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 .
1. Applicant’s response filed 09/20/2025 in response to “Requirement for Restriction/Election mailed 07/29/2025 is entered. Claims 8-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/20/2025. Accordingly, claims 1-7 are pending for examination on further merits.
Claim Rejections - 35 USC § 101
2. 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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more, when analyzed as per MPEP 2106.
Step 1 analysis:
Claims 1-7 are to a system /apparatus, which are statutory (Step 1: Yes).
Step 2A Analysis:
Claim 1 recites:
1. (original) A computer- implemented system for optimizing asset ownership and control at a transaction level to achieve social good, the system comprising at least one processor, at least one memory, and an application stored in the at least one memory that, when executed by the at least one processor, is configured to perform operations comprising:
(a) receiving a message describing an impending transaction in which a user intends to acquire a product or service from a for-profit entity;
(b) responsive to the message, determining availability of the product or service from a plurality of candidate vendor entities, the candidate vendor entities including at least one for-profit entity that is owned by a non-profit institution;
(c) selecting a first for-profit entity from the plurality of candidate vendor entities to participate in the transaction, wherein the first for-profit entity is owned by a first non- profit institution or is designated for acquisition by a first non-profit institution, the selecting being based at least in part on:
(i) whether the candidate entity is owned by, or is to be acquired by, a non-profit institution: and
(ii) legal, structural, tax, and financial characteristics of the candidate entity suited to achieving maximum economic benefit for the transaction, including the entity's ability to extract economic benefit from ownership and to compensate for legal, structural, tax, or financial weaknesses of the user: and
(iii) where applicable, an analysis of ownership characteristics indicative of a propensity of the entity's owners to divest to a non-profit institution and an analysis of non-financial stakeholder goals;
(d) if the first for-profit entity is not already owned by a non-profit institution, creating the first non-profit institution with a stated charitable mission aligned to stakeholder values, and directing consummation of an acquisition of the first for-profit entity by the first non-profit institution;
(e) facilitating and overseeing consummation of the transaction between the user and the first for-profit entity under ownership or control of the first non-profit institution ;
(f) determining that distributions of profit by the first non-profit institution resulting from the transaction align with predefined values or mission statements of the user and of previous owners of the first for-profit entity; and
(g) upon completion of the transaction, automatically auditing the first non-profit institution's subsequent distributions of profits to verify continued alignment with non- financial goals of the stakeholders.
Step 2A Prong 1 analysis: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
Claims 1-7 recite abstract idea.
The highlighted limitations comprising, “ receiving a message describing an impending transaction in which a user intends to acquire a product or service from a for-profit entity; responsive to the message, determining availability of the product or service from a plurality of candidate vendor entities, the candidate vendor entities including at least one for-profit entity that is owned by a non-profit institution; selecting a first for-profit entity from the plurality of candidate vendor entities to participate in the transaction, wherein the first for-profit entity is owned by a first non- profit institution or is designated for acquisition by a first non-profit institution, facilitating and overseeing consummation of the transaction between the user and the first for-profit entity under ownership or control of the first non-profit institution”, under their broadest reasonable interpretation relate to a commercial activity of conducting a transaction of selling service(s) by a vendor in response to received a request for a service and the limitations “ if the first for-profit entity is not already owned by a non-profit institution, creating the first non-profit institution with a stated charitable mission aligned to stakeholder values, and directing consummation of an acquisition of the first for-profit entity by the first non-profit institution” relate to a commercial related activity of establishing a non-profit organization which all fall within the “Certain Methods of Organizing Human Activity” groupings of abstract ideas because they cover commercial concepts. See MPEP 2106.04(a)(2), subsection II. Thus, the claim 1 with its dependent claims 2-7 recite “Certain Methods of Organizing Human Activity”.
The highlighted limitations comprising, “(b) determining availability of the product or service from a plurality of candidate vendor entities, the candidate vendor entities including at least one for-profit entity that is owned by a non-profit institution; (c) selecting a first for-profit entity from the plurality of candidate vendor entities to participate in the transaction, wherein the first for-profit entity is owned by a first non- profit institution or is designated for acquisition by a first non-profit institution, the selecting being based at least in part on: (i) whether the candidate entity is owned by, or is to be acquired by, a non-profit institution: and (ii) legal, structural, tax, and financial characteristics of the candidate entity suited to achieving maximum economic benefit for the transaction, including the entity's ability to extract economic benefit from ownership and to compensate for legal, structural, tax, or financial weaknesses of the user: and (iii) where applicable, an analysis of ownership characteristics indicative of a propensity of the entity's owners to divest to a non-profit institution and an analysis of non-financial stakeholder goals; (f) determining that distributions of profit by the first non-profit institution resulting from the transaction align with predefined values or mission statements of the user and of previous owners of the first for-profit entity; and (g) upon completion of the transaction, auditing the first non-profit institution's subsequent distributions of profits to verify continued alignment with non- financial goals of the stakeholders.”, under their broadest reasonable interpretation, fall within the mental process groupings of abstract ideas because they cover concepts performed in the human mind, including observation, evaluation, judgment, and opinion. See MPEP 2106.04(a)(2), subsection III. That is, other than reciting “by a processor” nothing in the claim elements precludes the step from practically being performed in the mind. For example, but for the “by the processor” language, the claim encompasses a person looking at vendor data collected and forming a simple judgements of selecting a vendor who would be available to respond to the service request, and to check if the selected vendor is non-profit entity or the vendor is to be acquired by a non-profit entity and base the selection if the non-profit entity fulfills/satisfies all legal , structural, tax, financial requirements, analyzing, where applicable, if ownership characteristics are indicative of a propensity of the entity's owners to divest to a non-profit institution and an analysis of non-financial stakeholder goals, determining that distributions of profit by the first non-profit institution resulting from the transaction align with predefined values or mission statements of the user and of previous owners of the first for-profit entity, and upon completion of the transaction, auditing the first non-profit institution's subsequent distributions of profits to verify continued alignment with non- financial goals of the stakeholders. The mere nominal recitation of by a processor does not take these claim limitations out of the mental process grouping. Thus, the claim 1 recites a mental process.
