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 .
Applicant’s Reply
Applicant's response of 10/29/25 has been entered. The examiner will address applicant's remarks at the end of this office action. Currently claims 1-12 remain pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
For claims 1, 11, 12, the claim recites a negotiation execution process of referring to 1st and 2nd negotiation strategies to select one or more draft agreement candidates that are agreeable the 1st and 2nd entities and the claim also recites that the same 1st/2nd negotiation strategies are referred so as to select a draft agreement candidate to be provided to the 2nd entity. This appears to be claiming the same step/function two times. If the selection of “one or more” draft agreements (that can be just one) is done by referring to 1st and 2nd negotiation strategies what does it mean to further select the same draft agreement based on referring to the first and second negotiation strategies? It is not clear how the two recited “negotiation execution processes” are different when they both appear to be reciting the selection of a draft agreement candidate. If one draft agreement candidate is selection, how can it be selected again a second time in the second negotiation execution process that is claimed? This is confusing and renders the claim indefinite.
For claims 2, 3, what has been recited in already recited in claim 1. Because of this fact, it is not clear how this claim is further limiting to the subject matter of claim 1. This renders the scope of the claim indefinite in this regard.
For claims 3, 4, 7, 8, the claim refers to “the negotiation execution process” or “in the negotiation execution process”. Claim 1 recites two separate negotiation execution processes so it is not clear what one is being referred to in the dependent claims. It is not clear if there are even two steps to making a selection of a draft agreement candidate with two separate negotiation execution processes, or if they are actually the same execution process. This renders the claim indefinite.
For claim 6, the applicant recites the obtaining of a second disclosed negotiation strategy that is a disclosed strategy of a second entity. This has already been claimed in claim 1 so it is not clear if this is the same element that is found in claim 1 or if this is the obtaining of yet another negotiation strategy. The amendment to claim 1 has already added this limitation that is recited in claim 6 so it is not clear if this is duplicative and simply has not been amended to be consistent with claim 1 or if this is introducing a third negotiation strategy in addition to the two recited in claim 1. This renders the claim indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2, 3, are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
For claims 2, 3, what is being claimed has already been recited in claim 1 by amendment in the most recent reply. For this reason the claims do not further limit the subject matter of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite an apparatus, a method, and a non-transitory computer storage medium soring a program; therefore, the claims pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of conducting negotiation by carrying out the claimed steps/functions that specify how the negotiation and a selection of an agreement (i.e. a contract, a legal agreement) us caused to occur.
For claim 1, the abstract idea is defined by the elements of:
a disclosed negotiation strategy provision process of providing a first disclosed negotiation strategy that is a disclosed negotiation strategy of a first negotiation entity and that includes a first utility function or a parameter set defining the first utility function;
a disclosed negotiation strategy obtaining process of obtaining a second disclosed negotiation strategy that is a disclosed negotiation strategy of a second negotiation entity and that includes a second utility function or a parameter set defining the second utility function in a case in which an agreement is not reached using the first disclosed negotiation strategy;
a negotiation execution process of referring to the first disclosed negotiation strategy and the second disclosed negotiation strategy, to select one or more draft agreement candidates each agreeable to both the first negotiation entity and the second negotiation entity;
a negotiation execution process of referring to the one or more selected draft agreement candidates, to select a draft agreement candidate to be provided to the second negotiation entity; and
a draft agreement candidate provision process of providing the draft agreement candidate selected as above to the second negotiation entity
For claim 11 the abstract idea is defined by the elements of:
providing a first disclosed negotiation strategy that is a disclosed negotiation strategy of a first negotiation entity and that includes a first utility function or a parameter set defining the first utility functions
obtaining a second disclosed negotiation strategy that is a disclosed negotiation strategy of a second negotiation entity and that includes a second utility function or a parameter set defining the second utility function in a case in which an agreement is not reached using the first disclosed negotiation strategy;
referring to the first disclosed negotiation strategy and the second disclosed negotiation strategy, to select one or more draft agreement candidates each agreeable to both the first negotiation entity and the second negotiation entity;
referring to the one or more selected draft agreement candidates, to select a draft agreement candidate to be provided to the second negotiation entity; and
