Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claims 1-5 are pending and rejected. This action is a non final office action. Applicant elected claims 1-5 without traverse when presented with a restriction requirement on 8/18/25.
Claim Rejections - 35 USC § 112
Claims 1-5 are rejected on the ground of non statutory double patenting of the claims in United States Patent No 17/121079, patent 1922498 claims 1-4 and 9 (respectively). Although the conflicting claims are not identical, they are not patentably distinct from each other because basically they contain similar material. In the case of the instant application applicant has removed the term “remote” from server and added few elements such as
“wherein the selected monetary contribution amount may comprise zero or no contribution
or transmitting the supplemental monetary contribution to each employee, either in one lump sum or in two or more installments, said installments optionally correlated with the employee's payroll cycles;
or the equivalent amount of cash including applicable fees in connection with fulfillment of the employee's obligation to repay the supplemental monetary contribution
However, the added elements by way of the preface “or” or “wherein” tend to have minimal patentable weight. A terminal disclaimer would keep the instant application together should the child issue.
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 1-5 are rejected under 35 U.S.C. 101 because
They are directed to an abstract idea without significantly more.
Claim 1 is directed to a method claim which is statutory. (step 1 yes) Claim 1 is the representative independent claim (only one).
The abstract elements;
selecting, by each of a plurality of employees of an employer, a monetary contribution amount for contribution to the employee stock purchase plan, the selected monetary contribution amount being less than a maximum allowable contribution under limits of the employee stock purchase plan, wherein the selected monetary contribution amount may comprise zero or no contribution; aggregating, via a transaction module executable by a … residing on a … , the plurality of employees into one of a plurality of virtual containers, each of the plurality of employees having a unique identifier assigned thereto based on the selected monetary contribution amount or other identifier ;providing, via a monetary contribution module executable by the …, by a third party on behalf of each of the plurality of employees, a supplemental monetary contribution having a principal equal to one of a difference between the selected monetary contribution amount by each employee and the maximum allowable contribution under the employee stock purchase plan or another specific limit during an offering period, or a lesser principal amount as may be elected or agreed to by the employee up to the maximum allowable contribution under the limits of the employee stock purchase plan; transmitting the supplemental monetary contribution to the employer or each employee directly on behalf of a financial or ledger account funded or credited with the selected monetary contribution or the equivalent value of shares which when sold would fund an exercise price amount of each employee during the offering period, each financial or ledger account used to purchase shares of employer stock via the employee stock purchase plan at the end of the offering period, or transmitting the supplemental monetary contribution to each employee, either in one lump sum or in two or more installments, said installments optionally correlated with the employee's payroll cycles; disbursing to a transfer agent, plan administrator or each employee directly, via a share disbursement module executable by the …, instructions, orders or other similar actions or communications to issue, deliver or sell a number of shares of employer stock required to reimburse the supplemental monetary contribution and any applicable fees by the third party, fund the exercise price of an option or, in the event of a sale of an option that on the purchase date is in-the- money, to allow the third party to deliver shares of employer stock to a counterparty upon the counterparty's exercise of the option or executing such transactions directly on behalf of the employee; disbursing, via the share disbursement module, to the third party from the employer or employee, the required number of shares of employer stock or other stock, or an equivalent amount of cash or other consideration; disbursing, via the share disbursement module, to each of the plurality of employees from the employer, a number of shares of employer stock or cash equal to a difference between the number of shares of employer stock acquired using an aggregate of the selected monetary contribution and the supplemental monetary contribution, and the number of shares of employer stock disbursed to the third party in repayment of the supplemental monetary contribution remaining after using a portion of the shares to fund the exercise price, if applicable; delivering, via the transaction module, the shares of employer stock acquired by the employee, for sale on the open market or otherwise, or the equivalent amount of cash including applicable fees in connection with fulfillment of the employee's obligation to repay the supplemental monetary contribution; and returning, by the third party to the financial or ledger account of each of the plurality of employees or an aggregate account with similar purpose, proceeds from the sale of the shares of employer stock on the open market, or to the counterparty or otherwise, or returning shares, wherein the proceeds and value of shares are equivalent to the value of shares from the employee stock purchase plan that the employee would have received if the employee had initially contributed an amount equal to a sum of the selected monetary contribution and the supplemental monetary contribution, minus the repayment amount inclusive of fees related to the supplemental monetary contribution or use of shares to fund the exercise price.
