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 .
The following is a Final Office Action in response to communications received April 07, 2026. No Claim(s) have been canceled. Claim(s) 21 has/have been amended. No new claims have been added. Therefore, claims 1-39 are pending and addressed below.
Priority
Application No. 19238705 filed 06/16/2025 is a Continuation of 17902460 , filed 09/02/2022, now abandoned 17902460 is a Continuation of 17242171 , filed 04/27/2021 ,now U.S. Patent # 12243098 17242171 is a Continuation of 15797546 , filed 10/30/2017 ,now U.S. Patent # 11017470 and having 1 RCE-type filing therein 15797546 is a Continuation of 14682886 , filed 04/09/2015 ,now U.S. Patent # 9805419 and having 1 RCE-type filing therein 14682886 is a Continuation in Part of 14590586 , filed 01/06/2015, now abandoned 14590586 is a Continuation in Part of 14515063 , filed 10/15/2014, now abandoned 14515063 Claims Priority from Provisional Application 61891532 , filed 10/16/2013
Information Disclosure Statement
The IDS submitted 06/16/2025 has been reviewed and considered.
Claim Interpretation
In light of the specification, applying the broadest reasonable interpretation, the examiner is interpreting the language "maintain" in the claim as holding/storing shares in a system (spec 1 0112-0113)
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 1-39 are rejected under 35 U.S.C. § 101 because the instant application is directed to non-patentable subject matter. Specifically, the claims are directed toward at least one judicial exception without reciting additional elements that amount to significantly more than the judicial exception. The rationale for this determination is in accordance with the guidelines of USPTO, applies to all statutory categories, and is explained in detail below.
In reference to Claim(s) 1-20:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a Platform system, as in independent Claim 1 and the dependent claims. Such systems fall under the statutory category of "machine." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. The claimed invention is directed to an abstract idea without significantly more. The functions of system claim 1 recites operations (1) maintain securities offerings (2) provide data displays including quantity and price (3) receive offering criteria and store offering criteria (4) receive streaming updates of price quotes (5) determine offering prices of exempt offering securities (6) display determined offer prices (7) receive an offer to purchase/sell securities (8) determine for offer purchase/sell one of exempt offering securities (9) transmit purchase instructions (10) transfer securities in accordance with transaction or update account data or generate share certificate. The claimed limitations which under its broadest reasonable interpretation, covers performance of commercial activity and/or interaction. The specification makes clear that the focus of the invention relates to bidding securities exchanges in financial services industry for facilitating restricted securities transaction (para 0002). The specification discloses the problem to be solved is the placement and sale of restricted securities due to being restricted by regulatory authorities, transfer agents, dealers, clearing firms and/or by issuers of the interest itself. (para 0004-0006). Accordingly in light of the specification, the claimed subject matter when considered as a whole is directed toward overcoming the industry related restrictions for facilitating the exchange of information of restricted securities, valuation and transfer of interest. Such concepts can be found in the abstract category of commercial interactions. This concepts is enumerated in Section I of the 2019 revised patent subject matter eligibility guidance published in the federal register (84 FR 50) on January 7, 2019) is directed toward abstract category of methods of organizing human activity.
STEP 2A Prong 2: The identified judicial exception is not integrated into a practical application because the claims fail to provide indications of patent eligible subject matter that integrate the alleged abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a Platform comprising an electronic marketplace platform computer system; a network connection connecting the electronic marketplace platform computer system to a plurality of remote user-accessible devices; a network connection connecting the electronic marketplace platform computer system in real time to one or more sources; one or more computer-processor readable memories of the electronic marketplace platform computer system storing offering criteria and third party system.
The claimed computer system applied to perform the operations of “receive…offering criteria…and store…offering criteria”, “receive…updates of price quotations…”, “display …offer prices”, “receive …offer to purchase/sell …securities”, “transmit…instructions to purchase…”, which according to the courts have been recognized when the computer functions are claimed in a merely generic manner (e.g., at a high level of generality) where technology is merely applied to perform the abstract idea or as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
The claim limitations (“receive…offering criteria…and store…offering criteria”, “receive…updates of price quotations…”, “display …offer prices”, “receive …offer to purchase/sell …securities”, “transmit…instructions to purchase…) are recited at a high level of generality without details of technical implementation and thus are insignificant extra solution activity.
The additional element “computer system” is further applied at a high level to “maintain…securities offerings” which is merely utilizing technology as a tool to store securities related data.
The additional element “computer system” is further applied to “provide …interactive data displays…permitting the issuers to determine offering criteria…” without any limitations provides information in a display by any known means for use related to trading activities.
The additional element “computer system” further applied to “determine…offer prices of …securities…”, “determine eligibility of parties…for offers to sell/purchase…” for evaluation and analysis for a trading activity lacking any technical details.
The additional element “third party system” applied to perform optional transaction activity of “transferring…securities”, “updating shareholder account data” or “generating a share certificate for ….securities”.
The claim limitations when considered individually fail to provide any indications of patent eligible subject matter when considered individually, according to MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h).
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological environment.
When the claims are taken as an ordered combination or as a whole, the combination of limitations, the combination of limitations 1-2 and 3-4 are not directed toward the computer system itself or any of the functionality of the platform claim, but instead directed toward applying a computer system as a tool to maintain, provide and receive data related to security transactions. The combination of limitations 1-4 and 5-6 are not directed toward the computer system itself or any of the functionality of the platform claim or any other technology, but instead directed toward applying a computer system as a tool to analyze/determine offer prices and display the prices received from operations 1-4. The combination of limitations 1-6 and 7-9 performed by the “computer system” are not directed toward the computer system itself or any of the functionality of the platform claim or any other technology, but instead directed toward applying a computer system as a tool to receive purchase/sell offer and transmit to a third party system based on determined eligibility of transaction parties instructions to perform the transaction. The limitations 1-9 are therefore directed toward a transaction process. The combination of limitations 1-9 performed by the computer system and 10 performed by the third party system are directed toward the third party system in response to the transaction process performed by limitations 1-9 by the computer system to perform options of transferring securities, updating account data for securities or generate share certificate of securities which is further performing transactions between buyers and sellers of a computer platform and third party system. When considered as a whole or ordered combination the combination of limitations 1-10 is directed toward a commercial activity.
The combinations of parts is not directed toward any of the indications of patent eligible subject matter under step 2A prong 2, but instead to perform a transaction. MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h). The claim limitations as a whole, as an ordered combination and the combination of steps not integrate the judicial exception into a practical application as the claim process fails to impose meaningful limits upon the abstract idea. . This is because the claimed subject matter fails to provide additional elements or combination or elements that go beyond applying technology as a tool to perform the identified abstract idea. The functions recited by the computer system in the claims recite the concept of a commercial activity. The claim limitations and specification lacks technical disclosure on what the technical problem was and how the claimed limitations provide a technical solution to a technical problem rather than a solution to a problem found in the abstract idea. Taking the claim elements separately, or as a combination, the operation performed by the computer system at each step of the process is purely in terms of results desired and devoid of implementation of details. Technology is not integral to the process as the claimed subject matter is so high level that any generic programming could be applied and the functions could be performed by any known means. Furthermore, the claimed functions do not provide an operation that could be considered as sufficient to provide a technological implementation or application of/or improvement to this concept (i.e. integrated into a practical application).
The integration of elements do not improve upon technology or improve upon computer functionality or capability in how computers carry out one of their basic functions. The integration of elements do not provide a process that allows computers to perform functions that previously could not be performed. The integration of elements do not provide a process which applies a relationship to apply a new way of using an application. The limitations do not recite a specific use machine or the transformation of an article to a different state or thing. The limitations do not provide other meaningful limits beyond generally linking the use of the abstract idea to a particular technological environment. The resource claimed performing the steps is merely a “field of use” application of technology. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments apply what generic computer functionality in the related arts. The steps are still a combination made to perform a financial activity and does not provide any of the determined indications of patent eligibility set forth in the 2019 USPTO 101 guidance. The additional steps only add to those abstract ideas using generic functions, and the claims do not show improved ways of, for example, an particular technical function for performing the abstract idea that imposes meaningful limits upon the abstract idea. Moreover, Examiner was not able to identify any specific technological processes that goes beyond merely confining the abstract idea in a particular technological environment, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim provides no technical details regarding how the operations performed by the “computer system” or “third party system”. Instead, similar to the claims at issue in Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017), “the claim language . . . provides only a result-oriented solution with insufficient detail for how a computer accomplishes it. Our law demands more.” Intellectual Ventures, 850 F.3d at 1342 (citing Elec. Power Grp. LLC v. Alstom, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)). The claim is directed to an abstract idea
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a Platform comprising an electronic marketplace platform computer system; a network connection connecting the electronic marketplace platform computer system to a plurality of remote user-accessible devices; a network connection connecting the electronic marketplace platform computer system in real time to one or more sources; one or more computer-processor readable memories of the electronic marketplace platform computer system storing offering criteria and third party system.