providing the draft agreement candidate selected as above to the second negotiation entity
For claim 12, the abstract idea is defined by the elements of:
providing a first disclosed negotiation strategy that is a disclosed negotiation strategy of a first negotiation entity and that includes a first utility function or a parameter set defining the first utility function
obtaining a second disclosed negotiation strategy that is a disclosed negotiation strategy of a second negotiation entity and that includes a second utility function or a parameter set defining the second utility function in a case in which an agreement is not reached using the first disclosed negotiation strategy;
referring to the first disclosed negotiation strategy and the second disclosed negotiation strategy, to select one or more draft agreement candidates each agreeable to both the first negotiation entity and the second negotiation entity;
referring to the one or more selected draft agreement candidates, to select a draft agreement candidate to be provided to the second negotiation entity; and
providing the draft agreement candidate selected as above to the second negotiation entity
The above limitations are reciting the act of negotiation by reciting a negotiation process that is being used to carry out a negotiation. Negotiation is the act of people working with each other to come to an agreement about a particular issue. Humans have negotiated and used a negotiation strategy well before the invention of computers. Attorneys negotiate with criminal defendants in a trial to come to a plea agreement, and that involves a negotiation strategy on the part of the prosecuting attorney and the defendant. The same is true for buyers and sellers when negotiating a price for a given commodity, there are different strategies being used by the buyer and seller and differences in how they approach the act of negotiation. Then act of negotiation is a social activity that is also considered to be a legal interaction (contract negotiation) or other type of commercial transaction where parties are negotiating the price of an item for sale, or are negotiating contract terms for a service agreement. The claimed invention is reciting the abstract idea of negotiation, which is itself a human activity, and falls into the category of being a certain method of organizing human activities type of judicial exception.
For claims 1, 11, 12, the additional elements of the claim are the claimed processor, the computer, and the computer readable non-statutory storage medium. These elements are simply linking the execution of the abstract idea to computer implementation.
This judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a computing device with a processor and memory that is being merely used as a tool to execute the abstract idea. The claim is simply instructing one to practice the abstract idea by using a generically recited computing device with a processor and memory (or CRM) to perform steps that define the abstract idea. This does not amount to more than a mere instruction to implement the abstract idea on a computer, see MPEP 2106.05(f) . This is indicative of the fact that the claim has not integrated the abstract idea into a practical application and therefore the claim is found to be directed to the abstract idea identified by the examiner.
For step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception when considered individually and in combination with the claim as a whole because they do not amount to more than simply instructing one to practice the abstract idea by using a generically recited computing device with a processor and memory to perform steps that define the abstract idea. This does not render the claims as being eligible. See MPEP 2106.05(f). The rationale set forth for the 2nd prong of the eligibility test above is also applicable to step 2B in this regard so no further comments are necessary.
For claims 2-10, the applicant is reciting a further embellishment of the same abstract idea that was identified for claim 1. Further claiming the negotiation strategy of a second entity and referring to the first and second strategies for selecting a draft agreement, etc. are elements that further recitation to the act of negotiation and is considered to be part of the abstract idea. The abstract idea also includes the claimed draft agreement. All of the dependent claims 2-10 are further reciting more about the abstract idea in terms of the negotiation strategies, selecting a draft agreement, and the recitation to the undisclosed negotiation strategy as opposed to a disclosed negotiation strategy, etc.. The claimed process for the negotiation, the content of the strategies, and the selection of draft agreements, etc., are all aspects of the negotiation that serve to further define the abstract idea. All of the claimed elements (steps/functions) can be practiced by a human with no technology at all. No further additional elements have been claimed for consideration beyond that which has already been addressed for claim 1 as far as just linking the execution of the abstract idea to computer execution. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
Therefore, for the above reasons, claims 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Batachia et al. (7103580).
For claim 1, 2, 5, 11, 12, Batachia discloses a system and method for automating a contract negotiation process using computers. As is set forth in column 2, lines 55-61, the use of a computer to perform negotiation requires that the strategy for the negotiation be determined, so that the computer can negotiate. Batachia teaches a system that is performing negotiation using information that defines a negotiation strategy for a party to a negotiation.
