DETAILED ACTION
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 .
Prosecution Status
Applicant’s reply dated 8/5/2026 has been received and reviewed. The status of the claims is as follows:
Claims 1, 5, 10-11, and 36-39 are pending and rejected herein.
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.
1. Claims 1, 5, 10-11, 36-39 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1, 5, 10-11, 36-39 are directed to facilitating an auction and a series of sub-auctions and tracking auction status, which is considered both a fundamental economic practice and a commercial interaction. Each of fundamental economic practices and commercial interactions fall within a subject matter grouping of abstract ideas which the Courts have considered ineligible (Certain methods of organizing human activity). The claims do not integrate the abstract idea into a practical application, and do not include additional elements that provide an inventive concept (are sufficient to amount to significantly more than the abstract idea).
Under step 1 of the Alice/Mayo framework, it must be considered whether the claims are directed to one of the four statutory classes of invention. In the instant case, claims 1, 5, 10-11, 36-39 recite a system comprising a machine readable storage medium and a processor. Therefore, the claims are each directed to one of the four statutory categories of invention (apparatus).
Under step 2A of the Alice/Mayo framework, it must be considered whether the claims are “directed to” an abstract idea. That is, whether the claims recite an abstract idea and fail to integrate the abstract idea into a practical application.
Regarding independent claim 1, the claim sets forth a process in which an auction and a series of sub-auctions are facilitated, and auction statuses are tracked, including through the facilitation of sales activities, in the following limitations:
receive bids for a multi-item multi-unit XOR (MIMU-XOR) auction, each bid including a bid span (s), a bid value (v), a bidder identity (p), and a time of bid placement (t);
track a status of each sub-auction of the MIMU-XOR auction, the status for each sub-auction comprising a value of the respective sub-auction and a last winning bid of the respective sub-auction,
wherein each sub-auction is defined by a particular span (X) and bidder coalition (P) and includes only bids that are placed on X or smaller spans by bidders from coalition P,
wherein a first array structure VAL[X, P] stores a current value of sub-auction [X, P] and a second array structure LastWinBid[X, P] stores a latest winning bid of sub- auction [X, P],
wherein, after a new bid b =<s,v,p,t> is submitted, the processor loops through all sub-auctions [X,P] to make incremental updates by:
checking if bid b belongs to sub-auction [X,P], where bid b belongs to sub-auction [X,P] if and only if its span s contains no more units on each item than span X and pϵP;
checking if sub-auction [X,P] needs updating, where sub-auction [X,P] needs to be updated if and only if v + VAL[X-s, P\p] > VAL[X,P]; and
in response to [X,P] needing updating, updating sub-auction [X,P] as follows: VAL[X,P] = v + VAL[X-s, P\p] and LastWinBid[X,P] = b; and
determine bidder support information comprising winning levels, deadness levels, winning bids, and live bids based on the status of each sub-auction including:
receiving a winning level query from a bidder p for a span s and returning a value difference between an entire auction and a complementary sub-auction, where winning level for sub-auction [s,p] is computed as VAL[N, P] - VAL[N-s, P \p], where N is a span of the entire auction and P is a coalition that contains all bidders;
initializing an empty array VCS [s,p] and looping through bidder coalitions P to add coalitions to VCS[s,p] by checking whether a coalition belongs to VCS[s,p]:
receiving a deadness level query from bidder p for span s and determining a smallest value among sub-auctions whose bidder coalitions belong to VCS[s,p], where the deadness level is computed as a minimum of VAL[s,Q] for each bidder coalition Q in VCS[s,p]; and
receiving a winning bid query for a span X and a bidder coalition P and, in response, initializing an empty WIN array and iteratively adding each last winning bid to the WIN array and navigating to a complementary sub-auction [X-s, P\p] until X is not greater than 0 or P is empty.
The above-recited limitations set forth the fundamental economic principle of facilitating auctions, including determining auction status and establish a commercial interaction between bidders and a seller to complete an auction process. This arrangement amounts to each of a fundamental economic principle or practice, a sales activity or behavior, and business relations. Such concepts have been considered ineligible certain methods of organizing human activity by the Courts (See MPEP 2106.04(a)).