Since claim 1 with its dependent claims 2-7 recite limitations falling under two separate groupings of abstract ideas, the Supreme Court (discussing Bilski v. Kappos, 561 U.S. 593 (2010)) has treated such claims in the same manner as claims reciting a single judicial exception. Accordingly, limitations considered under Certain Methods of Organizing Human Activity” and “Mental Processes” are considered together as a single abstract idea for further analysis. (Step 2A, Prong One: YES). Claims 1-7 recite an abstract idea.
Step 2A Prong 2 analysis: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception or whether the claim is “directed to” the judicial exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d).
Claims 1-7: The judicial exception is not integrated into a practical application.
Claim 1 recites the additional limitations of using generic computer components comprising a generic computer processor executing the steps of (a), (b), (c), (d), (e), (f), and (g).
The limitations “ (a)receiving a message describing an impending transaction in which a user intends to acquire a product or service from a for-profit entity” , are mere data gathering and output recited at a high level of generality, and thus are insignificant extra-solution activity. See MPEP 2106.05(g) (“whether the limitation is significant”). In addition, all uses of the recited judicial exceptions require such data gathering and output, and, as such, these limitations do not impose any meaningful limits on the claim. These limitations amount to necessary data gathering and outputting. See MPEP 2106.05. Further, limitations in (a), (b), c), (f), and (g) are recited as being performed by a computer. The computer is recited at a high level of generality. In limitation (a), the computer is used as a tool to perform the generic computer function of receiving data. See MPEP 2106.05(f). In limitations (b, (c), (f), and (g) the computer is used to perform an abstract idea, as discussed above in Step 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f).
The limitations “ (d) if the first for-profit entity is not already owned by a non-profit institution, creating the first non-profit institution with a stated charitable mission aligned to stakeholder values, and directing consummation of an acquisition of the first for-profit entity by the first non-profit institution; and (e)facilitating and overseeing consummation of the transaction between the user and the first for-profit entity under ownership or control of the first non-profit institution ;”, relate to creating a non-profit organization and facilitating a sales transaction, are long-standing commercial processes and the limitations are not directed to an improvement in computer functioning and as such merely using a processor to implement these long-standing commercial processes do not integrate the abstract idea into a practical application.
Even when viewed individually and in combination, these additional elements in claim 1 do not integrate the recited judicial exception into a practical application (Step 2A, Prong Two: NO), and the claim 1 is directed to the judicial exception. (Step 2A: YES).
Dependent claims 2 -3 and 5 relate to mental processes as mere extension of the limitations in claim 1, claim 4 is directed to non-functional descriptive subject matter describing the stated values, claims 6 and 7 are directed to providing instructions to oversee the fulfilment of the transaction and aligning buyers and vendors to benefit the non-commercial causes, which do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims 2-7 are directed to the abstract idea.
Thus, (Step 2A: YES). Claims 1-7 are directed to abstract idea.
Step 2B analysis: This part of the eligibility analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05.
The claims 1-7 do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Since claims are as per Step 2A are directed to an abstract idea, they have to be analyzed per Step 2B, if they recite an inventive step, i.e., the claim recite additional elements or a combination of elements that amount to “Significantly More” than the judicial exception in the claim.
As discussed above with respect to Step 2A Prong Two, the additional elements in the claims 1-7 amount to no more than mere instructions to apply the exception using a generic computer components, and generally linking the judicial exception to a particular technological environment or field of use. The same analysis applies here in 2B, i.e., mere instructions to apply the exception using a generic computer components, and generally linking the judicial exception to a particular technological environment or field of use using a generic computer components cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
As explained with respect to Step 2A, Prong Two, there are a, b, c, d, e ,f, and g additional elements. The additional element of “using processor” in limitations b, c, f, and g are at best mere instructions to “apply” the abstract ideas, which cannot provide an inventive concept. See MPEP 2106.05(f). Similarly, the additional elements of using processor in limitations d, and e , as analyzed in Step 2A, relate to creating a non-profit organization and facilitating a sales transaction, are long-standing commercial processes and the limitations are not directed to an improvement in computer functioning and as such merely using a processor to implement these long-standing commercial processes do not integrate the abstract idea into a practical application.
