DETAILED ACTION
Response to Amendment
This Office Action is responsive to Applicant’s arguments and request for reconsideration of application 17/724,391 (08/05/11) filed on 7/30/25.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities:
Claim 1 recites, “receiving via a user interface an anonymous sales offer related to said transaction offered by an initiating party, said anonymous offer identified by said alias of said initiating party and said offer comprising one or more terms;”
This should be -- receiving via a user interface device an anonymous sales offer related to said transaction offered by an initiating party, said anonymous offer identified by said alias of said initiating party and said offer comprising one or more terms; -- or something similar.
Claim 5 recites, “wherein said counter parties' counter offer price is made available for a limited time for acceptance by said initiating party and any other users designated by said one or more counter parties.”
This should be -- wherein said counter parties' counter offer price is made available for a limited time for acceptance by said initiating party and any other users designated by said [[DELETE one or more counter parties]] counter parties’. --
To avoid undue interpretation, consistent terminology should be used.
Singular/ plural problem.
Appropriate correction is required.
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 4 - 7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., abstract idea).
Groupings of abstract ideas enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
Certain methods of organizing human activity- fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., abstract idea) is integrated into a practical application.
Considerations indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception
Considerations that are not indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., Whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
Considerations indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception NOTE: The only consideration that does not overlap with the considerations indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are not indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See also, 2010 Revised Patent Subject Matter Eligibility Guidance; Federal Register; Vol. 84, No. 4; Monday, January 7, 2019
Claims 1 and 4 - 7 is/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.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 1, is/are directed to a machine (i.e. apparatus).
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claim as a whole recites a method of organizing human activity. The claimed invention is involves allowing each party to use a unique alias which maintains said anonymity of said party and permitting said party to anonymously enter information relating to said party's offer related to said sales transaction; storing information related to: each said party's respective alias and transactional information related to said transaction while maintaining said anonymity of each said party through a completion of said transaction; and receiving an anonymous sales offer related to said transaction offered by an initiating party, said anonymous offer identified by said alias of said initiating party and said offer comprising one or more terms; anonymously and iteratively disseminating to counter parties to said transaction one or more terms of said anonymous offer; anonymously and iteratively receiving from said counter parties an by acceptance, rejection or counterproposal of said terms by each counter party until said initiating party either accepts or rejects each counter party's acceptance or counterproposal; wherein said anonymous and iterative dissemination of said one or more terms comprises: controlling, as a controlled disclosure, said one or more parties iterative and contemporaneous disclosure of select information specific to each of said one or more terms of said anonymous offer as selected by each of said one or more disclosing parties; maintaining said anonymity of each party until conclusion of said negotiated transaction; controlling disclosure of subsets of said information disclosed from each of said one or more disclosing parties under at least one alias, allowing each said party to said transaction to maintain said party's competitive advantage by maintaining said party's anonymity throughout said transaction; and anonymously disclosing said controlled disclosure to designated receiving parties in response to said disclosing party's input, which is a fundamental economic principles or practices (anonymously negotiating and executing a sales transaction directly between two or more parties); commercial or legal (anonymously negotiating and executing a sales transaction directly between two or more parties); and managing personal behavior or relationships or interactions between people (allows, permits, store, receiving, anonymously and iteratively disseminating, anonymously and iteratively receiving, controlling, maintaining, anonymously disclosing).
The mere nominal recitation of “an apparatus” does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
Mental Processes
The claim recites limitations directed to allowing each party to use a unique alias which maintains said anonymity of said party and permitting said party to anonymously enter information relating to said party's offer related to said sales transaction; storing information related to: each said party's respective alias and transactional information related to said transaction while maintaining said anonymity of each said party through a completion of said transaction; and receiving an anonymous sales offer related to said transaction offered by an initiating party, said anonymous offer identified by said alias of said initiating party and said offer comprising one or more terms; anonymously and iteratively disseminating to counter parties to said transaction one or more terms of said anonymous offer; anonymously and iteratively receiving from said counter parties an by acceptance, rejection or counterproposal of said terms by each counter party until said initiating party either accepts or rejects each counter party's acceptance or counterproposal; wherein said anonymous and iterative dissemination of said one or more terms comprises: controlling, as a controlled disclosure, said one or more parties iterative and contemporaneous disclosure of select information specific to each of said one or more terms of said anonymous offer as selected by each of said one or more disclosing parties; maintaining said anonymity of each party until conclusion of said negotiated transaction; controlling disclosure of subsets of said information disclosed from each of said one or more disclosing parties under at least one alias, allowing each said party to said transaction to maintain said party's competitive advantage by maintaining said party's anonymity throughout said transaction; and anonymously disclosing said controlled disclosure to designated receiving parties in response to said disclosing party's input.
