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 .
Status of Claims
Claims 1-8 are pending in this instant application per original claims filed on 11/25/2024. Claims 1 and 5 are independent claims reciting method and system claims. Claims 2-4 and 6-8 are dependent.
There is no IDS filed in this application.
This Office Action is a non-final rejection on merits in response to the original claims filed by the Applicant on 25 NOVEMBER 2024 for its original application of the same date that is titled: “Heppner Silk AltQuoteTM – Online Computer-Implemented Integrated System for Providing Alternative Peer-Group Based Valuations”.
Accordingly, pending Claims 1-8 are now being rejected herein.
Examiner notes that all words and phrases in claims, in examination below, have been given their regular meaning (even when capitalized) unless they have been shown to have any registered trademark™, copyright© or similar registration® assigned to said capitalized words with the first recitation of such a word or phrase in the listing of claims.
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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more, wherein Claims 1 and 5 are independent method and system claims respectively.
Exemplary Analysis.
Claim 1: Ineligible.
The claim recites a series of steps. The claim is directed to a method reciting a series of steps, which is a statutory category of invention (Step 1 -- YES).
The claim is analyzed to determine whether it is directed to a judicial exception. The claim recites the limitations of: accessing information relating to an alternative asset product; computing an expected return for the alternative asset product; forecasting cashflow dispersion for the alternative asset product; determining financing parameters for a proposed financing based on the expected return and the forecasted cashflow dispersion for the alternative asset product and based on the alternative asset product serving as a reference asset for the proposed financing; and presenting the financing parameters through a real-time quote. In other words, the claim describes a method for evaluating, diversifying, and/or monitoring alternative asset products which serve as reference assets backing financings (see para [0005] in Summary). These limitations, as drafted, are steps of a method that, under its broadest reasonable interpretation, covers performance of the limitations via a method of organizing human activity such as fundamental economic principles or practices (to include hedging, mitigating risk), and/or commercial or legal interactions (to include agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), and/or managing behavior or relationships or interactions between people (to include social activities, teaching, and following rules or instructions), but for the recitation of generic computer/s and/or computer component/s such as the devices/ mobile devices. These limitations fall under the “certain methods of organizing human activity” group (Step 2A1 -- YES).
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional elements of: an online portal and a quantitative stochastic model and simulation. These additional elements are considered extra-solution activities. The portals (devices) and models in the steps are recited at a high level of generality, i.e., as generic processors performing generic computer/s functions of processing data (to include accessing information and provide real-time quotes via online portal; and forecasting cashflow based on stochastic model and simulation). These generic processors are no more than mere instructions to apply the exception using generic computer/s and/or computer component/s. Accordingly, these 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. Thus, the claim is directed to the abstract idea (Step 2A2 -- NO).
Next, the claim is analyzed to determine if there are additional elements in this claim that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer/s and/or computer component/s. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer and/or computer components over a network cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Because the additional elements of: an online portal and a quantitative stochastic model and simulation, were considered to be extra-solution activities in Step 2A, they are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine and conventional in the field. The disclosure does not provide any indication that these devices (processors) are anything other than generic processors and the Symantec, TLI, and OIP Techs. court decisions (MPEP 2106.05 (d) (II)) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Also, paras [0105]-[0109] of the Applicant’s own Specification describe ---
{“[0105] In various embodiments, the computing system of FIG. 11 can include software applications that implement the transactions and operations described above herein. For example, various transactions may be transactions or portions of transactions can be implemented in a different sequence than as described or illustrated herein. Additionally, various transactions or portions of transaction can be implemented concurrently or simultaneously. Portions of one or more transactions can be implemented in one or more other transaction. In accordance with aspects of the present disclosure, a software application can be used to specify such different arrangements and timing of transactions or portions of transactions such that different investors can have different timing or different implementation of transactions. The software application can be used to arrange and rearrange the transactions with ease using, for example, a graphical user interface (not shown). Account information stored in the storage 1110 and the network interface 1140 can allow the pre-arranged transactions to be communicated with various entities and institutions. …………………