Taking the claim elements separately, the function performed by the computer system at each part of the process is purely conventional. Using a computer system to perform the operations “maintain…offerings”, “provide…interactive data displays…”, “receive…offering criteria…and store …offering criteria”, “receive …updates of price quotations”, “determine…offer prices…of securities”, “display….offer prices”, “receive…offer to purchase/sell securities”, “determine eligibility of parties to sell/purchase offers”, “transmit instructions… to purchase transaction”, ----are some of the most basic functions of a computer. The additional element third party system is applied to perform the optional operations of “transfer assets”, “update account data” or “generate share certificate for securities”. The operations of the computing system and the third party system are high level without any details as to technical implementation.
According to Alice, additional computer elements which are equivalent to “apply it” with an abstract idea are not enough to qualify as “significantly more”. The current limitation merely provide an environment to implement the abstract idea on a computer or requiring no more than a generic compute to perform generic computer functions that are well understood activities known to the industry. As a result, none of the hardware recited by the system claims offers a meaningful limitation beyond generally linking the use of the method to a particular technological environment, that is, implementation via computers. .. . The claim limitations do not recite that any of the “devices” perform more than a high level generic function ... . None of the limitations recite technological implementation details for any of these steps, but instead recite only results desired to be achieved by any and all possible means. .. . Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
The operations of the Platform computer system are employed in a customary
manner and do not improve any underlying technology or provide a particular technical process or any particular arrangement of elements directed toward more than implementing a sales activity. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. The additional sales activity performed by the computer including maintain securities offering, receiving functions for purchase/sale securities, display data, transmit instructions to purchase/sell securities is directed toward insignificant extra solutions activity. MPEP 2106.05 II, MPEP 2106.05 (d) II. The computer system of Claim 1 and its functions provides no technical details regarding how the claimed transaction operations are performed.
When the claims are taken as a whole, as an ordered combination, the combination of steps does not add “significantly more” by virtue of considering the steps as a whole, as an ordered combination. As discussed above, the combination of
maintain data, receiving price data, determining price data and displaying the data,
similar to Electric Power Group is conventional application of technology. The
receiving, transmitting and transferring is mere data gathering and outputting recited at
a high level of generality and thus are insignificant extra solution activity. All of these
computer functions are generic, routine, conventional computer activities that are
performed only for their conventional uses.See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms “maintain”, “provide”, “receive”, “determine”, “display”, “transmit”, “transfer” or update” or “generate share certificate” ... are functions can be achieved by any general purpose computer without special programming". None of these activities are used in some unconventional manner nor do any produce some unexpected result. The limitations as a combination are not directed toward a particular technological technique.
As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. Invest Pic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Applicant’s claimed functions add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis modification-transmission is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited as an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. The analysis concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception.
According to 2106.05 well-understood and routine processes to perform the abstract idea is not sufficient to transform the claim into patent eligibility. As evidence the examiner provides:
The specification discloses how the system is applied without details of any technical process or specific unconventional structure, instead discusses the system by its operations for performing transactions, data analysis and interface displays
[0002] ... The system may be qualified and regulated as an exchange, as a broker-dealer trading system, as a
multilateral trading facility, and as an Alternative Trading System.
[0003] Automated securities trading systems are well known in the art, as are systems for automated bidding,
valuation, accreditation and exchange of securities. However, there has been a long-standing, well-recognized,
unmet need tor an automated, real ti me market for the exchange of restricted securities ....
[0009] The present invention effectively addresses and solves the aforementioned drawbacks, disadvantages and
limitations of the prior art, by providing a Restricted Shares Trading System (alternatively referred to herein as
"RSTS," and the "System") and corresponding computer-implemented methods for facilitating the dynamic
valuation and exchange of restricted securities in real time.
[0101] The present invention provides an automated, closed loop stock exchange system for trading restricted
securities in publically traded companies. The Restricted Shares Trading System (RSTS) (alternatively referred to
herein simply as the "System"), includes: (a) a system operator; (b) an automated bidder qualification means, wherein
a bidder is designated a qualified bidder upon meeting bidder qualification criteria set by the system operator; (c)
means for accepting and storing a submitted bid from the qualified bidder; (d) means for accepting and storing a sell
offer from a primary or secondary seller; (e) an automated bid and offer evaluation means, wherein the submitted bid
is evaluated against bid criteria set by the system operator; (f) an automated compliance means, wherein the
submitted bid and offer is evaluated against compliance criteria set by the system operator; (g) an automated
submitted bid and offer adjustment means, wherein the submitted bid and offer is modified pursuant to criteria set by
the system operator; (h) an automatic feedback means, wherein the qualified bidder, primary or secondary seller is
informed if the qualified submitted bid is accepted; (i) an automated feedback means, wherein investor; primary and
secondary seller are electronically alerted to status of their bid or offer pursuant to criteria set by the system operator;
(j) an automated feedback means wherein investor; primary and secondary seller are electronically alerted to the
presence and status of counter bids and offers pursuant to the criteria set by the system operate r; and (k) an
automatic transaction means to effectuate the accepted transaction.
[0112] ... the system determines eligibility by programming and utilizing modified parameters pertaining to investment
experience, risk tolerance, and income net worth. An investment screen is available for listing securities that are
currently available for investment by non-accredited investors (FIG. 88). The list also includes the number of
non-accredited investors that remain eligible to participate in the RS offering.
[0114] Issuer Dash board: Upon approval, the Issuer is provided with a password protected Account screen ...
Furthermore, the system is preferably programmed to automatically count down the number of non accredited
investors participating in a particular offering ... The regulations between these three "safe harbor" designations vary
somewhat; however, the system is programmed and otherwise configured, to automatically comply with respective
varying regulations ....
[0122] ... The system is contemplated to be programmed to reference qualifying factors and set trade parameters to
automatically comply with regulations with regard to counter party eligibility, offering, designation and resale (see FIG.
50 and FIG. 62) ... For example, if the investor is designated as part of a syndicate or related investment group, the
system may be programmed to automatically link the investors for purposes of Section 16compliance, as well as for
the purpose of disqualifying barred investors from purchasing specified restricted security offerings, in accordance
with issuer's request. ...
[0126] ... Documents are preferably automatically populated in accordance with trade data and personal information,
and cross-referenced rules and regulations programmed or otherwise integrated into the system ....
[0127] Non-compliant Offers: The system may automatically reject offers that fall outside programmed compliance
parameters for trading ....
[0157] Other embodiments of the present invention also include software, or program product stored on a tangible
computer memory media as a set of instructions, operable on a computer to cause the instructions to be executed by
the computer, and used to manage and operate the system as provided in the present invention.
The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is generic components and functions in the related arts. The claim is not patent eligible.