The limitation(s), as drafted, is/are a process that, under it’s broadest reasonable interpretation, covers performance of the limitation(s) in the mind. That is, other than reciting “an apparatus”, nothing in the claim element precludes the steps from practically being performed in the mind. In other words, the claim encompasses the user manually allowing each party to use a unique alias which maintains said anonymity of said party and permitting said party to anonymously enter information relating to said party's offer related to said sales transaction; storing information related to: each said party's respective alias and transactional information related to said transaction while maintaining said anonymity of each said party through a completion of said transaction; and receiving an anonymous sales offer related to said transaction offered by an initiating party, said anonymous offer identified by said alias of said initiating party and said offer comprising one or more terms; anonymously and iteratively disseminating to counter parties to said transaction one or more terms of said anonymous offer; anonymously and iteratively receiving from said counter parties an by acceptance, rejection or counterproposal of said terms by each counter party until said initiating party either accepts or rejects each counter party's acceptance or counterproposal; wherein said anonymous and iterative dissemination of said one or more terms comprises: controlling, as a controlled disclosure, said one or more parties iterative and contemporaneous disclosure of select information specific to each of said one or more terms of said anonymous offer as selected by each of said one or more disclosing parties; maintaining said anonymity of each party until conclusion of said negotiated transaction; controlling disclosure of subsets of said information disclosed from each of said one or more disclosing parties under at least one alias, allowing each said party to said transaction to maintain said party's competitive advantage by maintaining said party's anonymity throughout said transaction; and anonymously disclosing said controlled disclosure to designated receiving parties in response to said disclosing party's input.
The mere nominal recitation of “an apparatus” does not take the claim limitation out of the mental processes grouping. This/these limitation(s) recite a mental process. Thus, the claim recites an abstract idea.
PRONG 2: The judicial exception (i.e., an abstract idea). Is not integrated into a practical application.
The claim recites the combination of additional elements of “an apparatus” comprising “two or more user interface devices”/ “user interface(s)”; and a “central processing device” comprising “a computer processor” and “one or more data storage devices”. The additional elements also recite that the “two or more user interface devices”/ “user interface(s)” and/ or the “central processing device” perform each of the steps or acts required of the claimed invention. The additional element(s) is/ are recited at a high level of generality (i.e., performing the generic functions of (a) data receipt/ transmission (e.g., “receiving”, “anonymously and iteratively disseminating”, “anonymously and iteratively receiving”, “anonymously disclosing”, etc. step(s) as claimed); (b) data processing (e.g., “allows”, “permits”, “controlling”, “maintaining”, etc. step(s) as claimed); and (c) data storage (e.g., “store”, etc. step(s) as claimed)). The additional element(s) is/ are recited at a high level of generality (i.e., as general means of gathering information for anonymously negotiating and executing a sales transaction, and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The “apparatus” that is used to perform the steps or acts is also recited at a high level of generality, and merely automates the step(s). The “apparatus” limitations are no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limitations on practicing the abstract idea. The claim is directed to an abstract idea. NOTE: (a) The steps are exclusively from the perspective of the “apparatus”.
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do not provide an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 04/19/22 does not provide any indication that the “apparatus” is anything other than a generic, off-the-shelf computer component. Furthermore, the prosecution history of the instant application provides Jain and Walker operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “receiving”, “anonymously and iteratively disseminating”, “anonymously and iteratively receiving”, “anonymously disclosing”, etc. step(s) as claimed); (b) data processing (e.g., “allows”, “permits”, “controlling”, “maintaining”, etc. step(s) as claimed); and (c) data storage (e.g., “store”, etc. step(s) as claimed) are well understood, routine and conventional. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed (a) data receipt/ transmission (e.g., “receiving”, “anonymously and iteratively disseminating”, “anonymously and iteratively receiving”, “anonymously disclosing”, etc. step(s) as claimed); (b) data processing (e.g., “allows”, “permits”, “controlling”, “maintaining”, etc. step(s) as claimed); and (c) data storage (e.g., “store”, etc. step(s) as claimed) are well understood, routine and conventional. Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Versata Dev. Group, OIP Techs court decisions cited in MPEP § 2106.05(D) (ii) indicate storing and retrieving information in memory is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no invention concept in the claim, and thus the claim is ineligible.
