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 .
Election/Restrictions
Claims 1-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 17, 2026.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) is acknowledged.
Status of Claims
This first action on the merits is in response to the election of claims 11-18 for the application filed on December 12, 2023. Claims 1-18 are pending; claims 1-10 have been withdrawn, and claims 11-18 and have been examined.
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 11-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. This judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The steps for determining eligibility under 35 U.S.C. 101 can be found in the MPEP § 2106.03-2106.05.
Under Step 1, the claims are directed to statutory categories. Specifically, the method, as claimed in claims 11-18, is directed to a process.
While the claims fall within statutory categories, under Step 2A, Prong 1, the claimed invention recites the abstract idea of listing item for sale. Specifically, claim 11 recites the abstract idea of:
(a) listing an item in the marketplace that a seller wishes to sell with information from the one or more intellectual properties for the item in intellectual property field(s);
(b) accepting from a buyer in the marketplace a query comprising of intellectual property keyword(s);
(c) searching and identifying one or more items listed in the marketplace matching some or all the query's conditions; and
(d) presenting the one or more identified items to the buyer.
Under Step 2A, Prong 1, it is necessary to evaluate whether the claim recites a judicial exception by referring to subject matter groupings articulated in the guidance. When considering MPEP §2106.04(a), the claims recite an abstract idea. For example, claim 11 recites the abstract idea of listing items for sale, as noted above. This concept is considered to be a certain method of organizing human activity. Certain methods of organizing human activity are defined in the MPEP as including “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).” MPEP §2106.04(a)(2) subsection II. In this case, the abstract idea recited in claim 11 is a certain method of organizing human activity because listing an item in the marketplace that a seller wishes to sell with information from the one or more intellectual properties for the item in intellectual property field(s) is a sales activity. Thus, claim 11 recites an abstract idea.
The recited limitations of claim 11 recite an abstract idea because they are considered to be mental processes. As described in the MPEP, mental processes are “concepts performed in the human mind (including an observation, evaluation, judgment, opinion)”. MPEP §2106.04(a)(2) subsection III. In this case, listing an item in the marketplace that a seller wishes to sell with information from the one or more intellectual properties for the item in intellectual property field(s); accepting from a buyer in the marketplace a query comprising of intellectual property keyword(s); searching and identifying one or more items listed in the marketplace matching some or all the query's conditions; and presenting the one or more identified items to the buyer types of judgement. Thus, claim 11 recites an abstract idea.
Under Step 2A, Prong 2, if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. See MPEP §2106.04(d). In this case, claim 11 includes additional elements such as a network-based marketplace computing device comprising a processor.
Although reciting additional elements, the additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a computer as a tool to perform the abstract idea. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. Similar to the limitations of Alice, claim 11 merely recites a commonplace business method (i.e., listing items for sale) being applied on a general purpose computer. See MPEP §§2106.04(d) and 2106.05(f). Thus, the claimed additional elements are merely generic elements and the implementation of the elements merely amounts to no more than an instruction to apply the abstract idea using a generic computer. Since the additional elements merely include instructions to implement the abstract idea on a generic computer or merely use a generic computer as a tool to perform an abstract idea, the abstract idea has not been integrated into a practical application. As such, claim 11 is directed to an abstract idea.
Under Step 2B, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). See MPEP §2106.05.
In this case, as noted above, the additional elements recited in independent claim 11 are recited and described in a generic manner merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Even when considered as an ordered combination, the additional elements of claim 11 do not add anything that is not already present when they considered individually. In Alice, the court considered the additional elements “as an ordered combination,” and determined that “the computer components ... ‘ad[d] nothing ... that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014). (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Also see MPEP §2106.05(f). Similarly, when viewed as a whole, claim 11 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B, there are no meaningful limitations in claim 11 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
As such, claim 11 is ineligible.
Dependent claims 12-18 do not aid in the eligibility of independent claim 11. For example, claims 12-18 merely provide further embellishments of the abstract limitations recited in independent claim 11.