[0106] In various embodiments, one or more software applications can implement an investor/client and advisor-credentialed site for the initiation of liquidity requests. Investors can provide details about Alternative Asset Products, upload asset documents, and track the progress of a transaction. They can also download a binding term sheet, when available, and request verification of accreditation. ………………………………………………………………………………………
[0107] In various embodiments, one or more software applications can implement an underwriting and risk application for documenting valuation, pricing, and ultimate offering terms. The application can incorporate a controlled sequence of tasks to ensure all parties complete their assigned responsibilities. The application can include manager approvals throughout the transaction and can provide the ability to manage multiple portfolios and offering scenarios within a single transaction, as well as selection of final deal terms to feed into other applications or systems. ………………………………………………………………………………………………
[0108] In various embodiments, one or more software applications can implement an account and transaction management application, which can be used by originations, legal, and investment operations teams. The originations team can use the application to create new accounts for investors and advisors. The legal team can use the application to review investor- provided information for purposes of anti-money laundering or other efforts. The legal team can also use the application to provide deal terms required for the generation of trust and other documents. The investment operations team can use the application to compile and distribute transaction documents, including the binding term sheet and various plan documentation. …………………………………………………………………………………………………………………..
[0109] In various embodiments, one or more software applications can implement automated generation of Financing documents (e.g., Financing documents, special purpose vehicle documents) using data provided by one or more other application described above, can implement distribution of trust documents to appropriate parties, and can implement creation and review of accounting journal entries. Various other functionalities can be implemented.”}
--- and indicate that the concept described by the extra-solution additional elements is conventional. Accordingly, a conclusion that the aforementioned extra-solution additional elements are well-understood, routine and conventional activity is supported under Berkheimer options 2 and 3, respectively.
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea (Step 2B -- NO), and the claim is not patent eligible.
The analysis above applies to all statutory categories of the invention including independent system Claim 5, which perform the steps similar to those of independent method Claim 1. Furthermore, the limitations of dependent method Claims 2-4, further narrow the independent method Claim 1 with additional steps and limitations (e.g., determining a predetermined financing structure; receiving a desired financing structure and determining it; and a financing level), and do not resolve the issues raised in rejection of the independent method Claim 1. Similarly, dependent system Claims 6-8 also further narrow their independent Claim 5, which are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Therefore, said Claims 1-8 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Examiner’s Note: A table comparing the claims of this child application 18/958020 with its Abandoned parent application 17/972147 is attached herewith (as Appendix), which shows that the claims in both these applications are identical, and thus rejected similarly based on said comparison.
Claim Rejections - 35 USC §103
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 application currently names joint inventors. In considering patentability of the claims the Examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. The Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the Examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1,148 USPQ 459 (1966), that are applied 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.
Claims 1-8 are rejected under 35 USC 103 as unpatentable over a combination of references as described below for each claim/ limitation.
Exemplary Analysis for Rejection of Claims 1-4
Independent Claim 1 is rejected under 35 USC 103 as unpatentable over Pub. No. US 2019/ 0370308 filed by Riggs et al. (hereinafter “Riggs”) in view of Pub. No. US 2019/ 0147532 filed by Singh et al. (hereinafter “Singh”), and further in view of Pub. No. US 2005/ 0171882 filed by Nevins, Daniel (hereinafter “Nevins”), and as described below for each claim/ limitation.
Examiner notes that all claims have been copied as recited by the Applicant to keep them readable and whole, even if the limitations within a claim that are not taught explicitly by the primary/previous reference (are noted in parentheses), but these limitations are noted explicitly as taught by a secondary/new reference whenever a secondary/new reference has been used.
Examiner notes that, for brevity in this rejection, the motivation statement has not been repeated herein every time a secondary reference has been used.