Dependent claims 4 - 7 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1 and 4 - 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 11 of U.S. Patent No. 11308566. Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to:
US App. No. 17724391 (as represented by claim 1)
US Pat. No. 11308566 (as represented by claim 1)
An apparatus for anonymously negotiating and executing a sales transaction directly between two or more parties each party using said apparatus, said two or more parties each having a unique identity comprising a unique alias, and said sales transaction comprising a sales offering made by one of said parties to said other parties to said transaction, said apparatus comprising:
A system for anonymously executing a negotiated transaction for buying and selling products, services and financial instruments directly between two or more parties where by one or more parties to said negotiated transaction, as one or more disclosing parties, progressively and anonymously discloses at select times during said negotiated transaction select information to one or more other parties to said negotiated transaction, as one or more receiving parties, in which said progressive and anonymous disclosure advances said negotiated transaction to conclusion, said system comprising:
two or more user interface devices each of which is assigned to one of said parties, and each of which allows each party to use a unique alias which maintains said anonymity of said party and permits said party to anonymously enter information relating to said party's offer related to said sales transaction;
a central processing device in operative communication with each of said user interface devices, said central processing device comprising:
a computer processor; and
one or more data storage devices in operative communication with said processor, which store information related to:
each said party's respective alias and transactional information related to said transaction while maintaining said anonymity of each said party through a completion of said transaction; and
one or more software applications comprising software instructions that, when executed by said processor, cause said processor to perform operations comprising:
two or more user interfaces;
and a computerized processing device in operative communication with said two or more user interfaces, said computerized processing device comprising:
a processor, and
memory storing said information related to said negotiated transaction and software instructions, said software instructions when executed by said processor causes said processor to perform operations comprising:
receiving via a user interface an anonymous sales offer related to said transaction offered by an initiating party, said anonymous offer identified by said alias of said initiating party and said offer comprising one or more terms;
anonymously receiving via each user interface of said two or more user interfaces, over a network and from a computerized device associated with one of said two or more parties to said negotiated transaction, information related to said negotiated transaction input by said one of said two or more parties to said negotiated transaction, wherein each user interface is associated with one or more aliases associated with each said one of said two or more parties to said negotiated transaction;
anonymously and iteratively disseminating to said one or more other user interface devices associated with counter parties to said transaction one or more terms of said anonymous offer;
anonymously and iteratively receiving from said one or more other user interface devices associated with said counter parties an by acceptance, rejection or counterproposal of said terms by each counter party until said initiating party either accepts or rejects each counter party's acceptance or counterproposal;
anonymously and iteratively disseminating, over said network via one or more of said two or more interfaces to said one or more computerized devices associated with said one or more of said two or more parties to said negotiated transaction, information input by said one or more disclosing parties as said one or more receiving parties, said information related to said negotiated transaction received over said network via one or more of the two more interfaces from said one or more computerized devices associated with said one or more of said two or more parties to said negotiated transaction, as said one or more disclosing parties, at a time determined by said one or more disclosing parties;
wherein said anonymous and iterative dissemination of said one or more terms comprises:
wherein anonymously and iteratively disseminating information comprises:
controlling, as a controlled disclosure, said one or more parties iterative and contemporaneous disclosure of select information specific to each of said one or more terms of said anonymous offer as selected by each of said one or more disclosing parties;
controlling, as a controlled disclosure, said one or more disclosing parties' iterative and contemporaneous disclosure of select information specific to each of said one or more receiving parties' as selected by said one or more disclosing parties;
maintaining said anonymity of each party until conclusion of said negotiated transaction;
maintaining the anonymity of each party until the conclusion of the negotiated transaction;
controlling disclosure of subsets of said information disclosed from each of said one or more disclosing parties under at least one alias, allowing each said party to said transaction to maintain said party's competitive advantage by maintaining said party's anonymity throughout said transaction; and
controlling disclosure of multilateral subsets of said information disclosed from each of said one or more disclosing parties under at least one alias allowing each said party to said transaction to maintain said party's competitive advantage by maintaining said party's anonymity throughout said transaction; and
anonymously disclosing said controlled disclosure to designated receiving parties in response to said disclosing party's input via said user interface device.
anonymously disclosing said controlled disclosure to said designated receiving parties in response to said disclosing party's input via said user interface.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4 and 5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 originally refers to “unique alias” (e.g., “said two or more parties having a unique identity comprising a unique alias,”; “two or more user interface devices each of which is assigned to one of said parties, and each of which allows each party to use a unique alias”), but all subsequent references recite “alias”. It is unclear whether subsequent references to “alias” are intended to be the type of “unique alias” recited. There is insufficient antecedent basis and/ or consistent terminology problem (e.g., “unique alias” vs. “said alias”) rendering the claims indefinite.