Additionally, it is noted that claims 11-18 do not include further additional elements. Therefore, the claims do not integrate the abstract idea into a practical application because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea. The claims also do not amount to significantly more than the abstract idea because they merely amount to no more than an instruction to apply the abstract idea using a generic computer or merely use a generic computer as a tool to perform an abstract idea.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 11-14, 16, and 18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sieffert (US 8150757 B1, herein referred to as Sieffert).
Claim 11:
Sieffert discloses:
A method executable on a network-based marketplace computing device comprising a processor {Sieffert: fig 1, system 10; [Col. 2, ln. 13-14] system and method for dissemination of intellectual property transfer; [Col. 8, ln. 12-19] system 10 for facilitating transfer of intellectual property via a global computer network, such as the world wide web 12. System 10 can be used to practice methods for facilitating transfer of intellectual property via a global computer network. As shown in FIG. 1, system 10 may include a number of user computers 14, 16, 18, 20, a web server 22, a database server 24, a transfer item database 26, and an access profile database 28}, comprising:
(a) listing an item, by the processor, in the marketplace that a seller wishes to sell with information from the one or more intellectual properties for the item in intellectual property field(s) {Sieffert: fig 1, system 10 includes web server 22; fig 6 lists specific intellectual property fields for the corresponding product; [Col. 8, ln. 24-32] Web server 22 administers an auction or offer-acceptance process for transfer of intellectual property, acting as an infomediary between parties seeking to transfer intellectual property assets. The web-based infomediary provided by system 10 may be extremely useful in administering an offer-acceptance process in which the ip seller posts an item for transfer; [Col. 9, ln. 21-23] IP sellers situated at computers 14, 16, 18, 20 submit information to web server 22 via network 12, and view information pertaining to auction bid status; [Col. 9, ln. 28-31] Each transfer item record in database 26 includes information describing a particular intellectual property asset for which bids will be accepted. The information may include the identity of the ip seller, a detailed description of the asset};
(b) accepting, by the processor, from a buyer in the marketplace a query comprising of intellectual property keyword(s) {Sieffert: figs 3-4 demonstrate a buyer selecting keywords for the assets they are looking for; [Col. 11, ln. 66-67; Col. 12, ln. 1-15] when a user desires access to pending transfer items, web server 22 generates a web page that offers the user a choice of different categories of intellectual property. Agreement categories may be subsumed within the particular intellectual property categories to which they pertain. For example, a patent license agreement may be provided in the patent category. Alternatively, agreements may be designated as an individual category. The listing will vary according to the user's access profile, which may exclude certain categories. Some ip buyers may have no interest in mask work rights, for example, while others may have no desire to review trademark-related transfer items. The category titles are represented as hypertext links to other web pages. Upon selection of one of the hypertext links, the user is presented with another web page devoted to the pertinent category.};
(c) searching and identifying, by the processor, one or more items listed in the marketplace matching some or all the query's conditions {Sieffert: [Col. 21, ln. 60-67; Col. 22, ln. 1-2] search controller 208 instantiates a search instance 212 in which the parameters of a search defined by the user are applied to the content. The search parameters may be targeting particular industries, technologies, and business sectors. Upon identification of a party, notification module 216 may automatically, or at user instruction, send a message to the party advising it of the services available via system 10.}; and
(d) presenting the one or more identified items to the buyer {Sieffert: fig 5 lists the available assets for the buyer; [Col. 12, ln. 24-31] FIG. 5 is a diagram of a web page illustrating patent rights proposed for transfer in the data storage technology area. In the example of FIG. 5, the data storage technology area of the patent category yields a number of different patents listed by patent owner and patent title. Other information can be provided on the initial web page illustrated by FIG. 5. Such information may be provided, however, via hypertext links to other web pages.}.
Claim 12:
Sieffert discloses the method of claim 11. Sieffert further discloses:
wherein the presented items are sorted {Sieffert: fig 5 sorts the available assets alphabetically}.