The remaining dependent claims—which impose additional limitations—also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 2-20 these dependent claim have also been reviewed with the same analysis as independent claim 1. Dependent claim 2 is directed toward applying a computer system to prompt an issuer user for information, compare information, determine results and propose exemption criteria offering complies and prompt issuer user to select proposed exemption – which as a whole is directed toward a receiving data for analysis and outputting the result and prompting a user to perform a commercial activity. Dependent claim 3 is directed toward receiving selection of exemption and monitor compliance- performing a commercial activity. Dependent claim 4 is directed toward disable user rights based on non-compliance – a commercial activity. Dependent claim 5 is directed toward monitoring investors, compare investors, determining number of investors reached and disable investor user to bid- applying technology for use in a commercial activity. Dependent claim 6 is directed toward applying technology to monitor compliance with exemption via review of data obtained from transfer agent- a commercial activity. Dependent claim 7 is directed toward applying technology to prompt user for information, compare information and commence monitoring based on compliance- a commercial activity. Dependence claim 8 is directed toward applying technology to disable user rights to proceed with an action that are non-compliant-commercial activity. Dependent Claim 9 is directed toward monitor investors, compare investors, disable investor ability to bid based on comparison result- commercial activity. Dependent claim 10 is directed toward monitoring compliance with exemption using computer system- commercial activity. Dependent claim 11 is directed toward determine offer prices – commercial activity. Dependent claim 12 is directed toward providing issuer options of determining prices of securities to a streaming price of security- commercial activity. Dependent claim 13 is directed toward applying a computer to determine liquidity coefficient of securities, input user selection of security for sale, display illiquid status and recommendation to base price and liquidity coefficient below threshold- commercial activity and risk mitigation. Dependent claim 14 is directed toward applying technology to determine offer price – commercial activity. Dependent claim 15 is directed toward display market depth screen showing bids- insignificant extra solution activity. Dependent claim 16 is directed toward compare offer prices, and based on results criteria cancel offer- commercial activity. Dependent 17 is directed toward applying technology to determine bid/offer prices- commercial activity. Dependent claim 18 is directed toward determine bid/offer prices – commercial activity. Dependent claim 19 is directed toward applying technology to provide user selectable parameters associated with bids/offers - - commercial activity. Dependent claim 20 is directed toward provide user selectable parameter of maximum/minimum price- commercial activity.
The dependent claim(s) have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 1. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims 2-20 are directed towards patent eligible subject matter, they are invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
In reference to Claims 21-32:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a Platform system, as in independent Claim 21 and the dependent claims. Such systems fall under the statutory category of "machine." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. The claimed invention is directed to an abstract idea without significantly more. The functions of system claim 1 recites operations (1) maintain securities offerings (2) provide data displays including quantity and price (3) receive offering criteria and store offering criteria (4) receive streaming updates of price quotes (5) determine offering prices of exempt offering securities (6) display determined offer prices (7) receive an offer to purchase/sell securities (8) determine for offer purchase/sell one of exempt offering securities (9) transmit purchase instructions (10) transfer securities in accordance with transaction or update account data or generate share certificate. The claimed limitations which under its broadest reasonable interpretation, covers performance of commercial activity and/or interaction. The specification makes clear that the focus of the invention relates to bidding securities exchanges in financial services industry for facilitating restricted securities transaction (para 0002). The specification discloses the problem to be solved is the placement and sale of restricted securities due to being restricted by regulatory authorities, transfer agents, dealers, clearing firms and/or by issuers of the interest itself. (para 0004-0006). Accordingly in light of the specification, the claimed subject matter when considered as a whole is directed toward overcoming the industry related restrictions for facilitating the exchange of information of restricted securities, valuation and transfer of interest. Such concepts can be found in the abstract category of commercial interactions. This concepts is enumerated in Section I of the 2019 revised patent subject matter eligibility guidance published in the federal register (84 FR 50) on January 7, 2019) is directed toward abstract category of methods of organizing human activity.
STEP 2A Prong 2: The identified judicial exception is not integrated into a practical application because the claims fail to provide indications of patent eligible subject matter that integrate the alleged abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a Platform comprising an electronic marketplace platform computer system; a network connection connecting the electronic marketplace platform computer system to a plurality of remote user-accessible devices having display capability, the electronic marketplace platform computer system maintaining a user category of offeror for at least some of the user-accessible devices and a user category of investor for at least some others of the user-accessible devices; a network connection connecting the electronic marketplace platform computer system to one or more sources of at least one of a plurality of price indications for one or more exempt-offering securities and further comprising an electronic marketplace platform computer system; a network connection connecting the electronic marketplace platform computer system to a plurality of remote user-accessible devices; a network connection connecting the electronic marketplace platform computer system in real time to one or more sources; one or more computer-processor readable memories of the electronic marketplace platform computer system storing offering criteria and third party system.
The claimed computer system applied to perform the operations of “receive…offering criteria…and store…offering criteria”, “receive…updates of price quotations…”, “display …offer prices”, “receive …offer to purchase/sell …securities”, “transmit…instructions to purchase…”, which according to the courts have been recognized when the computer functions are claimed in a merely generic manner (e.g., at a high level of generality) where technology is merely applied to perform the abstract idea or as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
The claim limitations (“receive…offering criteria…and store…offering criteria”, “receive…updates of price quotations…”, “display …offer prices”, “receive …offer to purchase/sell …securities”, “transmit…instructions to purchase…) are recited at a high level of generality without details of technical implementation and thus are insignificant extra solution activity.
The additional element “computer system” is further applied at a high level to “maintain…securities offerings” which is merely utilizing technology as a tool to store securities related data.
The additional element “computer system” is further applied to “provide …interactive data displays…permitting the issuers to determine offering criteria…” without any limitations provides information in a display by any known means for use related to trading activities.
The additional element “computer system” further applied to “determine…offer prices of …securities…”, “determine eligibility of parties…for offers to sell/purchase…” for evaluation and analysis for a trading activity lacking any technical details.
The additional element “third party system” applied to perform optional transaction activity of “transferring…securities”, “updating shareholder account data” or “generating a share certificate for ….securities”.
The claim limitations when considered individually fail to provide any indications of patent eligible subject matter when considered individually, according to MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h).
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological environment.
When the claims are taken as an ordered combination or as a whole, the combination of limitations, the combination of limitations 1-2 and 3-4 are not directed toward the computer system itself or any of the functionality of the platform claim, but instead directed toward applying a computer system as a tool to maintain, provide and receive data related to security transactions. The combination of limitations 1-4 and 5-6 are not directed toward the computer system itself or any of the functionality of the platform claim or any other technology, but instead directed toward applying a computer system as a tool to analyze/determine offer prices and display the prices received from operations 1-4. The combination of limitations 1-6 and 7-9 performed by the “computer system” are not directed toward the computer system itself or any of the functionality of the platform claim or any other technology, but instead directed toward applying a computer system as a tool to receive purchase/sell offer and transmit to a third party system based on determined eligibility of transaction parties instructions to perform the transaction. The limitations 1-9 are therefore directed toward a transaction process. The combination of limitations 1-9 performed by the computer system and 10 performed by the third party system are directed toward the third party system in response to the transaction process performed by limitations 1-9 by the computer system to perform options of transferring securities, updating account data for securities or generate share certificate of securities which is further performing transactions between buyers and sellers of a computer platform and third party system. When considered as a whole or ordered combination the combination of limitations 1-10is directed toward a commercial activity.
The combinations of parts is not directed toward any of the indications of patent eligible subject matter under step 2A prong 2, but instead to perform a transaction. MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h). The claim limitations as a whole, as an ordered combination and the combination of steps not integrate the judicial exception into a practical application as the claim process fails to impose meaningful limits upon the abstract idea. This is because the claimed subject matter fails to provide additional elements or combination or elements that go beyond applying technology as a tool to perform the identified abstract idea. The functions recited by the computer system in the claims recite the concept of a commercial activity. The claim limitations and specification lacks technical disclosure on what the technical problem was and how the claimed limitations provide a technical solution to a technical problem rather than a solution to a problem found in the abstract idea. Taking the claim elements separately, or as a combination, the operation performed by the computer system at each step of the process is purely in terms of results desired and devoid of implementation of details. Technology is not integral to the process as the claimed subject matter is so high level that any generic programming could be applied and the functions could be performed by any known means. Furthermore, the claimed functions do not provide an operation that could be considered as sufficient to provide a technological implementation or application of/or improvement to this concept (i.e. integrated into a practical application).
The integration of elements do not improve upon technology or improve upon computer functionality or capability in how computers carry out one of their basic functions. The integration of elements do not provide a process that allows computers to perform functions that previously could not be performed. The integration of elements do not provide a process which applies a relationship to apply a new way of using an application. The limitations do not recite a specific use machine or the transformation of an article to a different state or thing. The limitations do not provide other meaningful limits beyond generally linking the use of the abstract idea to a particular technological environment. The resource claimed performing the steps is merely a “field of use” application of technology. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments apply what generic computer functionality in the related arts. The steps are still a combination made to perform a financial activity and does not provide any of the determined indications of patent eligibility set forth in the 2019 USPTO 101 guidance. The additional steps only add to those abstract ideas using generic functions, and the claims do not show improved ways of, for example, an particular technical function for performing the abstract idea that imposes meaningful limits upon the abstract idea. Moreover, Examiner was not able to identify any specific technological processes that goes beyond merely confining the abstract idea in a particular technological environment, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified.