Claim 1 recites the limitations "and said sales transaction comprising a sales offering made by one of said parties to said other parties to said transaction";
“each said party's respective alias and transactional information related to said transaction while maintaining said anonymity of each said party through a completion of said transaction;”
“receiving via a user interface an anonymous sales offer related to said transaction offered by an initiating party, said anonymous offer identified by said alias of said initiating party and said offer comprising one or more terms;”
“anonymously and iteratively disseminating to said one or more other user interface devices associated with counter parties to said transaction one or more terms of said anonymous offer;”
“maintaining said anonymity of each party until conclusion of said negotiated transaction;”
“controlling disclosure of subsets of said information disclosed from each of said one or more disclosing parties under at least one alias allowing each said party to said transaction to maintain said party's competitive advantage by maintaining said party's anonymity throughout said transaction;”
There is insufficient antecedent basis and/ or consistent terminology problem (e.g., “sales transaction” vs. “said transaction” vs. “said negotiated transaction”) rendering the claims indefinite.
Claim 1 recites, “one or more software applications comprising software instructions when executed by said processor causes said processor to perform operations related to said negotiations and transaction comprising:”
This should be -- one or more software applications comprising software instructions when executed by said computer processor causes said processor to perform operations [[DELETE related to said negotiations and transaction]] comprising: --
There is insufficient antecedent basis and/ or consistent terminology problem (e.g., “a computer processor” vs. “said processor”) rendering the claims indefinite.
The language “said negotiations and transaction” is inconsistent with the “anonymously negotiating and executing a sales transaction” language in the preamble rendering the claim indefinite.
Claim 1 recites the limitations, “receiving via a user interface an anonymous sales offer related to said negotiated transaction offered by an initiating party, said anonymous offer identified by said alias of said initiating party and said offer comprising one or more terms;”
“anonymously and iteratively disseminating to said one or more other user interfaces associated with counter parties to said transaction one or more terms of said anonymous offer;”
There is insufficient antecedent basis and/ or consistent terminology problem (e.g., “anonymous sales offer” vs. “said anonymous offer” vs. “said offer”) rendering the claims indefinite.
Claim 1 recites, “controlling disclosure of subsets of said information disclosed from each of said one or more disclosing parties under at least one alias allowing each said party to said transaction to maintain said party's competitive advantage by maintaining said party's anonymity throughout said transaction;” When applicant recites “said information”, should this be -- said select information -- or something similar?
The claim is indefinite because there several types of information that were previously referenced (e.g., “information relating to said parties offer”; “information related to: each said party’s respective alias”; “transactional information related to said transaction”; “select information”) and it is unclear which “information” was intended. Only the “select information” appears to be related to the disclosure however.
Claim 4 recites the limitation " wherein said information related to said sales offering disseminated from said initiating party comprises an offering price associated with said sales offering”. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation " wherein said information related to said sales offering disseminated from at least one of said counterparties comprises a price counter offer to said offering price offered by said initiating party”. There is insufficient antecedent basis for this limitation in the claim.
NOTE: The particular language used is not required, but intended as an aide to the applicant in overcoming one or more of the objections and/ or rejections noted in this office action. Alternative language may be proposed. Please indicate where support may be found in the specification for any amendments made.
Response to Arguments
Objections
Withdrawn in light of applicant’s arguments and/ or amendments.
101
Applicant's arguments have been fully considered but they are not persuasive.
(1)Applicant argues the claimed invention is not directed to a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claimed invention is directed to certain methods of organizing human activity.
Fundamental economic principles or practices relate to the economy and commerce. The claimed invention encompasses fundamental economic principles or practices as it relates to anonymously negotiating and executing a sales transaction directly between two or more parties.
The claimed invention encompasses commercial or legal interactions. The claimed invention relates to anonymously negotiating and executing a sales transaction directly between two or more parties. Anonymously negotiating and executing a sales transaction directly between two or more parties involves “legal obligations”, “sales activities or behaviors” and “business relations”.