With respect to Claim 1, Riggs teaches ---
1. A computer-implemented method comprising:
accessing information relating to an Alternative Asset Product received through (an online portal);
(see at least: Riggs Abstract and Brief Summary of the Invention in paras [0058]-[0098]; and para [0082] about {“In further embodiments, the investment securities or groups are selected from among equity, debt, derivatives, currencies, commodities, funds, notes, alternative investments, exchange-traded products, real assets, and structured products.”}; and para [0095] about {“…… investment securities represent the elements of the economic system; wherein one or more investment securities, or one or more groups, are selected from among equity, debt, derivatives, currencies, commodities, funds, notes, alternative investments, exchange-traded products, real assets, and structured products; and one or more data entities identify one or more investment securities.”}; which together are the same as claimed limitations above to include ‘alternative asset product’)
Riggs teaches as disclosed above, but it may not explicitly disclose about ‘an online
portal’. However, Singh teaches it explicitly.
(see at least: Singh Abstract and Summary in paras [0003]-[0006]; and para [0131] for ‘one or more mobile portal 1226, online portal 1228, and blockchain portal 1240’; and para [0132] for ‘online portal 1228’, ‘web browser 1232’ and ‘blockchain nodes/distributed ledgers 1238’; which together are the same as claimed limitations above to include ‘an online portal’)
It would have been obvious prior to the effective filing date of the claimed invention to have an ordinary person of skill in the art to modify the teachings of Riggs with the teachings of Nevins. The motivation to combine these references would be to provide known and existing classification systems with underlying statistical causes for the systematic impact of the volatility of the constituents of large-scale portfolios of securities (see para [0057] of Riggs), and to deliver trade and pricing information with sufficient security, timeliness, and transparency that is likely to result in an accepted offer, in an environment with many offers from competing entities (see para [0005] of Singh).
Riggs and Singh teach ---
computing (an expected return) for the Alternative Asset Product;
(see at least: Riggs ibidem and citations listed above to include ‘alternative asset product’)
Riggs and Singh teach as disclosed above, but they may not explicitly disclose about ‘an expected return’. However, Nevins teaches it explicitly.
(see at least: Nevins Abstract and Summary of the Invention in paras [0006]-[0009]; and para [0021] about {“…… The formula is based on an investor's asset allocation target, the expected returns for public and private markets, and the expected pattern of cash flows for a private equity program. ……… In the third section, commitment strategies are tested according to various scenarios for public and private market returns. The approach is also tested using Monte-Carlo simulations and a likely range of results are calculated. ….”}; and para [0029] about {“… In one embodiment, expected returns for the private and public markets, r.sub.L and r.sub.I, represent long-term expectations. …”}; and para [0035] about {“…… Particular attention should be given to the internal rate of return implied by the historical data, which could be inconsistent with the investor's expected return on a forward-looking basis. If the historical rate of return is not expected to persist, a scaling factor can be applied to the historical distributions to reflect the forward-looking expected return.”}; which together are the same as claimed limitations above to include ‘an expected return’)
It would have been obvious prior to the effective filing date of the claimed invention to have an ordinary person of skill in the art to modify the teachings of Riggs and Singh with the teachings of Nevins. The motivation to combine these references would be to provide known and existing classification systems with underlying statistical causes for the systematic impact of the volatility of the constituents of large-scale portfolios of securities (see para [0057] of Riggs), and to deliver trade and pricing information with sufficient security, timeliness, and transparency that is likely to result in an accepted offer, in an environment with many offers from competing entities (see para [0005] of Singh), and to provide a novel, systematic approach for making private equity commitments that addresses the unique complications associated with committing capital to private equity (see para [0005] of Nevins).