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim provides no technical details regarding how the operations performed by the “computer system” or “third party system”. Instead, similar to the claims at issue in Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017), “the claim language . . . provides only a result-oriented solution with insufficient detail for how a computer accomplishes it. Our law demands more.” Intellectual Ventures, 850 F.3d at 1342 (citing Elec. Power Grp. LLC v. Alstom, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)). The claim is directed to an abstract idea
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a Platform comprising an electronic marketplace platform computer system; a network connection connecting the electronic marketplace platform computer system to a plurality of remote user-accessible devices having display capability, the electronic marketplace platform computer system maintaining a user category of offeror for at least some of the user-accessible devices and a user category of investor for at least some others of the user-accessible devices; a network connection connecting the electronic marketplace platform computer system to one or more sources of at least one of a plurality of price indications for one or more exempt-offering securities and further comprising an electronic marketplace platform computer system; a network connection connecting the electronic marketplace platform computer system to a plurality of remote user-accessible devices; a network connection connecting the electronic marketplace platform computer system in real time to one or more sources; one or more computer-processor readable memories of the electronic marketplace platform computer system storing offering criteria and third party system.
Taking the claim elements separately, the function performed by the computer system at each part of the process is purely conventional. Using a computer system to perform the operations “maintain…offerings”, “provide…interactive data displays…”, “receive…offering criteria…and store …offering criteria”, “receive …updates of price quotations”, “determine…offer prices…of securities”, “display….offer prices”, “receive…offer to purchase/sell securities”, “determine eligibility of parties to sell/purchase offers”, “transmit instructions… to purchase transaction”, ----are some of the most basic functions of a computer. The additional element third party system is applied to perform the optional operations of “transfer assets”, “update account data” or “generate share certificate for securities”. The operations of the computing system and the third party system are high level without any details as to technical implementation. According to Alice, additional computer elements which are equivalent to “apply it” with an abstract idea are not enough to qualify as “significantly more”. The current limitation merely provide an environment to implement the abstract idea on a computer or requiring no more than a generic compute to perform generic computer functions that are well understood activities known to the industry. As a result, none of the hardware recited by the system claims offers a meaningful limitation beyond generally linking the use of the method to a particular technological environment, that is, implementation via computers... . The claim limitations do not recite that any of the “devices” perform more than a high level generic function ... . None of the limitations recite technological implementation details for any of these steps, but instead recite only results desired to be achieved by any and all possible means... . Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
The operations of the Platform computer system are employed in a customary
manner and do not improve any underlying technology or provide a particular technical process or any particular arrangement of elements directed toward more than implementing a sales activity. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. The additional sales activity performed by the computer including maintain securities offering, receiving functions for purchase/sale securities, display data, transmit instructions to purchase/sell securities is directed toward insignificant extra solutions activity. MPEP 2106.05 II, MPEP 2106.05 (d) II. The computer system of Claim 21 and its functions provides no technical details regarding how the claimed transaction operations are performed.
When the claims are taken as a whole, as an ordered combination, the combination of steps does not add “significantly more” by virtue of considering the steps as a whole, as an ordered combination. As discussed above, the combination of
maintain data, receiving price data, determining price data and displaying the data,
similar to Electric Power Group is conventional application of technology. The
receiving, transmitting and transferring is mere data gathering and outputting recited at
a high level of generality and thus are insignificant extra solution activity. All of these
computer functions are generic, routine, conventional computer activities that are
performed only for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms “maintain”, “provide”, “receive”, “determine”, “display”, “transmit”, “transfer” or update” or “generate share certificate” ... are functions can be achieved by any general purpose computer without special programming". None of these activities are used in some unconventional manner nor do any produce some unexpected result. The limitations as a combination are not directed toward a particular technological technique.
As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. Invest Pic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Applicant’s claimed functions add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis modification-transmission is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited as an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. The analysis concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception.
According to 2106.05 well-understood and routine processes to perform the abstract idea is not sufficient to transform the claim into patent eligibility. As evidence the examiner provides:
The specification discloses how the system is applied without details of any technical
process or specific unconventional structure, instead discusses the system by its
operations for performing transactions, data analysis and interface displays
[0002] ... The system may be qualified and regulated as an exchange, as a broker-dealer trading system, as a
multilateral trading facility, and as an Alternative Trading System.
[0003] Automated securities trading systems are well known in the art, as are systems for automated bidding,
valuation, accreditation and exchange of securities. However, there has been a long-standing, well-recognized,
unmet need tor an automated, real ti me market for the exchange of restricted securities ....
[0009] The present invention effectively addresses and solves the aforementioned drawbacks, disadvantages and
limitations of the prior art, by providing a Restricted Shares Trading System (alternatively referred to herein as
"RSTS," and the "System") and corresponding computer-implemented methods for facilitating the dynamic
valuation and exchange of restricted securities in real time.
[0101] The present invention provides an automated, closed loop stock exchange system for trading restricted
securities in publically traded companies. The Restricted Shares Trading System (RSTS) (alternatively referred to
herein simply as the "System"), includes: (a) a system operator; (b) an automated bidder qualification means, wherein
a bidder is designated a qualified bidder upon meeting bidder qualification criteria set by the system operator; (c)
means for accepting and storing a submitted bid from the qualified bidder; (d) means for accepting and storing a sell
offer from a primary or secondary seller; (e) an automated bid and offer evaluation means, wherein the submitted bid
is evaluated against bid criteria set by the system operator; (f) an automated compliance means, wherein the
submitted bid and offer is evaluated against compliance criteria set by the system operator; (g) an automated
submitted bid and offer adjustment means, wherein the submitted bid and offer is modified pursuant to criteria set by
the system operator; (h) an automatic feedback means, wherein the qualified bidder, primary or secondary seller is
informed if the qualified submitted bid is accepted; (i) an automated feedback means, wherein investor; primary and
secondary seller are electronically alerted to status of their bid or offer pursuant to criteria set by the system operator;
(j) an automated feedback means wherein investor; primary and secondary seller are electronically alerted to the
presence and status of counter bids and offers pursuant to the criteria set by the system operate r; and (k) an
automatic transaction means to effectuate the accepted transaction.
[0112] ... the system determines eligibility by programming and utilizing modified parameters pertaining to investment
experience, risk tolerance, and income net worth. An investment screen is available for listing securities that are
currently available for investment by non-accredited investors (FIG. 88). The list also includes the number of
non-accredited investors that remain eligible to participate in the RS offering.
[0114] Issuer Dash board: Upon approval, the Issuer is provided with a password protected Account screen ...
Furthermore, the system is preferably programmed to automatically count down the number of non accredited
investors participating in a particular offering ... The regulations between these three "safe harbor" designations vary
somewhat; however, the system is programmed and otherwise configured, to automatically comply with respective
varying regulations ....
[0122] ... The system is contemplated to be programmed to reference qualifying factors and set trade parameters to
automatically comply with regulations with regard to counter party eligibility, offering, designation and resale (see FIG.
50 and FIG. 62) ... For example, if the investor is designated as part of a syndicate or related investment group, the
system may be programmed to automatically link the investors for purposes of Section 16compliance, as well as for
the purpose of disqualifying barred investors from purchasing specified restricted security offerings, in accordance
with issuer's request. ...
[0126] ... Documents are preferably automatically populated in accordance with trade data and personal information,
and cross-referenced rules and regulations programmed or otherwise integrated into the system ....
[0127] Non-compliant Offers: The system may automatically reject offers that fall outside programmed compliance
parameters for trading ....
[0157] Other embodiments of the present invention also include software, or program product stored on a tangible
computer memory media as a set of instructions, operable on a computer to cause the instructions to be executed by
the computer, and used to manage and operate the system as provided in the present invention.
The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is generic components and functions in the related arts. The claim is not patent eligible.