The claimed invention encompasses managing personal behavior or relationships or interactions (allows, permits, store, receiving, anonymously and iteratively disseminating, anonymously and iteratively receiving, controlling, maintaining, anonymously disclosing, etc.) between people (parties/ counter parties, etc.).
See also, MPEP §2106.04(a)(2)(II).
Mental Processes
The claimed invention is directed to mental processes. The claimed invention encompasses observations, evaluations, judgements and opinions (e.g., “allows each party to use a unique alias which maintains said anonymity of said party and permits said party to anonymously enter information relating to said party's offer related to said sales transaction”; and “controlling, as a controlled disclosure, said one or more parties iterative and contemporaneous disclosure of select information specific to each of said one or more terms of said anonymous offer as selected by each of said one or more disclosing parties; maintaining said anonymity of each party until conclusion of said negotiated transaction; controlling disclosure of subsets of said information disclosed from each of said one or more disclosing parties under at least one alias, allowing each said party to said transaction to maintain said party's competitive advantage by maintaining said party's anonymity throughout said transaction”) which are examples of mental processes).
Contrary to applicant’s arguments, the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid. Similarly, the courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. Although claims 1 and 4 - 7 suggest the steps or acts occur on a computer (i.e., “an apparatus” comprising “two or more user interface devices”/ “user interface(s)”; and a “central processing device” comprising “a computer processor” and “one or more data storage devices” in apparatus claims 1 and 4 - 7), nothing forecloses applicant’s claimed invention from being performed by a human and thus applicant’s claimed invention is still directed to a mental process.
See also, MPEP §2106.04(a)(2)(III).
(2)Applicant argues the judicial exception (i.e., an abstract idea) is integrated into a practical application.
Applicant suggests the claimed invention presents a “practical application” because it provides a technical solution to a technical problem; and provides improvements in the functioning of a computer, or to any other technology or technical field. The Examiner disagrees.
Applicant’s arguments suggesting the claimed invention provides a technical solution to a technical problem; and provides improvements in the functioning of a computer, or to any other technology or technical field suggests the applicant believes the technical aspects of the invention are substantial. There exists alternative perspectives however.
The “improvements” (e.g., “Applicant respectfully submits that each of these features, whether considered individually or collectively, provide a concrete and technological improvement to the field of automated and online negotiations by addressing problems associated with information leakage, identity revelation, and fairness in competitive transactional systems.” See pg. 9 of applicant’s arguments/ remarks as filed 7/30/25) applicant suggests are really just the benefits of automation itself.
For example, although claims 1 and 4 - 7 suggest the steps or acts occur on a computer (i.e., “an apparatus” comprising “two or more user interface devices”/ “user interface(s)”; and a “central processing device” comprising “a computer processor” and “one or more data storage devices” in apparatus claims 1 and 4 - 7). There is nothing in the claimed invention as to why technology would be necessary.
Adding the words “apply it” (or an equivalent) with the judicial exception is not
not indicative of integration into a practical application. See also, MPEP § 2106.05(f). Merely using a computer as a tool to perform an abstract idea; and mere instructions to implement an abstract idea on a computer are not indicative of integration into a practical application. See also, MPEP §2106.05(f).
Applicant suggests the claimed invention presents a “practical application” because it applies the judicial exception with, or by use of, a particular machine. The Examiner disagrees.
Applicant’s arguments suggesting the claimed invention applies the judicial exception with, or by use of, a particular machine (i.e., “Assuming arguendo that an abstract idea is implicated, amended Claim 1 integrates that idea into a practical application. Specifically, Claim 1: i. recites a specifically configured apparatus comprising a central processing device, user interface devices, and a communication interface (see Claim 1 and Specification at ¶¶ [0030] through [0042]); ii. implements a controlled disclosure protocol governing the iterative dissemination of transaction terms based on preconfigured user preferences (see Claim 1 and Specification at ¶¶ [0036] and [0050]); iii. maintains user anonymity using cryptographically enforced aliases that prevent identification while permitting selective negotiation (see Claim 1 and Specification at ¶¶ [0033] and [0053]); and iv. uses a structured, access-controlled data model to store, offer, and provide response data securely and anonymously (see Claim 1 and Specification at ¶¶ [0041] and [0044]”. See pg. 8 - 9 of applicant’s arguments/ remarks as filed 7/30/25.) suggests the applicant believes the technical aspects of the invention are substantial. There exists alternative perspectives however.