Claim 13:
Sieffert discloses the method of claim 11. Sieffert further discloses:
wherein at least one item is presented with intellectual properties document(s) {Sieffert: figs 6-7; [Col. 12, ln. 34-38] linked web pages may yield a variety of information such as electronic copies or links to the patent, prosecution history, pertinent prior art, and other background documentation helpful in assessing the scope, validity, and resultant value of the patent.}.
Claim 14:
Sieffert discloses the method of claim 11. Sieffert further discloses:
wherein at least one item is presented with intellectual properties field(s) {Sieffert: fig 7 displays IP asset with inventor, abstract, prosecution history}.
Claim 16:
Sieffert discloses the method of claim 11. Sieffert further discloses:
wherein at least one item is personalized while presenting based on the buyer profile and/or historical purchases {Sieffert: [Col. 10, ln. 56-61] An access profile serves to limit access to particular information by particular network users. Database server 24 consults access profile database 28 when information is requested by a particular user. At the request of an ip seller, for example, an access profile for a transfer item may exclude certain ip buyers from access to transfer items submitted by the ip seller. Examiner interprets that the items presented to the buyer are based on whether the buyer profile satisfies the access profile requirements of the IP seller.}.
Claim 18:
Sieffert discloses the method of claim 11. Sieffert further discloses:
wherein intellectual property field(s) are explicit and/or implicit {Sieffert: fig 7 displays IP asset with inventor, abstract, prosecution history. Examiner interprets inventor, abstract, and prosecution history as explicit}.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Sieffert (US 8150757 B1, herein referred to as Sieffert), in view of Kim (US 20170053331 A1, herein referred to as Kim).
Claim 15:
Sieffert discloses the method of claim 11. Sieffert does not disclose:
wherein at least one item is highlighted while presenting to distinguish the at least one item from other items listed in the marketplace without intellectual properties.
Sieffert does disclose asterisks next to certain IP assets (Sieffert: figs 5-7).
However, Kim teaches:
wherein at least one item is highlighted while presenting to distinguish the at least one item from other items listed in the marketplace without certain properties {Kim: fig 7 displays stars to highlight matches to the desired criteria, and no stars if the result does not satisfy the desired criteria; [0112] purchase terminal. 200 may display a predetermined emoticon or icon in an area adjacent to a store corresponding to the search word, provide a highlight effect to the corresponding store, provide an effect to display an outer contour of the corresponding store with a predetermined color, or provide an effect to provide an augmented reality function to easily verify the store corresponding to the search word; [0203] purchase terminal 200 may display a predetermined icon 710 in each of the 7-th store and the 8-th store selling the sport goods as the search word}.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included distinguishing items with desired criteria as taught by Kim in the IP asset search method of Sieffert to easily verify the search result corresponding to the search word (Kim: [0112]).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Sieffert (US 8150757 B1, herein referred to as Sieffert), in view of Jadhav et. al. (US 10867336 B2, herein referred to as Jadhav).
Claim 17:
Sieffert discloses the method of claim 11. Sieffert does not disclose:
wherein the query comprises of operator(s) and/or modifier(s).
Sieffert does disclose that a user can narrow IP assets by categories (Sieffert: figs 3-4).
However, Jadhav teaches:
wherein the query comprises of operator(s) and/or modifier(s) {Jadhav: [Col. 24, ln. 18-21] the boolean query for each candidate cluster is compared against the input product to determine whether the product satisfies the query. Examiner interprets a Boolean query as a query requiring operators}.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included operators in the query as taught by Jadhav in the IP asset search method of Sieffert to normalize queries and return responsive candidate offers (Jadhav: [Col. 23, ln. 12-14]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Thomas (US 20110282797 A1) was used to understand other methods for implementing an IP marketplace, specifically using social media methods.
Pienkos (US 7272572 B1) was used to understand other methods for facilitating transfers of intellectual property.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A BARLOW whose telephone number is (571)272-5820. The examiner can normally be reached Monday-Tuesday 11am-7pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein, can be reached at 571-272-5820. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A BARLOW/ Examiner, Art Unit 3689
/VICTORIA E. FRUNZI/ Primary Examiner, Art Unit 3689 3/13/2026