The remaining dependent claims—which impose additional limitations—also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 22-32 these dependent claim have also been reviewed with the same analysis as independent claim 21. Dependent claim 22 is directed toward price indications of securities and determining offer prices of securities- a commercial activity. Dependent claim 23 is directed toward determine offer/bid prices - performing a commercial activity. Dependent claim 24 is directed generate and display price index – a commercial activity. Dependent claim 25 is directed toward limiting the shares traded- a commercial activity. Dependent claim 26 is directed toward applying technology to placing securities offering to a securities exemption, reselling previously acquired securities, an insider of issuer, or control party of issuer- a commercial activity. Dependent claim 27 is directed toward price indications- a commercial activity. Dependence 28 is directed toward applying technology to receive counter offer, communicate counter offer, receive counter offer response, transmit instructions- insignificant extra solution activity. Dependent 29 is directed toward determine liquidity coefficient , determination liquidity coefficient below threshold, recommend offer price - commercial activity. Dependent claim 30 is directed toward price quotations- commercial activity. Dependent claim 31 is directed toward price quotations – commercial activity. Dependent claim 32 is directed toward placing securities exemption or an offeror- commercial activity.
The dependent claim(s) have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 21. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims 22-30 are directed towards patent eligible subject matter, they are invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
In reference to Claim(s) 33-35:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a marketplace system, as in independent Claim 33 and the dependent claims. Such systems fall under the statutory category of "machine." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. The claimed invention is directed to an abstract idea without significantly more. The functions of system claim 33 recites operations (1) receive offering criteria (2) display bid and offer prices (3) receive purchase/sell instructions (4) determine eligibility of investors (5) generate matched transaction record (6) transmit matched transaction record. The claimed limitations which under its broadest reasonable interpretation, covers performance of commercial activity. The specification makes clear that the focus of the invention relates to bidding securities exchanges in financial services industry for facilitating restricted securities transaction (para 0002). The specification discloses the problem to be solved is the placement and sale of restricted securities due to being restricted by regulatory authorities, transfer agents, dealers, clearing firms and/or by issuers of the interest itself. (para 0004-0006). Accordingly in light of the specification, the claimed subject matter when considered as a whole is directed toward overcoming the industry related restrictions for facilitating a transaction process. Such concepts can be found in the abstract category of commercial interactions. This concepts is enumerated in Section I of the 2019 revised patent subject matter eligibility guidance published in the federal register (84 FR 50) on January 7, 2019) is directed toward abstract category of methods of organizing human activity.
STEP 2A Prong 2: The identified judicial exception is not integrated into a practical application because the claims fail to provide indications of patent eligible subject matter that integrate the alleged abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a marketplace system comprising: a platform computer system connected via a communications network to a plurality of remote user devices operated by investors and offerors of securities; one or more processors and computer-readable memory storing instructions
The claimed computer system applied to perform the operations of “receive…offering parameters”, “receive…purchase or sale instructions…”, “transmit…transaction record…”, which according to the courts have been recognized when the computer functions are claimed in a merely generic manner (e.g., at a high level of generality) where technology is merely applied to perform the abstract idea or as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
The claim limitations “receive…offering parameters”, “receive…purchase or sale instructions…”, “transmit…transaction record…” are recited at a high level of generality without details of technical implementation and thus are insignificant extra solution activity.
The additional element “computer system” is further applied at a high level to “determine eligibility of each investor” which is merely utilizing technology as a tool to analyze transaction related data.
The additional element “computer system” is further applied at a high level to “generate a matched transaction record”
The claim limitations when considered individually fail to provide any indications of patent eligible subject matter when considered individually, according to MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h).
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological environment.
When the claims are taken as an ordered combination or as a whole, the combination of limitations, the combination of limitations 1-2 are not directed toward the computer system itself or any of the functionality of the platform claim, but instead directed toward applying a computer system as a tool to receive offering parameters and display bid/offer price indications. The combination of limitations 1-2 and 3-4 are not directed toward the computer system itself or any of the functionality of the platform claim or any other technology, but instead directed toward applying a computer system as a tool to receive purchase/sale instructions and determine investor eligibility prior art order execution related to the pricing indications and parameters of limitations 1-2. The combination of limitations 1-4 and 5-6 performed by the “computer system” are not directed toward the computer system itself or any of the functionality of the platform claim or any other technology, but instead directed toward applying a computer system as a tool to generate a matched transaction record based on the eligibility determination and pricing indications of limitations 1-4 and transmit the record to update ownership record book. When considered as a whole or ordered combination the combination of limitations 1-6 is directed toward a commercial activity.
The combinations of parts is not directed toward any of the indications of patent eligible subject matter under step 2A prong 2, but instead to perform a transaction. MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h). The claim limitations as a whole, as an ordered combination and the combination of steps not integrate the judicial exception into a practical application as the claim process fails to impose meaningful limits upon the abstract idea. . This is because the claimed subject matter fails to provide additional elements or combination or elements that go beyond applying technology as a tool to perform the identified abstract idea. The functions recited by the computer system in the claims recite the concept of a commercial activity. The claim limitations and specification lacks technical disclosure on what the technical problem was and how the claimed limitations provide a technical solution to a technical problem rather than a solution to a problem found in the abstract idea. Taking the claim elements separately, or as a combination, the operation performed by the computer system at each step of the process is purely in terms of results desired and devoid of implementation of details. Technology is not integral to the process as the claimed subject matter is so high level that any generic programming could be applied and the functions could be performed by any known means. Furthermore, the claimed functions do not provide an operation that could be considered as sufficient to provide a technological implementation or application of/or improvement to this concept (i.e. integrated into a practical application).
The integration of elements do not improve upon technology or improve upon computer functionality or capability in how computers carry out one of their basic functions. The integration of elements do not provide a process that allows computers to perform functions that previously could not be performed. The integration of elements do not provide a process which applies a relationship to apply a new way of using an application. The limitations do not recite a specific use machine or the transformation of an article to a different state or thing. The limitations do not provide other meaningful limits beyond generally linking the use of the abstract idea to a particular technological environment. The resource claimed performing the steps is merely a “field of use” application of technology. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments apply what generic computer functionality in the related arts. The steps are still a combination made to perform a financial activity and does not provide any of the determined indications of patent eligibility set forth in the 2019 USPTO 101 guidance. The additional steps only add to those abstract ideas using generic functions, and the claims do not show improved ways of, for example, an particular technical function for performing the abstract idea that imposes meaningful limits upon the abstract idea. Moreover, Examiner was not able to identify any specific technological processes that goes beyond merely confining the abstract idea in a particular technological environment, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim provides no technical details regarding how the operations performed by the “computer system”. Instead, similar to the claims at issue in Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017), “the claim language . . . provides only a result-oriented solution with insufficient detail for how a computer accomplishes it. Our law demands more.” Intellectual Ventures, 850 F.3d at 1342 (citing Elec. Power Grp. LLC v. Alstom, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)). The claim is directed to an abstract idea
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a marketplace system comprising: a platform computer system connected via a communications network to a plurality of remote user devices operated by investors and offerors of securities; one or more processors and computer-readable memory storing instructions.
Taking the claim elements separately, the function performed by the computer system at each part of the process is purely conventional. Using a computer system to perform the operations “receive…parameters”, “display bid/offer price”, “receive purchase/sale instructions”, “determine eligibility of investors”, “generate matched transaction record”, “transmit matched transaction record””, ----are some of the most basic functions of a computer. The operations of the computing system are high level without any details as to technical implementation. According to Alice, additional computer elements which are equivalent to “apply it” with an abstract idea are not enough to qualify as “significantly more”. The current limitation merely provide an environment to implement the abstract idea on a computer or requiring no more than a generic compute to perform generic computer functions that are well understood activities known to the industry. As a result, none of the hardware recited by the system claims offers a meaningful limitation beyond generally linking the use of the method to a particular technological environment, that is, implementation via computers. .. . The claim limitations do not recite that any of the “devices” perform more than a high level generic function ... . None of the limitations recite technological implementation details for any of these steps, but instead recite only results desired to be achieved by any and all possible means. .. . Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
The operations of the claimed computer system are employed in a customary
manner and do not improve any underlying technology or provide a particular technical process or any particular arrangement of elements directed toward more than implementing a sales activity. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. The additional sales activity performed by the computer including maintain securities offering, receiving functions for purchase/sale securities, display data, transmit instructions to purchase/sell securities is directed toward insignificant extra solutions activity. MPEP 2106.05 II, MPEP 2106.05 (d) II. The computer system of Claim 33 and its functions provides no technical details regarding how the claimed transaction operations are performed.