The non -abstract elements include “server processor” However, implementing a complex transaction to obtain or help the employee obtain a stock discount in summary is a fundamental economic practice that is implemented by a generic “server processor”
Claims 2, 3 and 4 include “modules”
The exception is not integrated into a practical application. The additional elements of module and server processor are generic such that they amount to no more than mere instructions using the generic computing component. They do not impose meaningful limits on the practicing of the abstract idea and at a high level of generality. (step 2a prong 2 no)
The claims do not include additional element that are significantly more than the judicial exception because when considered separately or in combination they do not add significantly more known as inventive concept using computer hardware. Mere instructions to apply the exception suing a generic component cannot provided a generic component.
The dependent claims do not further define the abstract idea. There are no specific additional elements that would result in significantly more. Thus claims 2-5 are not eligible.
Potentially allowable subject matter:
In view of the parent cases being allowed, the subject matter is a slightly broader version to which the applicant will need to address concerns under 35 USC 101.
The most relevant art of record is US Patent Publication to Hecht 2021/0295432
In this case, the applicant should consider rectifying some of the various “or” and optional language and re-incorporating technology.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US patent Publication to Hecht 2021/0295432
As per claim 1, Hecht discloses;
selecting, by each of a plurality of employees of an employer, a monetary contribution amount for contribution to the employee stock purchase plan, the selected monetary contribution amount being less than a maximum allowable contribution under limits of the employee stock purchase plan,
Hecht(0011, to secure max discount is the idea, 0016)
wherein the selected monetary contribution amount may comprise zero or no contribution;
Hecht(0020, the contribution can be any amount, the idea is to help the employee to take advantage of the whole amount by taking a loan, 0025, 0031 example)
aggregating, via a transaction module executable by a processor residing on a server, the plurality of employees into one of a plurality of virtual containers, each of the plurality of employees having a unique identifier assigned thereto based on the selected monetary contribution amount
or other identifier;
(here “virtual containers are files,
providing, via a monetary contribution module executable by the server processor, by a third party on behalf of each of the plurality of employees, a supplemental monetary contribution having a principal equal to one of a difference between the selected monetary contribution amount by each employee and the maximum allowable contribution under the employee stock purchase plan
or another specific limit
Hecht(0031)
during an offering period, or a lesser principal amount as may be elected or agreed to by the employee up to the maximum allowable contribution under the limits of the employee stock purchase plan;
Hecht(0016, “or” is a choice, allow the employe to get maximum matching)
transmitting the supplemental monetary contribution to the employer or each employee directly on behalf of a financial or ledger account funded or credited with the selected monetary contribution or the equivalent value of shares which when sold would fund an exercise price amount of each employee during the offering period, each financial or ledger account used to purchase shares of employer stock via the employee stock purchase plan at the end of the offering period,
or transmitting the supplemental monetary contribution to each employee, either in one lump sum or in two or more installments, said installments optionally correlated with the employee's payroll cycles;
Hecht(0021, supplemental funds…. “or” is a choice again, only one of is required)
disbursing to a transfer agent, plan administrator or each employee directly, via a share disbursement module executable by the server processor, instructions, orders or other similar actions or communications to issue, deliver or sell a number of shares of employer stock required to reimburse the supplemental monetary contribution and any applicable fees by the third party, fund the exercise price of an option or, in the event of a sale of an option that on the purchase date is in-the- money, to allow the third party to deliver shares of employer stock to a counterparty upon the counterparty's exercise of the option or executing such transactions directly on behalf of the employee; disbursing, via the share disbursement module,
Hecht( 0026-7, through 30, examples where the employee can take advantage of the employee stock program, here again it’s a choice of many “or’s)
to the third party from the employer or employee, the required number of shares of employer stock or other stock, or an equivalent amount of cash or other consideration; disbursing, via the share disbursement module, to each of the plurality of employees from the employer, a number of shares of employer stock or cash equal to a difference between the number of shares of employer stock acquired using an aggregate of the selected monetary contribution and the supplemental monetary contribution,
Hecht(0021, supplemental loan contribution is provided to the employee)
and the number of shares of employer stock disbursed to the third party in repayment of the supplemental monetary contribution remaining after using a portion of the shares to fund the exercise price, if applicable; delivering, via the transaction module, the shares of employer stock acquired by the employee, for sale on the open market or otherwise, or the equivalent amount of cash including applicable fees in connection with fulfillment of the employee's obligation to repay the supplemental monetary contribution; and returning, by the third party to the financial or ledger account of each of the plurality of employees or an aggregate account with similar purpose, proceeds from the sale of the shares of employer stock on the open market, or to the counterparty or otherwise, or
Hecht(0021. Repay the loan….. note the “or”, with choices of implementation)
returning shares, wherein the proceeds and value of shares are equivalent to the value of shares from the employee stock purchase plan that the employee would have received if the employee had initially contributed an amount equal to a sum of the selected monetary contribution and the supplemental monetary contribution, minus the repayment amount inclusive of fees related to the supplemental monetary contribution or use of shares to fund the exercise price.
