Lee paragraph [0110]);
responsive to the acquisition request, determine whether a first electronic account has enough available funds to fulfill the acquisition request (bids are validated and credit check or trading limit checks: paragraphs Lee [0110 and 0224]);
when the first electronic account has enough available funds to fulfill the acquisition request, transfer to the first electronic account at least one of the interests in the person and reduce the available funds in the first electronic account based on a number of interests acquired (known in the art as closing the deal, shown in adjustments to my portfolio, billing, audit trail, etc. upon
completion of the trade: paragraphs Lee [0121-0122 and 0168]);
responsive to the transfer, display via the first web-based graphical user interface an indication of the number of interests acquired in the person and an amount of the available funds in the first
electronic account (Lee Figure 5: My portfolio and paragraph [0068]);
subsequent to acquiring interests in the person, receive from the first computing device a request to sell a number of interests in the person, wherein the request to sell indicates a number of
interests to sell and a sales price at which to sell the interests Lee, (Figure 5 and paragraph [0114]); transmit a second web-based graphical user interface to a second computing device Lee (paragraph [0206]);
display via the second web-based graphical user interface in the second computing device an indication of the request to sell Lee (paragraphs [0114 and 0206]);
receive from the second computing device a request to buy interests in the person, wherein the request to buy indicates a number of interests to buy and a purchase price Lee (Figure 18: 359, and paragraphs [0114 and 0120-0122]);
responsive to the request to buy, determine whether a second electronic account has enough available funds to fulfill the request to buy Lee (Figure 5: My portfolio and paragraphs [0067, 0068 and 0179]);
determine whether a selling price of the request to sell and a purchase price of the request to buy match Lee (paragraph [0011 and 0067]);
responsive to determining that the selling price and the purchase price match, transfer interests in the person from the first electronic account to the second electronic account, wherein the transfer includes to remove from the first electronic account interests in the person sold via the first computing device and to add to the second electronic account interests in the person purchased via the second computing device (known in the art as closing the deal, shown in adjustments to my portfolio, billing, audit trail, etc. upon completion of the trade: paragraphs Lee [0121-0122 and 0168]);
and responsive to the transfer, display via the first web-based graphical user interface an indication of the number of interests in the person contained in the first electronic account and display via the second web-based graphical user interface an indication of the number of interests in the person contained in the second electronic account Lee (Figure 5: My portfolio and paragraph [0068]).
The references teaches creating the interests in the intangible representation of the person by the at least one processor and fractional interests in the intangible representation of the person, wherein the interests in the intangible representation of the person are electronically transferrable McMahon p[0053 and 0059]; It would have been obvious to one skilled in the art at the time to trade the fractional interest in the intangible representation of the person of the secondary reference on the platform of the primary reference as motivated by the any of the advantages of electronic trading, but fails to teach wherein creating further comprises when a trading price of the fractional interests exceeds a maximum, increasing a number of fractional interests created, and when a trading price of the fractional interests is below a minimum, reducing the number of fractional interests created.
The newly cited reference and the examiner takes official notice of the well known capital financing concept of of issuing and buying back shares based on the valuation of the equity. Issuing stock (from the pool of Treasury Stock) when the trading stock price is low, and selling stock when the trading stock price is high (and returning the stock to the Treasury Stock pool). It would have been obvious to one skilled in the art at the time to have combined this reference with the primary reference as both are directed to optimizing capital stock structure and to do so with the processor and memory of the primary reference as the result of the combination are predictable. The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention and is based on the ubiquitous nature of electronic trading and electronic trading exchanges.
3. (Previously Presented) The apparatus of claim 2, in which the instructions, when executed by the at least one processor, further cause the apparatus to: when the selling price and the purchase price do not match, periodically determine whether subsequently placed buy orders match the request to sell. Lee [226-8]
4. (Previously Presented) The apparatus of claim 2, in which the number of the
interests to create is determined based on a number of received requests to buy interests in the person. Lee [112]
8. (Previously Presented) The apparatus of claim 2, in which the instructions, when executed by the at least one processor, further cause the apparatus to: decrease a number of the interests in the person or increase a price of the interests in the person when a price of the interests reaches a pre-determined minimum price. Lee [110]
As to claims 5-6;
claim 5
Lee discloses designate a portion of the available funds as reserved funds in response to transferring to the first electronic account at least one of the interests in the person, an amount of the reserved funds being equal to an amount by which the available funds are reduced (paragraphs [0119-0122 and 0218]).
Lee doesn't specifically teach designat[ing] a portion of the available funds as reserved funds in response to transferring to the first electronic account at least one of the interests in the person, an amount of the reserved funds being equal to an amount by which the available funds are reduced. Lee teaches payments and billing (Figure 13B and paragraphs [0119-0122 and 0218]).
Horwitz teaches designating a portion of the available funds as reserved funds in response to transferring to the first electronic account at least one of the interests in the person, an amount of the reserved funds being equal to an amount by which the available funds are reduced (paragraphs [0025 and 0027]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lee and McMahon to include designating a portion of the available funds as reserved funds in response to transferring to the first electronic account at least one of the interests in the person, an amount of the reserved funds being equal to an amount by which the available funds are reduced as taught by Horwitz to combine prior art elements according to known methods of account balancing.
claim 6
Lee discloses designate the reserved funds as available funds in response to the transfer from the first electronic account to the second electronic account (Figure 13B and paragraphs [0116-0122 and claim 25).
Lee doesn't specifically teach designating the reserved funds as available funds in response to the transfer from the first electronic account to the second electronic account. Lee teaches payments and billing (Figure 13B and paragraphs [0116-0122] and claim 25).
Horwitz teaches designating the reserved funds as available funds in response to the transfer from the first electronic account to the second electronic account (paragraphs [0025 and 0027]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lee and McMahon to include designating the reserved funds as available funds in response to the transfer from the first electronic account to the second electronic account as taught by Horwitz to
combine prior art elements according to known methods of account balancing.
Response to Argument
The applicant’s arguments amended claim 2 is persuasive as to the existing references but is rendered obvious by the newly cited reference for the reasons stated in the rejection for the reasons above.
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 RICHARD C WEISBERGER whose telephone number is (571)272-6753. The examiner can normally be reached Monday - Thursday 10AM-8PM PCT.
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/RICHARD C WEISBERGER/
Primary Examiner, Art Unit 3693