Additional element in step (a) found to be insignificant extra-solution activity in Step 2A, Prong Two, because it was determined to be insignificant limitations as necessary data gathering and outputting. However, a conclusion that an additional element is insignificant extra-solution activity in Step 2A, Prong Two should be re-evaluated in Step 2B. See MPEP 2106.05, subsection I.A. At Step 2B, the evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well understood, routine, and conventional in the field. See MPEP 2106.05(g). As discussed in Step 2A, Prong Two above, the recitations of “(a) receiving a message describing an impending transaction …;” are recited at a high level of generality. This element amounts to receiving data over a network and is well-understood, routine, conventional activity. See MPEP 2106.05(d), subsection II. Accordingly, a conclusion that the receiving step is well‐understood, routine, conventional activity is supported under Berkheimer. The claim is ineligible.
Even when considered in combination, the additional elements in claims 1-7 represent mere instructions to implement an abstract idea or other exception on a computer and insignificant extra-solution activity, which do not provide an inventive concept. (Step 2B: NO).
Thus, claims 1-7 are patent ineligible.
3. Prior art discussion.
Reference claim 1, the prior art of record, alone or combined neither teaches nor renders obvious at least the limitations, as a whole, comprising, “ responsive to the message, determining availability of the product or service from a plurality of candidate vendor entities, the candidate vendor entities including at least one for-profit entity that is owned by a non-profit institution, selecting a first for-profit entity from the plurality of candidate vendor entities to participate in the transaction, wherein the first for-profit entity is owned by a first non- profit institution or is designated for acquisition by a first non-profit institution, the selecting being based at least in part on: (i) whether the candidate entity is owned by, or is to be acquired by, a non-profit institution: and (ii) legal, structural, tax, and financial characteristics of the candidate entity suited to achieving maximum economic benefit for the transaction, including the entity's ability to extract economic benefit from ownership and to compensate for legal, structural, tax, or financial weaknesses of the user: and (iii) where applicable, an analysis of ownership characteristics indicative of a propensity of the entity's owners to divest to a non-profit institution and an analysis of non-financial stakeholder goals; if the first for-profit entity is not already owned by a non-profit institution, creating the first non-profit institution with a stated charitable mission aligned to stakeholder values, and directing consummation of an acquisition of the first for-profit entity by the first non-profit institution, determining that distributions of profit by the first non-profit institution resulting from the transaction align with predefined values or mission statements of the user and of previous owners of the first for-profit entity, and upon completion of the transaction, automatically auditing the first non-profit institution's subsequent distributions of profits to verify continued alignment with non- financial goals of the stakeholders. Claims 2-7 depend from claim 1.
4. Note: If the claim 1 is amended to overcome 35 USC 101 rejection, the claims 1-7 can be placed in condition for allowance. However, any further amendments will be subject to reconsideration and search.
5. The prior art cited pertinent to the claimed invention but not considered.
(i) Dayalan [US 8489507; see Abstract] describes a method for performing payments in remote transactions between buyer and vendor wherein a system processed payments in remote transactions including an IVR center and a server by receiving a request for token from a buyer to purchase products from a vendor, and to receive information about the product, provide the token to the buyer, access a database including information from vendor's and buyer's accounts, and transfer funds from buyer's account to vendor's account upon buyer confirmation.
(ii) Yang et al. [US 2023/0274323 A1; see para 0016] describes that an organization can include a for-profit organization; a non-profit organization.
(iii) DePena [US 20070094112A1; see at least para 0014] describes a method which integrates the charitable donation process with a real estate transaction by a charitable fund-raising program which facilitates real estate-related transactions that directly contribute to non-profit charitable organizations.
(iv) Nayshtut et al. [US Patent 10,148,624 B2; see claim 1] describes a system for transactions between a vendor and a consumer comprising predefined vendor’s availability parameters for the servicing for which the vendor is available.
Foreign reference:
(v) CN 114139994A [See under heading, “ Pre-analysis”] describes a power system having three roles of a supplier, a user, and a control-center, wherein the supplier generates electric quantity to supply the user and make money from the use, the users purchase electricity from suppliers to complete their own production and life needs, and the control center is a non-profit organization, by designing reasonable pricing scheme and related reward and punishment mechanism to meet the supply and demand balance, to maintain the normal operation of the power system, relieving power shortage, reducing the power consumption cost.
NPL reference:
(vi) E. Isaeva and A. Sokolov, "Electronic Portal of Non-Profit Organizations as an Element of the Communication Strategy of Non-Profit Organizations with Target Groups," 2020 IEEE Communication Strategies in Digital Society Seminar (ComSDS), St. Petersburg, Russia, 2020, pp. 50-54, retrieved from IP. Com on 10/31/2025 [See page 1} describes the activities of non-profit organizations based on the principles of voluntariness, personal involvement and the desire to solve socially significant problems and the use of the Internet for additional opportunities to ensure the effectiveness of communication strategies of non-profit organizations with target groups.
Conclusion
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/YOGESH C GARG/Primary Examiner, Art Unit 3688