The claimed providing of a negotiation strategy of a first entity and obtaining a second negotiation strategy of a second entity is satisfied by Batachia teaching that the goals and strategy for a negotiation are defined by a user(s) and are used to perform the negotiation. The negotiation includes more than one entity which would be the two entities that are negotiating with each other. Batachia teaches that more than one user can use the system to perform negotiation, see column 11, lines 18-26. Both parties (first and second entities) to a negotiation in the system of Batachia have a negotiation strategy as claimed that is being used by the system to perform negotiations on their behalf. For example see column 6, lines 6-12; 32-36; column 12, line 54 to column 13, line 1; and column 14, lines 64-end. Batachia teaches that users can specify the criteria that is to be used by automated computer agents to conduct a negotiation, which defines a negotiation strategy as claimed. The term “strategy” for a negotiation is a term that is used throughout the disclosure of Batachia when discussing the information, criteria, and data that defines the parameters to be used during the negotiation. Also see column 10, lines 2-4 and line 13 where the criteria used in the negotiation process is defining a negotiation strategy. Column 14, lines 29-31 refers to the use of an established strategy for negotiation. With respect to the claimed first negotiation strategy including a first utility function or a parameter and a second utility function or parameter for the second negotiation strategy, these limitations are satisfied by the information that the user(s) enters and that is used by the system to perform a negotiation as was addressed above. The information used by the system of Batachia to perform the negotiation on behalf of two parties to a negotiation define a 1st/2nd negotiation strategy that is based on a utility function or parameters (data/information per se) as claimed. Batachia also teaches that one can use weights to reflect the importance of various criteria that is subject to negotiation, see column 8, lines 42-50. This satisfies the limitations reciting that the negotiation strategy includes a utility function or a parameter.
With respect to the language that is calling the negotiation strategy as being a “disclosed” negotiation strategy, the term “disclosed” is directed to non-functional descriptive material that does not define anything to the strategy itself or to the claimed step function/step of carrying out the negotiation strategy. This is a descriptive label that does not define anything to the claimed invention.
With respect to the claim reciting that the obtaining of a second negotiation strategy is “in a case in which agreement is not reached using the first disclosed negotiation strategy” is satisfied by Batachia teaching that the system can generate a counteroffer to the initial offer from one of the parties. See column 2, lines 62-end and column 7, lines 39-50, and column 9, line 58- column 10, line 14 as examples where a counter offer is disclosed. In the case where the initial offer from a first entity is not acceptable to the conditions set forth by a second entity, the system can generate a counter offer from the second entity that is sent back to the first entity, and then the process shifts to the use of the first entity negotiation criteria to determine if an acceptable agreement has been determined.
The claimed negotiation execution process of referring to the first and second negotiation strategies to select a draft agreement candidate that would be agreeable to the first and second entities, and referring to the draft agreement to select a draft agreement to be provided the second entity is satisfied the system of Batachia using negotiation criteria (utility function or parameters) that have been defined by two parties so that an end agreement can be arrived at (which is the resulting contract that has been negotiated, see column 3,lines 35-48 for disclosure to negotiating a contract). The end agreement that is reached satisfies the claimed selection of a draft agreement that is then provided to one of the entities (and the other) for their execution. The agreement that is provided to the entities that is the end contract that has been agreed upon reads on the claimed agreement that is called a draft agreement candidate (which can be just one per the claim scope). Calling the agreement a draft or a candidate does not define anything to the agreement itself and is something that is only recognized in the mind of a human being as far as if the agreement is a draft or not. That does not define anything to the claim scope.
For claims 3, 4, the claimed referring to the fist negotiation strategy and the second negotiation strategy is satisfied by the system of Batachia using the criteria from both parties to perform the negotiation, as was addressed for claim 1. The claimed draft agreement candidate being sent to the second entity is satisfied by an agreement being sent to one of the entities, as was addressed for claim 1. Also see column 2, lines 62-end where it is disclosed that the system determines what offers to send out, the range of acceptable agreements, and what counteroffers should be generated. This anticipates what is claimed.
For claim 4, in addition to that above, the selection of the draft agreement candidate maximizes a sum total of utilities is considered to be satisfied by the system of Batachia using the negotiation strategy of each entity to arrive at an agreement that is acceptable to each party, and that maximizes utilities (value, worth). That is the purpose of the negotiation system as far as it is used to allow each party to maximize their benefits as a result of the negotiation system of Batachia. This anticipates what is claimed.
For claims 6, 7, 8, the claimed negotiation strategy for a second entity is satisfied by Batachia and the 2nd party to a negotiation, as was addressed for claim 1. Batachia teaches that more than one user can use the system to perform negotiation, see column 11, lines 18-26. Both parties to a negotiation in the system of Batachia have a negotiation strategy as claimed that is being used by the system to perform negotiations on their behalf. The claimed reference to the undisclosed negotiation strategy is considered to be satisfied by the use of private business rules for the negotiation strategy, in addition to the other information disclosed by Batachia that defines then negotiation strategy, see column 12, lines 49- column 13, line 13. The use of “private business rules” satisfies the claimed undisclosed negotiation strategy because the rules are used to define the negotiation strategy and they are considered to be private. However, claiming that the rules are undisclosed is also a limitation directed to non-functional descriptive material that does not define anything to the strategy itself or to the claimed step function/step of carrying out the negotiation strategy. This is a descriptive label that does not define anything to the claimed invention. The claimed draft agreement candidate being sent to the second entity is satisfied by an initial offer being sent to a party, such as an offer being sent to a buyer from a seller or vice versa. This is based on the information that includes the undisclosed business rules as claimed.