Claim 1 does recite additional limitations:
a machine readable storage medium storing instructions; and
a processor to execute the instructions throughout a duration of an auction to
These additional elements merely amount to the general application of the abstract idea to a technological environment. The specification makes clear the general-purpose nature of the technological environment. Paragraphs 23-24 and 27 indicate that while exemplary general purpose systems may be specific for descriptive purposes, any elements or combinations of elements capable of implementing the claimed invention are acceptable. That is, the technology used to implement the invention is not specific or integral to the claim.
Therefore, considered both individually and as an ordered combination, the additional elements do no more than generally link the use of the abstract idea to a particular technological environment or field of use. That is, given the generality with which the additional limitations are recited, the limitations do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim. Additionally, the claims do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not effect a transformation or reduction of a particular article to a different state or thing; and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea. Accordingly, the Examiner concludes that the claim fails to integrate the abstract idea into a practical application, and is therefore “directed to” the abstract idea.
Under step 2B of the Alice/Mayo framework, it must finally be considered whether the claim includes any additional element or combination of elements that provide an inventive concept (i.e., whether the additional element or elements are sufficient to amount to significantly more than the abstract idea). In the instant case, as indicated above, the additional elements merely provide a generic, non-particular operating environment for the abstract idea. Accordingly, the Examiner asserts that the additional elements, considered both individually, and as an ordered combination, do not provide an inventive concept, and the claim is ineligible for patent.
Regarding Claims 5, 10-11, 36-39
Dependent claims 5, 10-11, 36-39 merely provide embellishments to the abstract idea, and do not confer eligibility on the claimed invention.
Response to Arguments
Applicant’s arguments with respect to the 35 USC 101 rejection have been fully considered, but they are not persuasive. Applicant initially asserts that:
When considered as a whole, claim 1 is not directed merely to determining bidder- support information or facilitating an auction. Rather, claim 1 recites a specific machine- implemented state-maintenance architecture in which sub-auction records are stored according to span and bidder-coalition dimensions, incrementally updated in response to bid submissions, and later retrieved, filtered, and traversed to service multiple categories of bidder support queries. Claim 1 does not merely request an abstract result. Instead, claim 1 specifies how machine- maintained sub-auction state is created, organized, modified, and subsequently used throughout the duration of the auction.
In particular, claim 1 recites a first two-dimensional array structure VAL[X,P] and a second two-dimensional array structure LastWinBid[X,P], where each stored element corresponds to a sub-auction defined by both a span dimension X and a bidder coalition dimension P. The Specification explains that VAL[X,P] stores the up-to-date value of sub- auction [X,P] and LastWinBid[X,P] stores the latest winning bid of sub-auction [X,P]. (Spec., para. [0029]; FIG. 3B). Claim 1 further recites that, after submission of a new bid b=<s,v,p,t>, the processor loops through sub-auctions, determines whether the bid belongs to a sub-auction, determines whether the sub-auction requires updating based on the complementary sub-auction condition v + VAL[X-s, P\p] > VAL[X,P], and, when that condition is satisfied, updates both VAL[X,P] and LastWinBid[X,P]. (Spec., para. [0030]; FIG. 3C).
Claim 1 also recites additional state-based operations, including construction of a viable coalition set VCS[s,p] (Spec., para. [0032]; FIG. 3E), determination of deadness levels using VCS[s,p] (Spec., para. [0033]; FIG. 3F), and reconstruction of winning bids through iterative traversal of complementary sub-auctions using stored LastWinBid records (Spec., para. [0034]; FIG. 3G). These operations collectively define a particular machine-implemented architecture for maintaining and utilizing sub-auction state, not merely a mathematical calculation or economic determination.
Accordingly, the Examiner's characterization of claim 1 as merely storing, updating, and retrieving information or merely improving abstract determinations of bidder-support information fails to account for the actual ordered combination recited in claim 1. The outputs of claim 1 arise from interaction with a continuously updated sub-auction infrastructure that persists throughout the duration of the auction, not from an isolated calculation performed only in response to a query. The Specification likewise describes computational infrastructure that maintains sub-auction status as the auction progresses and generates bidder-support information from that maintained sub-auction status. (Spec., paras. [0022], [0024]; FIG. 1).
