DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final office action. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 23 July 2026 has been entered.
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This action is in reply to the remarks and/or arguments for Application 18/485,433 filed on 23 July 2026.
Claims 2, 5, 16, and 18 have been canceled.
Claims 1, 15, and 23 have been amended.
Claims 1, 3, 4, 6-15, 17, and 19-23 are pending and have been examined.
Response to Arguments
A. Claim Rejections – 35 U.S.C. § 101:
Claims 1, 3, 4, 6-15, 17, and 19-23 stand rejected under 35 U.S.C. 101 on the basis that the claimed subject matter is directed to an abstract idea without significantly more.
1. Applicant argues that the claimed method is not related or directed to any existing commercial practice.
The argument, however, is not persuasive as Applicant's claims are directed toward matching sponsors (e.g., investors) with opportunities (e.g., entrepreneurs, research opportunities, legal prosecutors), which is a commercial or legal interaction because it relates to providing business opportunities both to those ventures in the need of cash with those investors looking to invest in something and make a return on that investment. See MPEP § 2106.04(a)(2)(II)(B). Because the instant invention is using a bid-like matching process to facilitate such commercial interactions, the invention is reciting a certain method of organizing human activities, specifically commercial and legal interactions.
2. Applicant further argues that the claims recite technical features that represent improvements to computer technology.
The argument, however, is not persuasive. The claims do not improve technology inasmuch as the underlying technology remains unaffected. Applicant is merely using existing technology for its intended purpose to implement the business solution. Any improvements lie in the abstract idea itself and not in the underlying technology.
The recited physical components behave exactly as expected according to their ordinary use. The computer devices recited – e.g., “computer”, “database”, “interface”, are not modified, changed, or reconfigured in such a way or manner as to change or affect how such devices are designed to perform or function and are merely used as an intermediary to carry out the inventive concept which has been determined to be abstract. Merely using computer-related components to perform the identified basic functions does not constitute meaningful limitations that would amount to significantly more than the abstract idea.
Nothing in the steps involve an improvement to the conventional functioning of a computer or to any other technology, applying or using a judicial exception with, or, use of a particular machine, effecting a transformation or reduction of a particular article to a different state or thing aside from merely using a computer as a tool to perform an abstract idea while also generally applying the use of the judicial exception to a particular technological environment or field of use. As such, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Hence, the claims are not patent eligible.
3. Applicant further argues that the claims integrate the recited steps into a practical application by improving computer functionality through specific technical implementations.
The argument, however, is not persuasive. The revised guidance provides exemplary considerations that are indicative that an additional element or combination of elements may have integrated the exception into a practical application: 1) an additional element reflecting an improvement in the functioning of a computer or an improvement to another technology or technical field, 2) an additional element that implements the judicial exception with a particular machine or manufacture that is integral to the claim, 3) an additional element that effects a transformation or reduction of a particular article to a different state or thing, or 4) an additional element that applies or uses 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. See MPEP § 2106.04(d). Examples where a judicial exception has not been integrated into a practical application include: 1) use of "apply it" or the equivalent, i.e., merely using a computer to implement or perform an abstract idea, 2) an additional element that adds insignificant extra-solution activity to the judicial exception, and 3) an additional element that does no more than generally link the use of the judicial exception to a particular technological environment or field of use. See id.
Applying these considerations to the claims in the instant application, the claims do not integrate the judicial exception into a practical application. The claims fail to recite an improvement of a computer, any improvement to a technology or technical field, any particular machine, any transformation or reduction of a particular article to a different state or thing, or any additional element that uses the judicial exception in a meaningful way. Instead, the claims are merely reciting instructions to implement the abstract idea on a computer (i.e., "computer implemented method;" "to a computer;" "at the computer;" "using the computer"), which is insufficient to provide a practical application of the claims and provide subject matter eligibility. See id. Therefore, there is no integration of the abstract idea into a practical application.
