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 .
Status of Claims
This action is in response to application 18/911456 filled on 10/10/2024.
Claims 1-20 are currently pending 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 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. When considering subject matter eligibility under 35 U.S.C. § 101, there are multiple steps that may need to be assessed. First, in step 1 it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined in step 2A prong 1 whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). If the claim is directed toward a judicial exception, it must then be determined in step 2A prong 2 whether the judicial exception is integrated into a practical application. Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in step 2B whether the claim recites “significantly more” than the abstract idea. See “2019 Revised Patent Subject Matter Eligibility Guidance,” 84 Fed. Reg. (4): 50-57 (Jan. 7, 2019).
Independent Claim 1 recites as follows:
• Providing opportunity data about an endeavor
• Obtaining a plurality of sponsor data items each including a participation offer in a bookbuilding process wherein the participation offers each include a bid participation quote and an amount of sponsoring resources;
• selecting one or more participation offers from the obtained participation offers depending on the ask participation quote, the prosecution resources, as well as on the bid participation quotes and the sponsoring resources of each of the plurality of the sponsor data items; and
• match the sponsor data items associated with the selected one or more participation offers with the opportunity data.
The language above corresponds to the abstract ideas recited in Claim 1 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.
Finding the claims to be directed toward an abstract idea, however, is not the end of the inquiry. Rather, the next step is to determine whether the judicial exception is integrated into a practical application (step 2A prong 2). 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.
If the claims are not integrated into a judicial exception, the Examiner must consider whether there is “significantly more” recited in the claim in step 2B. See MPEP § 2106.05. There is nothing unconventional or inventive in Applicant’s claims for the purpose of analysis under step 2B, e.g., any combination of elements that provide an advance over any technological state of the art. Rather, as noted above, an abstract commercial and legal interaction is merely implemented by a general purpose computer. Other than the limitations that are abstract for the reasons articulated above, Applicant has merely recited a generic computer that facilitates the steps of the invention. Thus, Applicant’s claims merely recite a computer to implement the abstract idea, which fails to provide “significantly more” than the abstract idea.
As the MPEP states, Examiners may consider the following three factors when determining whether the claim recites mere instructions to implement an abstract idea on a computer: 1) whether the claim recites only the idea of a solution or outcome, i.e., the claim fails to recite details of how a solution to a problem is accomplished; 2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and 3) the particularity or generality of the application of the judicial exception. See MPEP § 2106.05(f). Applying those factors to the instant application: 1) the claims do not recite how the computer performs any of the steps other than just stating that they do it; 2) the claims invoke the computer to perform a process of bid matching that has been performed without computers and before the ubiquity of computers; and 3) the claims are general and not recited in much particularity because it can apply to any way of bid matching.
The dependent claims 2-12 and 14-20 are merely reciting further embellishments of the abstract idea and do not amount to anything that is significantly more than the abstract idea itself. Specifically, they merely recite different ways of doing the bid matching. In other words, none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limitations that, in an ordered combination provide “significantly more” or providing any integration into a practical application. Rather, the dependent claims are merely further reciting features that are just as abstract as independent Claims 1 and 13. Therefore, Claims 2-12 and 14-20 are directed to non-statutory subject matter and are rejected as ineligible subject matter under 35 U.S.C. § 101.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1-20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Reddy et al. (US 2003/0101115, hereinafter “Reddy”).
Claim 1. Reddy teaches: Computer-implemented method for matching opportunity data defining an opportunity and at least one sponsor data item to represent a cooperation for commonly undertaking an endeavor, enterprise or venture, comprising the steps of:
Providing opportunity data about an endeavor, enterprise or venture from a source to a computer, wherein the opportunity data is defined by prosecution resources needed to prosecute the opportunity, a best possible outcome in case of success of the prosecution and an ask participation quote (see, e.g., Figures 14 and 16 where the entrepreneur can provide information about the endeavor in a computer such as desired deal size; see further ¶ 93 teaching providing information such as deal size, target closing date, etc.),
Obtaining, at the computer, a plurality of sponsor data items each including a participation offer in a bookbuilding process wherein the participation offers each include a bid participation quote and an amount of sponsoring resources (see, e.g., Figure 16 where the investor can provide information in a computer such how much the investor is willing to fund and what kids of ventures he or she is willing to fund; see further ¶ 159 teaching the participating inventor searching for investment opportunities such as size of investment);
Using the computer, selecting one or more participation offers from the obtained participation offers depending on the ask participation quote, the prosecution resources, as well as on the bid participation quotes and the sponsoring resources of each of the plurality of the sponsor data items (see at least Figure 18 and ¶ 162 teaching that the computer system selects matches of respective entrepreneurs and investors based on the input data; see further ¶ 165 teaching matching rules such as size of the deal and other metrics); and
Using the computer to automatically match the sponsor data items associated with the selected one or more participation offers with the opportunity data (see at least Figure 18 and ¶ 162 teaching that the computer system selects matches of respective entrepreneurs and investors based on the input data).