Riggs, Singh and Nevins teach ---
forecasting cashflow dispersion for the Alternative Asset Product based on a quantitative stochastic model and simulation;
(see at least: Riggs ibidem and citations listed above to include ‘alternative asset product’; and para[0244] for ‘a set of equations modeling stochastic components’; which together are the same as claimed limitations above to include ‘a quantitative stochastic model’; AND para [0228] about {“…… cash flows at the portfolio level that are more stable, consistent, and predictable ….”}; and para [0287] for future cash flows; which together are the same as claimed limitations above to include ‘forecasting cashflow dispersion’)
(see at least: Singh ibidem and citations listed above)
(see at least: Nevins ibidem and citations listed above to include ‘a public return component’; and para [0040] about {“To assess the performance of the approach of the present invention through time and under different market conditions, several simulation tests were conducted. Both deterministic and stochastic simulations were used. …… Private equity cash flows were assumed to conform to the historical cash flow model described above and summarized in FIG. 2 ….”}; and para [0044] about {“For a stochastic analysis, 1,000 Monte-Carlo simulations were generated assuming that private and public market returns are normally distributed and serially independent …… It shows that the committed capital target has desirable properties even in a Monte-Carlo simulation context, in which return expectations are not realized in each year.”}; which together are the same as claimed limitations above to include ‘a quantitative stochastic model and simulation’)
Riggs, Singh and Nevins teach ---
determining Financing parameters for a proposed Financing based on the expected return and the forecasted cashflow dispersion for the Alternative Asset Product and based on the Alternative Asset Product serving as a Reference Asset for the proposed Financing; and
(see at least: Riggs ibidem and citations listed above to include ‘alternative asset product’ and ‘forecasting cashflow dispersion’; and para [0004] for ‘financial instrument’; and para [0047] for ‘key paradigms of finance were formulated’; and para [0080] for ‘numerical values relate to economic, financial, or capital markets-based data; and para [0083] for ‘selecting a financial or economic metric to measure’; and para [0111] for ‘negotiable, financial instrument that represents a type of financial value associated with an economic entity’; and paras [0131], [0204] and [0230]-[0231] for ‘financial instrument/s’; which together are the same as claimed limitations above to include ‘financing parameters’; AND para [0227] about {“In some embodiments, the preparation of earnings estimates and projected financial statements at the portfolio, engineered composite, or synthetic conglomerate level permit the establishment of a trackable internal benchmark. This customized portfolio, engineered composite, or synthetic conglomerate can be compared to those earnings estimates or financial statements to determine whether they met or exceeded projections. ….”}; which together are the same as claimed limitations above to include ‘a/ the proposed financing’; AND para [0131] for ‘financial instruments such as mortgage-backed securities or sovereign debt’; which together are the same as claimed limitations above to include ‘a reference asset’)
(see at least: Singh ibidem and citations listed above)
(see at least: Nevins ibidem and citations listed above to include ‘a public return component’)
Riggs, Singh and Nevins teach ---
presenting the Financing parameters through the online portal as a real-time quote.
(see at least: Riggs ibidem and citations listed above to include ‘financing parameters’)
(see at least: Singh ibidem and citations listed above to include ‘an online portal’; and paras [0004] and [0120] for ‘real-time or near real-time quotes’; and para [0099] about {“……that can be used for determining information, such as spreads, quotes, and the like, in real-time or near real-time with receiving a request for a quote, …”}; and para [0115] about {“…… the processes of determining and communicating a quote, e.g., by machine learning profile pricer 614, to a user 702 on a user interface 704 may be in real-time or near real-time.…… The described processes for determining and communicating a quote can be in real-time or near real-time, …… One or more user profiles can be updated in response to receiving a request for a quote, to provide a quote or other information (e.g., a spread) that can be in real-time or near real-time with receiving a request for a quote.”}; which together are the same as claimed limitations above to include ‘a real-time quote’)
(see at least: Nevins ibidem and citations listed above to include ‘a public return component’)
Dependent Claims 2-4 are rejected under 35 USC 103 as unpatentable over Riggs in view of Singh and Nevins as applied to the rejection of independent Claim 1 above, and as described below for each claim/ limitation.