When the claims are taken as a whole, as an ordered combination, the combination of steps does not add “significantly more” by virtue of considering the steps as a whole, as an ordered combination. As discussed above, the combination of “receiving offering parameters”, “display aggregated bid/offer price indications”, “receive purchase/sale instructions”, “determine eligibility of investors”, “generate matched transaction record” and “transmit matched transaction record”, similar to Electric Power Group is conventional application of technology. The receive, display and transmit is mere data gathering and outputting recited at a high level of generality and thus are insignificant extra solution activity. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses.See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms “receive”, “determine”, “display”, “transmit”, “generate” ... are functions can be achieved by any general purpose computer without special programming". None of these activities are used in some unconventional manner nor do any produce some unexpected result. The limitations as a combination are not directed toward a particular technological technique.
As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. Invest Pic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Applicant’s claimed functions add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis modification-transmission is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited as an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. The analysis concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception.
According to 2106.05 well-understood and routine processes to perform the abstract idea is not sufficient to transform the claim into patent eligibility. As evidence the examiner provides:
The specification discloses how the system is applied without details of any technical process or specific unconventional structure, instead discusses the system by its operations for performing transactions, data analysis and interface displays
[0002] ... The system may be qualified and regulated as an exchange, as a broker-dealer trading system, as a
multilateral trading facility, and as an Alternative Trading System.
[0003] Automated securities trading systems are well known in the art, as are systems for automated bidding,
valuation, accreditation and exchange of securities. However, there has been a long-standing, well-recognized,
unmet need tor an automated, real ti me market for the exchange of restricted securities ....
[0009] The present invention effectively addresses and solves the aforementioned drawbacks, disadvantages and
limitations of the prior art, by providing a Restricted Shares Trading System (alternatively referred to herein as
"RSTS," and the "System") and corresponding computer-implemented methods for facilitating the dynamic
valuation and exchange of restricted securities in real time.
[0101] The present invention provides an automated, closed loop stock exchange system for trading restricted
securities in publically traded companies. The Restricted Shares Trading System (RSTS) (alternatively referred to
herein simply as the "System"), includes: (a) a system operator; (b) an automated bidder qualification means, wherein
a bidder is designated a qualified bidder upon meeting bidder qualification criteria set by the system operator; (c)
means for accepting and storing a submitted bid from the qualified bidder; (d) means for accepting and storing a sell
offer from a primary or secondary seller; (e) an automated bid and offer evaluation means, wherein the submitted bid
is evaluated against bid criteria set by the system operator; (f) an automated compliance means, wherein the
submitted bid and offer is evaluated against compliance criteria set by the system operator; (g) an automated
submitted bid and offer adjustment means, wherein the submitted bid and offer is modified pursuant to criteria set by
the system operator; (h) an automatic feedback means, wherein the qualified bidder, primary or secondary seller is
informed if the qualified submitted bid is accepted; (i) an automated feedback means, wherein investor; primary and
secondary seller are electronically alerted to status of their bid or offer pursuant to criteria set by the system operator;
(j) an automated feedback means wherein investor; primary and secondary seller are electronically alerted to the
presence and status of counter bids and offers pursuant to the criteria set by the system operate r; and (k) an
automatic transaction means to effectuate the accepted transaction.
[0112] ... the system determines eligibility by programming and utilizing modified parameters pertaining to investment
experience, risk tolerance, and income net worth. An investment screen is available for listing securities that are
currently available for investment by non-accredited investors (FIG. 88). The list also includes the number of
non-accredited investors that remain eligible to participate in the RS offering.
[0114] Issuer Dash board: Upon approval, the Issuer is provided with a password protected Account screen ...
Furthermore, the system is preferably programmed to automatically count down the number of non accredited
investors participating in a particular offering ... The regulations between these three "safe harbor" designations vary
somewhat; however, the system is programmed and otherwise configured, to automatically comply with respective
varying regulations ....
[0122] ... The system is contemplated to be programmed to reference qualifying factors and set trade parameters to
automatically comply with regulations with regard to counter party eligibility, offering, designation and resale (see FIG.
50 and FIG. 62) ... For example, if the investor is designated as part of a syndicate or related investment group, the
system may be programmed to automatically link the investors for purposes of Section 16compliance, as well as for
the purpose of disqualifying barred investors from purchasing specified restricted security offerings, in accordance
with issuer's request. ...
[0126] ... Documents are preferably automatically populated in accordance with trade data and personal information,
and cross-referenced rules and regulations programmed or otherwise integrated into the system ....
[0127] Non-compliant Offers: The system may automatically reject offers that fall outside programmed compliance
parameters for trading ....
[0157] Other embodiments of the present invention also include software, or program product stored on a tangible
computer memory media as a set of instructions, operable on a computer to cause the instructions to be executed by
the computer, and used to manage and operate the system as provided in the present invention.
The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is generic components and functions in the related arts. The claim is not patent eligible.
The remaining dependent claims—which impose additional limitations—also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 34-35 these dependent claim have also been reviewed with the same analysis as independent claim 33. Dependent claim 34 is directed toward applying a computer system to limit the offeror to an issuer placing securities or an offeror other than the issuer – which as a whole is directed toward a commercial activity. Dependent claim 35 is directed toward deriving form a price index price indications- a commercial activity
The dependent claim(s) have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 33. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims 34-35 are directed towards patent eligible subject matter, they are invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
In reference to Claims 36-37:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a method, as in independent Claim 36 and the dependent claim 37. Such methods fall under the statutory category of "process." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. The claimed invention is directed to an abstract idea without significantly more. The steps of method claim 36 recite (1) receiving offering criteria (2) generating and display bid and offer price indications (3) receiving purchase/sell instructions (4) performing multi-factor eligibility verification of investor (5) generate matched transaction record (6) transmitting matched transaction record. The claimed limitations which under its broadest reasonable interpretation, covers performance of commercial activity. The specification makes clear that the focus of the invention relates to bidding securities exchanges in financial services industry for facilitating restricted securities transaction (para 0002). The specification discloses the problem to be solved is the placement and sale of restricted securities due to being restricted by regulatory authorities, transfer agents, dealers, clearing firms and/or by issuers of the interest itself. (para 0004-0006). Accordingly in light of the specification, the claimed subject matter when considered as a whole is directed toward overcoming the industry related restrictions for facilitating a transaction process. Such concepts can be found in the abstract category of commercial interactions. This concepts is enumerated in Section I of the 2019 revised patent subject matter eligibility guidance published in the federal register (84 FR 50) on January 7, 2019) is directed toward abstract category of methods of organizing human activity.
STEP 2A Prong 2: The identified judicial exception is not integrated into a practical application because the claims fail to provide indications of patent eligible subject matter that integrate the alleged abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a platform computer system, remote investor devices and settlement system.
The claimed platform computer system applied to perform method step “receiving…offering parameters” and “transmitting matched transaction record”. The additional element “remote investor device” “generating and displaying …price indications” and “receiving…purchase/sale instructions ”, which according to the courts have been recognized when the computer functions are claimed in a merely generic manner (e.g., at a high level of generality) where technology is merely applied to perform the abstract idea or as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
The claim limitations ““receiving…offering parameters” and “transmitting matched transaction record”, “remote investor device” “generating and displaying …price indications” and “receiving…purchase/sale instructions ”are recited at a high level of generality without details of technical implementation and thus are insignificant extra solution activity.
The additional element “computer system” is further applied at a high level to perform the steps “performing multi-factor eligibility verification for each investor” and “generating matched transaction record” which is merely utilizes technology as a tool to analyze and verify transaction related data.
The claim limitations when considered individually fail to provide any indications of patent eligible subject matter when considered individually, according to MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h).
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological environment.
When the claims are taken as an ordered combination or as a whole, the combination of limitations, the combination of limitations 1-2 are not directed toward the computer system itself or any of the functionality of the platform claim, but instead directed toward applying a computer system as a tool to receive offering parameters and generating and displaying bid/offer price indications for use in a transaction process . The combination of limitations 1-2 and 3-4 are not directed toward the computer system itself or any of the functionality of the platform claim or any other technology, but instead directed toward applying a computer system as a tool receiving purchase/sale instructions and performing eligibility verification for investor related to data from limitations 1-2. The combination of limitations 1-4 and 5-6 performed by the “computer system” are not directed toward the computer system itself or any of the functionality of the platform claim or any other technology, but instead directed toward applying a computer system as a tool to generate and transmit matched transaction record based on the eligibility determination and pricing indications of limitations 1-4.