In response, the Examiner notes that applicant’s own arguments refer exclusively to “state-based operations” of storing, maintaining, and updating values for determining the state of auctions and sub-auctions in an array structure. No specific computer architecture or data structures within the computer memory are described, no computer operations are asserted, and no linkage between the claimed computational infrastructure and any computer system or hardware element is established. That the values with array structure may be persisted and updated through an auction as it progresses, rather than an isolated calculation has no bearing on eligibility. Complexity does not define abstractness.
Merely using a computer to perform, even to perform more efficiently, what could otherwise be accomplished manually does not confer patent-eligibility." [See buySAFE, Inc. v. Google, Inc., (citing Bancorp Servs., L.L.C. v. Sun Life Assur)]. A machine will only impose a meaningful limit on the scope of a claim when it plays a significant part in permitting the claimed method to be performed, rather than functioning solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations. [see SiRF Tech., Inc. v. ITC]. A computer is not a significant part of the process if that process can be performed without a computer. [See CyberSource v. Retail Decisions].
Similar to the discussion in SmartGene Inc. v. Advanced Biological Lab, the claimed functions can be carried out in existing computers long in use without any new machinery being necessary. The claims at issue do not purport to identify new computer hardware, but rather, it assumes the availability of generic computer components for data input, storage, retrieval, comparison, and output. The claims at issue recite only use of a computer in facilitation of the exception, the computer defined only by its function.
Applicant further asserts:
The Examiner further submits that the alleged improvement merely addresses a mathematical problem, that the benchmark results merely show a better algorithm, and that the claimed architecture is generic, routine, conventional, or merely mathematical. (Office Action, pages 11-17). Applicant does not contend that faster calculation or unconventionality alone establishes eligibility. Rather, the benchmark and efficiency evidence merely corroborate that the claimed maintained-state architecture is structurally and operationally different from prior approaches that repeatedly solved optimization problems from scratch. The Specification explains that the disclosed system tracks values and winning bids of sub-auctions as the auction progresses (Spec., para. [0041]), and the Gupta Declaration explains that prior approaches relied
on repeatedly solving large-scale optimization problems while the claimed invention maintains and incrementally updates sub-auction information for subsequent query servicing. (Gupta Decl., paras. 5, 7, and 9).
The Examiner respectfully disagrees, and asserts that neither the claims, nor the specification details any manner of “architecture” beyond existing systems that are merely leveraged to implement the abstract idea. A novel array structure and computational framework for solving an optimization problem in determining the state of an auction is very plainly a mathematical approach for addressing a commercial need.
Applicant further asserts:
Furthermore, under Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), whether a claim element or ordered combination is well-understood, routine, and conventional is a factual determination. The Office Action repeatedly characterizes the claimed architecture as generic, routine, conventional, or merely mathematical (Office Action, pages 11-17), yet cites no evidence establishing that it was well-understood, routine, or conventional to maintain VAL[X,P] and LastWinBid[X,P] records for all combinations of spans and bidder coalitions, update those records using the claimed complementary sub-auction condition, and later service multiple categories of bidder-support queries from the maintained records. By contrast, the Specification discloses the claimed sub-auction infrastructure and update/query architecture (Spec., paras. [0024], [0029]-[0034], [0041]), and the Gupta Declaration explains that prior approaches relied on materially different optimization techniques. (Gupta Decl., paras. 5, 7, and 9). At minimum, the record establishes a factual dispute as to whether the claimed ordered combination was well-understood, routine, and conventional.
Accordingly, the rejection both overgeneralizes the actual ordered combination recited in claim 1 and relies upon unsupported factual assertions concerning conventionality.
The Examiner respectfully disagrees, and asserts that in Berkheimer, the test as to whether claim elements (or a combination thereof) are well-understood, routine, and conventional was not applied to all claim elements, as applicant implies, but rather to additional elements -- that is, the elements which serve to apply the judicial exception to a technological environment. Whether elements the Examiner asserts to be part of the abstract idea are well-understood, routine, and conventional is irrelevant to eligibility considerations. As noted above, the specification makes clear that the technological environment is comprised of known elements
For the above reasons, applicant’s arguments are not persuasive, and the claims are held to be ineligible.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A MISIASZEK whose telephone number is (571)272-6961. The examiner can normally be reached Monday-Thursday. 8:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein can be reached at 571-272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL MISIASZEK/Primary Examiner, Art Unit 3688