With respect to Claim 2, Riggs, Singh and Nevins teach ---
2. The computer-implemented method of claim 1, wherein the Financing parameters are determined based on a predetermined Financing structure.
(see at least: Riggs ibidem and citations listed above to include ‘financing parameters’; and para [0081] about {“In further embodiments, the number of securities in each group is chosen such that a statistical power of the statistical test exceeds a predetermined level.”}; and para [0214] about {“The target score can also be identified as the target score that the investor seeks as part of the investment objective. Here, the investor may want to use a stratified or segmented composite to reach a predetermined target score. By building groups based on common attributes, risk groups can be formed. These risk groups may then be weighted appropriately to achieve the target score, resulting in a portfolio with known biases.”}; which together are the same as claimed limitations above to include ‘a predetermined financing structure’)
(see at least: Singh ibidem and citations listed above)
(see at least: Nevins ibidem and citations listed above)
With respect to Claim 3, Riggs, Singh and Nevins teach ---
3. The computer-implemented method of claim 1, further comprising receiving a desired Financing structure via the online portal, wherein the Financing parameters are determined based on the desired Financing structure.
(see at least: Riggs ibidem and citations listed above to include ‘financing parameters’; and para [0257] about {“…… User preferences, current user holdings, and network position facilitate the customization financial recommendations to users based on dynamic proximity calculations.”}; and para [0295] about {“......Each debt security has a level of risk that is directly tied to the value in liquidation of the underlying assets of the company. …”}; which together are the same as claimed limitations above to include ‘a/ the desired financing structure’)
(see at least: Singh ibidem and citations listed above to include ‘an online portal’)
(see at least: Nevins ibidem and citations listed above)
With respect to Claim 4, Riggs, Singh and Nevins teach ---
4. The computer-implemented method of claim 1, wherein the Financing parameters include a Financing level based on the Alternative Asset Product serving as a Reference Asset for the proposed Financing and based on a predetermined Default rate.
(see at least: Riggs ibidem and citations listed above to include ‘alternative asset product’,
‘financing parameters’, ‘a reference asset’ and ‘a/ the proposed financing’; and para [0287] about {“Investment-grade debt is a specific class of securities with a well-defined expected rate of return and a well-defined risk. Each bond is rated by a third-party rating agency. This rating captures the estimated likelihood that the bond issuer will default on the debt. In the case of default risk, one of the most pertinent risks in investing in such securities, corporate bonds with the same rating should have similar yields to maturity, holding other variables, such as maturity, constant. …… That is, investment-grade corporate debt securities behave predictably.”}; which together are the same as claimed limitations above to include ‘a predetermined default rate’)
(see at least: Singh ibidem and citations listed above)
(see at least: Nevins ibidem and citations listed above)
With respect to Claims 5-8, the limitations of these system claims are rejected under 35 USC 103 based on the exemplary analysis above for the rejection of method Claims 1-4 as described above using cited references of Riggs, Singh and Nevins, because the limitations of these system Claims 5-8 are commensurate in scope to limitations, and thus duplicates, of the above rejected method Claims 1-4 as described above.
Conclusion
The prior art made of record and not relied upon, listed in Form 892, that is considered pertinent to the Applicant's disclosure and review for not traversing already issued patents and/or claimed inventions by the claims of the current invention of the Applicant. Please Note that Form 892 contains more references than those cited in the rejection above under 35 USC 103, and all the references cited on said Form 892 are relevant to this application that form a part of the body of prior art.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Sanjeev Malhotra whose telephone number is (571) 272-7292. The Examiner can normally be reached during Monday-Friday between 8:30-17:00 hours on a Flexible schedule.
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If attempts to reach the Examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas, can be reached on (571) 270-1836. The facsimile/fax phone number for the organization, where this application or proceeding is assigned, is 571-273-8300.
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Electronic Communications
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/S.M./
Examiner, Art Unit 3691
sanjeev.malhotra@uspto.gov
/HANI M KAZIMI/Primary Examiner, Art Unit 3691