When determining whether a machine recited in a claim provides significantly more, several factors are relevant such as the particularity or generality of the elements of the machine or apparatus; whether the machine or apparatus implements the steps of the method; and whether it’s involvement is extra-solution activity or a field of use.
First, when looking at the particularity or generality of a machine or apparatus the degree to which the machine in the claim can be specifically identified (not any and all machines) is important. In the instant case most of the steps or acts are performed by a general purpose computer (i.e., “central processing device” that includes “a computer processor” and “one or more data storage devices”) that applies the judicial exception by use of conventional computer functions. This does not qualify as a particular machine. This rationale also applies to any suggestion that there is a particular machine because the machine is programmed (i.e., “one or more software applications comprising software instructions that, when executed by said processor, cause said processor to perform operations comprising:”).
Second, although the claim invention recites computers or other machinery (i.e., “an apparatus” comprising “two or more user interface devices”/ “user interface(s)”; and a “central processing device” comprising “a computer processor” and “one or more data storage devices”), the computers or other machinery are used “merely as a tool to perform an existing process”. This does not amount to significantly more than a judicial exception.
Third, the “two or more user interface devices”/ “user interface(s)” do not impose meaningful limitations on the claim. The “two or more user interface devices”/ “user interface(s)” are limited to “data gathering” or are “merely described as the source of the data” which is “insignificant extra-solution activity” (e.g., “receiving via a user interface an anonymous sales offer related to said transaction offered by an initiating party, said anonymous offer identified by said alias of said initiating party and said offer comprising one or more terms; anonymously and iteratively disseminating to said one or more other user interface devices associated with counter parties to said transaction one or more terms of said anonymous offer; anonymously and iteratively receiving from said one or more other user interface devices associated with said counter parties an by acceptance, rejection or counterproposal of said terms by each counter party until said initiating party either accepts or rejects each counter party's acceptance or counterproposal;” and “anonymously disclosing said controlled disclosure to designated receiving parties in response to said disclosing party's input via said user interface device.”). Thus, the associated limitations cannot make an otherwise nonstatutory claim statutory.
See also, MPEP §2106.05(b).
In response to applicant's arguments, it is noted that the features upon which applicant relies (i.e., “Assuming arguendo that an abstract idea is implicated, amended Claim 1 integrates that idea into a practical application. Specifically, Claim 1: i. recites a specifically configured apparatus comprising a central processing device, user interface devices, and a communication interface (see Claim 1 and Specification at ¶¶ [0030] through [0042]); ii. implements a controlled disclosure protocol governing the iterative dissemination of transaction terms based on preconfigured user preferences (see Claim 1 and Specification at ¶¶ [0036] and [0050]); iii. maintains user anonymity using cryptographically enforced aliases that prevent identification while permitting selective negotiation (see Claim 1 and Specification at ¶¶ [0033] and [0053]); and iv. uses a structured, access-controlled data model to store, offer, and provide response data securely and anonymously (see Claim 1 and Specification at ¶¶ [0041] and [0044]”. See pg. 8 - 9 of applicant’s arguments/ remarks as filed 7/30/25.) are not recited in the rejected claim(s). For example, “a communication interface” is not claimed. For example, “based on preconfigured user preferences” is not claimed. For example, “using cryptographically enforced aliases” and “while permitting selective negotiation” is not claimed. For example, “uses a structured, access-controlled data model to store, offer, and provide response data securely and anonymously” is not claimed. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
(3) Applicant argues the claimed invention includes additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea). Applicant argues “non-conventional arrangement”. Applicant argues the claimed invention is not “well-understood, routine and conventional”.
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 04/19/22 does not provide any indication that the “apparatus” is anything other than a generic, off-the-shelf computer component. Furthermore, the prosecution history of the instant application provides Jain and Walker operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “receiving”, “anonymously and iteratively disseminating”, “anonymously and iteratively receiving”, “anonymously disclosing”, etc. step(s) as claimed); (b) data processing (e.g., “allows”, “permits”, “controlling”, “maintaining”, etc. step(s) as claimed); and (c) data storage (e.g., “store”, etc. step(s) as claimed) are well understood, routine and conventional. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed (a) data receipt/ transmission (e.g., “receiving”, “anonymously and iteratively disseminating”, “anonymously and iteratively receiving”, “anonymously disclosing”, etc. step(s) as claimed); (b) data processing (e.g., “allows”, “permits”, “controlling”, “maintaining”, etc. step(s) as claimed); and (c) data storage (e.g., “store”, etc. step(s) as claimed) are well understood, routine and conventional. Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understo