For claim 8, in addition to that above, the selection of the draft agreement candidate maximizes a sum total of utilities is considered to be satisfied by the system of Batachia using the negotiation strategy of each entity to arrive at an agreement that is acceptable to each party, and that maximizes utilities (value, worth). That is the purpose of the negotiation system as far as it is used to allow each party to maximize their benefits as a result of the negotiation system of Batachia.
For claim 9, Batachia teaches that the system allows a user to enter pre-established criteria to be used for the negotiation, and that defines the negotiation strategy. This includes defining the negotiation data and the private business rules of to perform the negotiation, as has already been addressed for claims 1, 6. See column 6, lines 6-12; 32-36; column 12, line 54 to column 13, line 1; and column 14, lines 64-end. Batachia teaches that a user specifies the information that is used by automated computer agents to conduct a negotiation, which defines a negotiation strategy as claimed. This satisfies what is claimed.
For claim 10, the setting of a disclosure range is considered to be satisfied by the user entering data into the system of Batachia to define the negotiation strategy to be used by the computer. The term “disclosure range” is not defining any specific data and is just recited as being able to be set by a user. This is satisfied by Batachia.
Response to arguments
The traversal of the 35 USC 101 rejection is not persuasive. On page 9 the applicant has argued that the claims have been amended to be eligible. This is not persuasive for the reasons set forth in the current rejection of record. The applicant argues that the claims are providing a machine executed pipeline that performs the recited steps and amounts to concrete steps. This is not persuasive. The claims are simply instructing one to carry out the negotiation steps using a computer, where the claimed steps can otherwise be performed by people manually with no technology at all. The fact that the claims are machine executed is an instruction for one to use a computer to execute the abstract idea and does not render the claims eligible, see MPEP 2106.05(f) as the 101 rejection of record relies upon. Additionally, the 101 analysis does not depend on whether or not one claims concrete steps to do something. The applicant appears to be arguing the old 101 eligibility analysis from the mid 2000s that looked to whether or not the claims recited a “useful, concrete, and tangible result” (Ex parte Lundgren, 2005). This standard of edibility analysis was superseded by the Bilski machine/transformation test that was then superseded by the holding in Alice that is the current legal standard of analysis that the USPTO employs, as is set forth in the MPEP in section 2106. The argument is not persuasive for this reason.
On page 10 the applicant argues that the steps of the claims control network I/O and reduce transmission. This is not persuasive and is just citing the claim language with an allegation that it is eligible because of computer implementation. This is not persuasive for reasons already addressed with respect to using a computer to perform the abstract idea.
The applicant also argues that the ordered combination of claimed elements is anchored to specific functional components, that argues that a conclusion that these elements are well understood, routine, or conventional would require evidentiary support. In reply the examiner notes that the ordered combination of claim elements when viewed with the claim as a whole is reciting computer implementation for a negotiation process. This does not render the claims eligible. The issue of the claimed invention being well understood, routine, and conventional in the negotiation field is not relevant to the claims at hand. Evidence does not need to be provided that shows a claimed invention is well understood, routine, and conventional to establish claim ineligibility. If that were true it would be a much higher standard than just being known in the art and would mean that novelty or non-obviousness over prior art equates to edibility, which is not true. This argument is injecting a prior art analysis into the eligibility inquiry that does not exist. The issue of a limitation being well understood, routine, or convention is relevant at step 2B when the element has been found to be an insignificant extra solution activity at the 2nd prong, which is not the case with the pending claims. The argument is not persuasive for these reasons. No other arguments have been presented for review. The 101 rejection is being maintained due to the traversal in view of the amended claims not being persuasive.
The traversal of the 35 USC 102 rejection is not persuasive. The amendment to the claims has been considered and the rejection of record moots the arguments from the applicant because Batachia anticipates what is claimed. The applicant has argued that when there is a failure to reach a consensus, a second utility function is referred to. This has been addressed in the rejection of record by way of being a counter offer, and is a rejection that is necessitated by the amendment. The arguments are moot and the applicant is referred to the rejection of record under 35 USC 102 in this regard.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached at 5712703445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS W RUHL/ Primary Examiner, Art Unit 3626