The combinations of parts is not directed toward any of the indications of patent eligible subject matter under step 2A prong 2, but instead to perform a transaction. MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h). The claim limitations as a whole, as an ordered combination and the combination of steps not integrate the judicial exception into a practical application as the claim process fails to impose meaningful limits upon the abstract idea. . This is because the claimed subject matter fails to provide additional elements or combination or elements that go beyond applying technology as a tool to perform the identified abstract idea. The functions recited by the computer system in the claims recite the concept of a commercial activity. The claim limitations and specification lacks technical disclosure on what the technical problem was and how the claimed limitations provide a technical solution to a technical problem rather than a solution to a problem found in the abstract idea. Taking the claim elements separately, or as a combination, the operation performed by the computer system at each step of the process is purely in terms of results desired and devoid of implementation of details. Technology is not integral to the process as the claimed subject matter is so high level that any generic programming could be applied and the functions could be performed by any known means. Furthermore, the claimed functions do not provide an operation that could be considered as sufficient to provide a technological implementation or application of/or improvement to this concept (i.e. integrated into a practical application).
The integration of elements do not improve upon technology or improve upon computer functionality or capability in how computers carry out one of their basic functions. The integration of elements do not provide a process that allows computers to perform functions that previously could not be performed. The integration of elements do not provide a process which applies a relationship to apply a new way of using an application. The limitations do not recite a specific use machine or the transformation of an article to a different state or thing. The limitations do not provide other meaningful limits beyond generally linking the use of the abstract idea to a particular technological environment. The resource claimed performing the steps is merely a “field of use” application of technology. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments apply what generic computer functionality in the related arts. The steps are still a combination made to perform a financial activity and does not provide any of the determined indications of patent eligibility set forth in the 2019 USPTO 101 guidance. The additional steps only add to those abstract ideas using generic functions, and the claims do not show improved ways of, for example, an particular technical function for performing the abstract idea that imposes meaningful limits upon the abstract idea. Moreover, Examiner was not able to identify any specific technological processes that goes beyond merely confining the abstract idea in a particular technological environment, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim provides no technical details regarding how the operations performed by the “computer system”. Instead, similar to the claims at issue in Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017), “the claim language . . . provides only a result-oriented solution with insufficient detail for how a computer accomplishes it. Our law demands more.” Intellectual Ventures, 850 F.3d at 1342 (citing Elec. Power Grp. LLC v. Alstom, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)). The claim is directed to an abstract idea
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a platform computer system, remote investor devices and settlement system.
Taking the claim elements separately, the function performed by the computer system at each part of the process is purely conventional. Using a computer system to perform the method steps “receive…parameters”, “receive purchase/sale instructions”, “performing verification of investors”, “generate matched transaction record”, “transmit matched transaction record” and the additional element “remote investor devices” applied to perform the step “generating and displaying”, ----are some of the most basic functions of a computer. The method steps perform by the computing system are high level without any details as to technical implementation. According to Alice, additional computer elements which are equivalent to “apply it” with an abstract idea are not enough to qualify as “significantly more”. The current limitation merely provide an environment to implement the abstract idea on a computer or requiring no more than a generic compute to perform generic computer functions that are well understood activities known to the industry. As a result, none of the hardware recited by the system claims offers a meaningful limitation beyond generally linking the use of the method to a particular technological environment, that is, implementation via computers. .. . The claim limitations do not recite that any of the “computer system” or “devices” perform more than a high level generic function ... . None of the limitations recite technological implementation details for any of these steps, but instead recite only results desired to be achieved by any and all possible means. .. . Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
The operations of the claimed computer system are employed in a customary
manner and do not improve any underlying technology or provide a particular technical process or any particular arrangement of elements directed toward more than implementing a sales activity. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. The additional sales activity performed by the computer including receiving, generating/displaying, multifactor eligibility verification, generating matched transaction record and transmitted matched transaction record is directed toward insignificant extra solutions activity. MPEP 2106.05 II, MPEP 2106.05 (d) II. The computer system of Claim 33 and its functions provides no technical details regarding how the claimed transaction operations are performed.
When the claims are taken as a whole, as an ordered combination, the combination of steps does not add “significantly more” by virtue of considering the steps as a whole, as an ordered combination. As discussed above, the combination of “receiving offering parameters”, “display aggregated bid/offer price indications”, “receive purchase/sale instructions”, “performing verification of investors”, “generate matched transaction record” and “transmit matched transaction record”, similar to Electric Power Group is conventional application of technology. The receive, display and transmit is mere data gathering and outputting recited at a high level of generality and thus are insignificant extra solution activity. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses.See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms “ “receive”, “determine”, “display”, “transmit”, “generate” ... are functions can be achieved by any general purpose computer without special programming". None of these activities are used in some unconventional manner nor do any produce some unexpected result. The limitations as a combination are not directed toward a particular technological technique.
As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. Invest Pic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Applicant’s claimed functions add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis modification-transmission is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited as an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. The analysis concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception.
According to 2106.05 well-understood and routine processes to perform the abstract idea is not sufficient to transform the claim into patent eligibility. As evidence the examiner provides:
The specification discloses how the system is applied without details of any technical process or specific unconventional structure, instead discusses the system by its operations for performing transactions, data analysis and interface displays
[0002] ... The system may be qualified and regulated as an exchange, as a broker-dealer trading system, as a
multilateral trading facility, and as an Alternative Trading System.
[0003] Automated securities trading systems are well known in the art, as are systems for automated bidding,
valuation, accreditation and exchange of securities. However, there has been a long-standing, well-recognized,
unmet need tor an automated, real ti me market for the exchange of restricted securities ....
[0009] The present invention effectively addresses and solves the aforementioned drawbacks, disadvantages and
limitations of the prior art, by providing a Restricted Shares Trading System (alternatively referred to herein as
"RSTS," and the "System") and corresponding computer-implemented methods for facilitating the dynamic
valuation and exchange of restricted securities in real time.
[0101] The present invention provides an automated, closed loop stock exchange system for trading restricted
securities in publically traded companies. The Restricted Shares Trading System (RSTS) (alternatively referred to
herein simply as the "System"), includes: (a) a system operator; (b) an automated bidder qualification means, wherein
a bidder is designated a qualified bidder upon meeting bidder qualification criteria set by the system operator; (c)
means for accepting and storing a submitted bid from the qualified bidder; (d) means for accepting and storing a sell
offer from a primary or secondary seller; (e) an automated bid and offer evaluation means, wherein the submitted bid
is evaluated against bid criteria set by the system operator; (f) an automated compliance means, wherein the
submitted bid and offer is evaluated against compliance criteria set by the system operator; (g) an automated
submitted bid and offer adjustment means, wherein the submitted bid and offer is modified pursuant to criteria set by
the system operator; (h) an automatic feedback means, wherein the qualified bidder, primary or secondary seller is
informed if the qualified submitted bid is accepted; (i) an automated feedback means, wherein investor; primary and
secondary seller are electronically alerted to status of their bid or offer pursuant to criteria set by the system operator;
(j) an automated feedback means wherein investor; primary and secondary seller are electronically alerted to the
presence and status of counter bids and offers pursuant to the criteria set by the system operate r; and (k) an
automatic transaction means to effectuate the accepted transaction.
[0112] ... the system determines eligibility by programming and utilizing modified parameters pertaining to investment
experience, risk tolerance, and income net worth. An investment screen is available for listing securities that are
currently available for investment by non-accredited investors (FIG. 88). The list also includes the number of
non-accredited investors that remain eligible to participate in the RS offering.
[0114] Issuer Dash board: Upon approval, the Issuer is provided with a password protected Account screen ...
Furthermore, the system is preferably programmed to automatically count down the number of non accredited
investors participating in a particular offering ... The regulations between these three "safe harbor" designations vary
somewhat; however, the system is programmed and otherwise configured, to automatically comply with respective
varying regulations ....
[0122] ... The system is contemplated to be programmed to reference qualifying factors and set trade parameters to
automatically comply with regulations with regard to counter party eligibility, offering, designation and resale (see FIG.
50 and FIG. 62) ... For example, if the investor is designated as part of a syndicate or related investment group, the
system may be programmed to automatically link the investors for purposes of Section 16compliance, as well as for
the purpose of disqualifying barred investors from purchasing specified restricted security offerings, in accordance
with issuer's request. ...