Claim 2. Matching method according to claim 1, wherein the obtaining, at the computer, of the plurality of sponsor data items includes obtaining at least one of sponsor data items in view of the previously obtained sponsor data items, wherein particularly only the bid participation quote and the sponsoring resources associated to each existing sponsor data item are indicated or revealed (see, e.g., Figure 13 feature 508 and ¶s 126-127 teaching that most information is “cloaked” or hidden except for, among a few other things, the amount the entrepreneur is trying to raise).
Claim 3. Matching method according to claim 2, wherein the participation offers are selected from the obtained participation offers as those which have the lowest bid participation quotes which are equal or lower than the ask participation quote, wherein particularly 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 (see, e.g., ¶s 165-166 teaching that matching rules can include deal size rules such as minimum and maximum amounts per investor).
Claim 4. Matching method according to claim 3, wherein if more than one of the obtained participation offers of the lowest bid participation quote are selectable only the earliest participation offer is considered so that concurring participation offers will be handled on a first-come, first-served base (see, e.g., ¶s 165-166 teaching that matching rules can include deal size rules such as minimum and maximum amounts per investor). .
Claim 5. Matching method according to claim 1, wherein the selecting of the participation offers is performed in the computer after the bookbuilding process has been terminated wherein the participation offers are 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. wherein the selecting of the participation offers is performed after the bookbuilding process has been terminated, particularly not before the opportunity provider indicates an end of the method for matching (see, e.g., ¶ 165 teaching that rules for matching can include the amount of time; see also, e.g., Figure 14 feature 528 teaching preferred exit timing).
Claim 6. Matching method according to claim 1, wherein the opportunity is further defined by a detailed description of the endeavor, enterprise or venture, wherein particularly the opportunity includes a litigation trial with an uncertain outcome, a business opportunity including an impact investment, or a research enterprise (see at least the Abstract and ¶ 1 teaching that the opportunity includes a business opportunity including an impact investment).
Claim 7. Matching method according to claim 1, wherein the best possible outcome after successfully prosecuting the opportunity is an amount of resources, such as material, goods or money, the obtaining of an allowance claim or a prohibition claim, a knowledge such as a research result, wherein the prosecution resources include legal costs, attorney costs, promotion costs, development costs, research costs, any kind of preconditions, and additional costs for an unsuccessful outcome of the endeavor, enterprise or venture, wherein the prosecution resources, the sponsoring resources and/or the best possible outcome are converted into a resource unit in the computer, such as a currency or blockchain-based token or a kind of unit which make the different items of prosecution resources, the sponsoring resources and/or the best possible outcome resources comparable (see, e.g., at least ¶s 88 and 115 teaching the entrepreneur posting the amount of money that he or she is attempting to raise).
Claim 8. Matching method according to claim 1, wherein the ask participation quote is increased during the bookbuilding process, particularly in view of the obtained bid participation quotes and associated sponsoring resources of the sponsor data items, wherein the bid participation quote of a sponsor data item is decreased during the bookbuilding process, particularly in view of the obtained bid participation quotes and associated sponsoring resources of the obtained other sponsor data items (see, e.g., ¶ 66 teaching that the entrepreneur can change and update the business descriptions and thus the amount of the deal size desired; see also ¶ 93 teaching that the entrepreneur may be prompted once a week regarding progress such as deal size).
Claim 9. Matching method according to claim 1, wherein a share of how each of the selected sponsor data item will be associated with the actual outcome of the opportunity is defined by the portion of the sponsoring resource of each sponsor data with respect to the required prosecution resources (see, e.g., ¶ 165 teaching that there can be investment per different investors, i.e., different shares owed to each investor).
Claim 10. Matching method according to claim 9, wherein an endeavor, enterprise or venture defined by the opportunity data is initiated as soon as the opportunity data has been matched with the sponsor data items (see, e.g., ¶ 93 teaching that the entrepreneur may be prompted regarding progress toward a deal and afterwards, such as providing information regarding investor approval, post-approval due diligence, and deal funding).
Claim 11. Method for resolving the degree of participation of sponsor data items at an opportunity defined by opportunity data after a termination of prosecution of the opportunity; wherein an outcome of the prosecution of an opportunity is distributed depending on a final participation quote, wherein the final participation quote is particularly defined as the highest participation quote of the selected participation offers according to the method of claim 1 (see, e.g., ¶ 165 teaching that matching can be based on maximum amount of business investment per investor or less than an investor’s strategic maximum amount for investment).
Claim 12. Method according to claim 11, wherein an upfront share of the actual outcome is distributed among the sponsor data items while the remaining part of the outcome is distributed among the opportunity provider and the sponsoring parties according to the final participation quote (see, e.g., ¶ 165 teaching that matching can be based on maximum amount of business investment per investor or less than an investor’s strategic maximum amount for investment).
Claims 13-20 recite substantially similar limitations as seen above and hence are rejected for similar rationale as noted above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Staib et al. (US 2006/0085321 A1) teaches a method and system to estimate demand, pricing, allocation and aftermarket demand for public offering via a simulation auction using collaborative forecasting.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAROUN P KANAAN whose telephone number is (571)270-1497. The examiner can normally be reached Monday-Friday 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mamon Obeid can be reached at (571) 270-1813. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MAROUN P. KANAAN
Primary Examiner
Art Unit 3687
/MAROUN P KANAAN/Primary Examiner, Art Unit 3687