4. Applicant further argues that even if the claims were considered directed to an abstract idea under Step 2A Prong One, the claims include significantly more than the abstract idea.
The argument, however, is not persuasive because when analyzed under step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of utilizing rules and/or instructions for performing the existing commercial practice and/or concept of joint financing in an endeavor or venture in an automatic manner using computer-related technology that merely perform as designed to function. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Hence, the claims are not patent eligible.
The rejection is therefore maintained.
D. Claim Rejections – 35 U.S.C. § 103:
Claims 1, 3, 4, 6-15, 17, 19-23 stand rejected under 35 U.S.C. § 103 as allegedly being unpatentable over Reddy (US 2003/0101115) in view of Lee (US 2013/0007099).
Applicant’s arguments are sufficient to overcome the rejection under 35 U.S.C. 103. Accordingly, the rejection is withdrawn.
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, 3, 4, 6-15, 17, and 19-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In the instant case, representative claim 1 is directed towards matching opportunity data defining an offer for participation in an opportunity (e.g., planned legal action) and at least one sponsor data item defining a participation offer from a sponsoring party (e.g., investor) to participate. Claim 1 is directed to the abstract idea of utilizing rules and/or instructions for performing the existing commercial practice and/or concept of joint financing in an endeavor and/or venture in an automatic manner, which is grouped under the certain methods of organizing human activity – fundamental economic principles, practices or concepts; sales activity; following set of instructions; commercial interactions; managing interactions between people (including social activities, teachings, following rules or instructions) grouping, in step 2A prong one.
Claim 1 recites:
“providing opportunity data, stored in an opportunity database, about the planned legal action from an affected party to the computer, wherein the opportunity data is defined by prosecution resources needed to prosecute the planned legal action, a best possible result that is achieved by a full success of the prosecution and an ask participation quote, wherein the best possible result is an amount of resources, such as material, goods or money, the obtaining of an allowance claim or a prohibition claim, a clarification of a fundamental legal issue,
obtaining, at the computer, a plurality of sponsor data items each including a participation offer in a real-time bookbuilding process stored in a database wherein the participation offers each include a bid participation quote and an amount of sponsoring resources;
wherein the computer maintains anonymity of sponsoring parties while enabling real-time adaptation of bid participation quotes based on existing sponsor data i tems, wherein the obtaining includes, before obtaining at least one of the sponsor data items from a sponsoring party, selectively displaying to that sponsoring party only the bid participation quotes and the sponsoring resources associated with previously obtained sponsor data items while not displaying identities of the sponsoring parties or other data associated with the previously obtained sponsor data items;
using the computer, during the real-time bookbuilding process and before the bookbuilding process is terminated, dynamically adjusting at least one of (i) the ask participation quote, by increasing the ask participation quote in view of the obtained bid participation quotes and associated sponsoring resources of the sponsor data items, and (ii) a bid participation quote of a sponsor data item, by decreasing the bid participation quote in view of the obtained bid participation quotes and associated sponsoring resources of the other sponsor data items;
using the computer, automatically selecting one or more participation offers from the obtained participation offers after the bookbuilding process has been terminated by executing a selection algorithm that evaluates the ask participation quote, the prosecution resources, as well as the bid participation quotes and the sponsoring resources of each of the plurality of sponsor data items, wherein the participation offers are selected from the obtained bid participation offers as those which include associated sponsoring resources which sum up to at least the prosecution resources, wherein the participation offers are further selected so that:
the bid participation quotes associated with the selected participation offers are equal or lower than the ask participation quote; and
the total of the sponsoring resources associated with all of the selected participation offers is equal or higher than the prosecution resources; and
using the computer to automatically match the sponsor data items associated with the selected one or more participation offers with the opportunity data through execution of a computer-implemented matching algorithm, with the aim to enable the prosecution of the defined legal action to be prosecuted”.