Hecht(0023)
Here applicant and Hecht are attempting to provide similar results but with different processes. However, as claimed, the optional nature of the instant claims allow a broader interpretation. Hecht does not disclose virtual containers so to speak which may be files.
It would therefore have been obvious one of ordinary skill in the art before the effective filing date of the invention to combine the disclosure of Hecht that relates to taking advantage of employee stock purchase plan discounts with well known summary files for each employee for the motivation of “tracking “employee ownership of employee stock” and resulting discounts. (0002)
As per claim 2 Hecht discloses; The method of claim 1 further comprising the steps of selling, via the transaction module, by the third party either via an open market sale on the financial exchange market or otherwise, at least a portion of the acquired shares of employer stock, the sale of at least a portion of the shares of employer stock defining a sale transaction and allowing for a return of sale proceeds to the financial or ledger account of the employee; deducting the repayment amount of the supplemental monetary contribution plus applicable fees from the sale proceeds to reimburse the third party; and returning, by the third party to the financial or ledger account of each of the plurality of employees, any remaining sale proceeds or remaining shares from the sale transaction.
Hecht (0026-27)
As per claim 3 Hecht discloses; The method of claim 1 further comprising the steps of selling, via the transaction module, by the third party pursuant to settlement of a derivatives contract or other financial market transaction, at least a portion of the acquired shares of employer stock,
the sale of at least a portion of the shares of employer stock sufficient to fulfill the obligations to repay the supplemental monetary contribution according to the terms pursuant to which the supplemental monetary contribution was extended comprising
a sale transaction and allowing for a return of sale proceeds to the financial or ledger account of the employee,
said repayment obligation optionally including fees or the sale of shares at a selected or agreed-to disposition price; deducting the repayment amount of the supplemental monetary contribution from the sale proceeds to reimburse the third party; and returning, by the third party to the financial or ledger account of each of the plurality of employees, any remaining sale proceeds or remaining shares from the sale transaction. Hecht(0031, explains the process for loaning)
As per claim 4 Hecht discloses; The method of claim 1 wherein the monetary contribution module further comprises an employee repository containing at least the selected monetary contribution amount. Hecht(funds go to escrow for the investment fig. 2)
As pre claim 5, Hecht discloses; The method of claim 1 wherein the step of providing a supplemental monetary contribution, by the third party on behalf of each of the plurality of employees, comprises:
providing a legal notice to the employee that in lieu of a supplemental monetary contribution a portion of shares granted under the option will be used by the third party to fund the exercise price of the option. (basically a 3rd party loan, 0040-41) Hecht (0016 3rd party loan)
Conclusion
Accounting Confirmation of Executive Stock Option, IEEE 2010
Financing strategies for start-up companies, IEEE, 1996
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCE I EBERSMAN whose telephone number is (571)270-3442. The examiner can normally be reached 8:00 am - 5:00 pm Monday-Friday.
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/BRUCE I EBERSMAN/Primary Examiner, Art Unit 3693