Based on the underlined elements above, abstract ideas and/or concepts are identified. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application because, when analyzed under step 2A prong two, the additional elements of the claim such as a “computer”, “database”, represent the use of computer-related devices as a tool (intermediary) to perform an abstract idea and/or does no more than generally apply the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) implement the acts of utilizing rules and/or instructions for performing the existing commercial practice and/or concept of joint financing in an endeavor or venture in an automatic manner.
When analyzed under step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of utilizing rules and/or instructions for performing the existing commercial practice and/or concept of joint financing in an endeavor or venture in an automatic manner using computer computer-related technology and/or devices that merely perform as designed to function. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Hence, claim 1 is not patent eligible.
Independent claim 15 recites substantially the same limitations as claim 1 above and is ineligible for the same reasons. The subject matter of claim 15 corresponds to the subject matter of claim 1 in terms of a computer system (e.g., machine). Therefore the reasoning provided for claim 1 applies to claim 15 accordingly.
Independent claim 23 recites substantially the same limitations as claim 1 above and is ineligible for the same reasons. The subject matter of claim 23 corresponds to the subject matter of claim 1 in terms of a computer program product (e.g., manufacture). Therefore the reasoning provided for claim 1 applies to claim 23 accordingly.
Dependent claims 1, 3, 4, 6-15, 17, and 19-23 add further details and contain limitations that narrow the scope of the invention. However, these details do not result in significantly more than the abstract idea itself. As explained in the December 16, 2014 Interim Eligibility Guidance from the USPTO (in reference to the BuySAFE, Inc. v. Google, Inc. decision), further narrowing the details of an abstract idea does not change the § 101 analysis since a more narrow abstract idea does not make it any less abstract.
The step(s) recited are a further refinement of methods of organizing human activity – – fundamental economic principles, practices or concepts; sales activity; following set of instructions; commercial or legal interactions (agreements in the form of contracts; business relations); managing interactions between people (including social activities, teachings, following rules or instructions), because it merely describes intermediate steps and/or rules/instructions of the process.
Viewed individually and in combination, these additional elements do not provide meaningful limitations to transform the abstract idea such that the claims amount to significantly more than the abstraction itself.
Accordingly, the present pending claims are not patent eligible and are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Conclusion
The prior art(s) made of record and not relied upon is/are considered pertinent to applicant's disclosure.
Biederman, SR. et al. (US 2005/0240578 A1) discloses a LITIGATION MANAGEMENT SYSTEM AND
METHOD OF PROVIDING THE SAME. A web-based litigation management system and method which enables users, e.g., lawyers and clients, to monitor and manage at least one lawsuit in a litigation portfolio, manage the performance and expenses of the at least one lawsuit and compile controls/metrics that may be utilized in evaluating and streamlining future litigation is disclosed. Monitoring of a lawsuit is achieved via the entry and update of actual results, actions and events which occur throughout the litigation process. The litigation management system also allows users to: compare budgeted results, actions and expenses with actual results, actions and expenses; monitor
and review legal documents; calculate litigation controls/ metrics; compare the results of pre-selected lawsuit portfolios and the performance of the individuals involved in those lawsuits; document litigation guidelines as required by the client and the lawyer's theory of the case, and provide easy data entry and browsing and searching of documents.
Plate (US 2005/0171874 A1) discloses a SYSTEM AND METHOD FOR APPORTIONING COMMITMENT UPDATES. Plate discloses a method and system for apportioning financial commitment updates of business partners. According to one embodiment, a contract accounting system receives through a user interface criteria for selecting a subset of business partners whose financial commitments are to be updated, calculates an updated financial commitment of each of the subset of business partners during a predetermined period of time, and transfers the updated financial commitment of each of the subset of business partners to a financial system that maintains current liability information associated with each business partner.
Claims 3-4, 6-14, 17, and 19-22 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Clifford Madamba whose telephone number is 571-270-1239. The examiner can normally be reached on Mon-Thu 7:30-5:00 EST Alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon, can be reached at 571-272-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLIFFORD B MADAMBA/Primary Examiner, Art Unit 3692