[0126] ... Documents are preferably automatically populated in accordance with trade data and personal information,
and cross-referenced rules and regulations programmed or otherwise integrated into the system ....
[0127] Non-compliant Offers: The system may automatically reject offers that fall outside programmed compliance
parameters for trading ....
[0157] Other embodiments of the present invention also include software, or program product stored on a tangible
computer memory media as a set of instructions, operable on a computer to cause the instructions to be executed by
the computer, and used to manage and operate the system as provided in the present invention.
The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is generic components and functions in the related arts. The claim is not patent eligible.
The remaining dependent claims—which impose additional limitations—also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 37 this dependent claim have also been reviewed with the same analysis as independent claim 36. Dependent claim 37 is directed toward limiting the offeror comprising one of an issuer placing offering securities or other offeror- commercial interactions.
The dependent claim(s) have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 36. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims 37 is directed towards patent eligible subject matter, they are invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
In reference to Claim(s) 38-39:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a non-transitory computer readable medium storing instructions, as in independent Claim 38 and the dependent claim 39. Such mediums fall under the statutory category of "manufacture." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. The claimed invention is directed to an abstract idea without significantly more. The executed instructions of medium claim 38 recite (1) receive offering criteria (2) calculate and display bid and offer price indications (3) receive purchase/sell instructions (4) determine investor eligibility (5) generate transaction confirmation record (6) transmit matched transaction record. The claimed limitations which under its broadest reasonable interpretation, covers performance of commercial activity. The specification makes clear that the focus of the invention relates to bidding securities exchanges in financial services industry for facilitating restricted securities transaction (para 0002). The specification discloses the problem to be solved is the placement and sale of restricted securities due to being restricted by regulatory authorities, transfer agents, dealers, clearing firms and/or by issuers of the interest itself. (para 0004-0006). Accordingly in light of the specification, the claimed subject matter when considered as a whole is directed toward overcoming the industry related restrictions for facilitating a transaction process. Such concepts can be found in the abstract category of commercial interactions. This concepts is enumerated in Section I of the 2019 revised patent subject matter eligibility guidance published in the federal register (84 FR 50) on January 7, 2019) is directed toward abstract category of methods of organizing human activity.
STEP 2A Prong 2: The identified judicial exception is not integrated into a practical application because the claims fail to provide indications of patent eligible subject matter that integrate the alleged abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a non-transitory computer-readable medium storing instruction executed by one or more processors of a platform computer systems.
The claimed processor applied to execute instructions “receive…offering parameters”, “receive purchase/sale instructions” and “transmit transaction record”, which according to the courts have been recognized when the computer functions are claimed in a merely generic manner (e.g., at a high level of generality) where technology is merely applied to perform the abstract idea or as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
The claim limitations “receive…offering parameters”, “receive purchase/sale instructions” and “transmit transaction record” are recited at a high level of generality without details of technical implementation and thus are insignificant extra solution activity.
The additional element “processor” is further applied at a high level to execute the instructions “calculate and display bid/offer price”, “determine investor eligibility”, generate transaction confirmation record” which is merely utilizes technology as a tool to analyze and verify transaction related data.
The claim limitations when considered individually fail to provide any indications of patent eligible subject matter when considered individually, according to MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h).
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological environment.
When the claims are taken as an ordered combination or as a whole, the combination of limitations, the combination of limitations 1-2 are not directed toward the processor itself or any of the functionality of any underlying technology, but instead directed toward applying a processor as a tool to receive offering parameters and calculating and displaying bid/offer price indications for use in a transaction process . The combination of limitations 1-2 and 3-4 are not directed toward the processor itself or any of the functionality of any other technology, but instead directed toward applying a computer processor as a tool receiving purchase/sale instructions and determining investor eligibility related to data from limitations 1-2. The combination of limitations 1-4 and 5-6 performed by the “processor” are not directed toward any underlying technology, but instead directed toward applying a processor as a tool to generate and transmit matched transaction record based on the eligibility determination and pricing indications of limitations 1-4.
The combinations of parts is not directed toward any of the indications of patent eligible subject matter under step 2A prong 2, but instead to perform a transaction. MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h). The claim limitations as a whole, as an ordered combination and the combination of steps not integrate the judicial exception into a practical application as the claim process fails to impose meaningful limits upon the abstract idea. . This is because the claimed subject matter fails to provide additional elements or combination or elements that go beyond applying technology as a tool to perform the identified abstract idea. The functions recited by the computer system in the claims recite the concept of a commercial activity. The claim limitations and specification lacks technical disclosure on what the technical problem was and how the claimed limitations provide a technical solution to a technical problem rather than a solution to a problem found in the abstract idea. Taking the claim elements separately, or as a combination, the operation performed by the computer system at each step of the process is purely in terms of results desired and devoid of implementation of details. Technology is not integral to the process as the claimed subject matter is so high level that any generic programming could be applied and the functions could be performed by any known means. Furthermore, the claimed functions do not provide an operation that could be considered as sufficient to provide a technological implementation or application of/or improvement to this concept (i.e. integrated into a practical application).
The integration of elements do not improve upon technology or improve upon computer functionality or capability in how computers carry out one of their basic functions. The integration of elements do not provide a process that allows computers to perform functions that previously could not be performed. The integration of elements do not provide a process which applies a relationship to apply a new way of using an application. The limitations do not recite a specific use machine or the transformation of an article to a different state or thing. The limitations do not provide other meaningful limits beyond generally linking the use of the abstract idea to a particular technological environment. The resource claimed performing the steps is merely a “field of use” application of technology. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments apply what generic computer functionality in the related arts. The steps are still a combination made to perform a financial activity and does not provide any of the determined indications of patent eligibility set forth in the 2019 USPTO 101 guidance. The additional steps only add to those abstract ideas using generic functions, and the claims do not show improved ways of, for example, an particular technical function for performing the abstract idea that imposes meaningful limits upon the abstract idea. Moreover, Examiner was not able to identify any specific technological processes that goes beyond merely confining the abstract idea in a particular technological environment, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified.
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim provides no technical details regarding how the operations performed by the “processor instructions”. Instead, similar to the claims at issue in Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017), “the claim language . . . provides only a result-oriented solution with insufficient detail for how a computer accomplishes it. Our law demands more.” Intellectual Ventures, 850 F.3d at 1342 (citing Elec. Power Grp. LLC v. Alstom, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)). The claim is directed to an abstract idea
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a non-transitory computer-readable medium storing instruction executed by one or more processors of a platform computer systems.
Taking the claim elements separately, the function performed by the computer system at each part of the process is purely conventional. Using a processor to execute instructions to perform the operations “receive…parameters”, “calculate and display bid/offer price indications”, “receive purchase/sale instructions”, “determine investor eligibility”, “generate matched transaction record”, “transmit matched transaction record”, ----are some of the most basic functions of a computer. The operations of the computing system are high level without any details as to technical implementation. According to Alice, additional computer elements which are equivalent to “apply it” with an abstract idea are not enough to qualify as “significantly more”. The current limitation merely provide an environment to implement the abstract idea on a computer or requiring no more than a generic compute to perform generic computer functions that are well understood activities known to the industry. As a result, none of the hardware recited by the medium claims offers a meaningful limitation beyond generally linking the use of the method to a particular technological environment, that is, implementation via computers. .. . The claim limitations do not recite that any of the “executed processor instructions” perform more than a high level generic function ... . None of the limitations recite technological implementation details for any of these steps, but instead recite only results desired to be achieved by any and all possible means. .. . Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
The operations of the claimed processor executed instructions are employed in a customary manner and do not improve any underlying technology or provide a particular technical process or any particular arrangement of elements directed toward more than implementing a sales activity. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. The additional sales activity performed by the computer including receiving, generating/displaying, multifactor eligibility verification, generating matched transaction record and transmitted matched transaction record is directed toward insignificant extra solutions activity. MPEP 2106.05 II, MPEP 2106.05 (d) II. The medium processor executed instructions of Claim 38 and its functions provides no technical details regarding how the claimed transaction operations are performed.
When the claims are taken as a whole, as an ordered combination, the combination of steps does not add “significantly more” by virtue of considering the steps as a whole, as an ordered combination. As discussed above, the combination of “receiving offering parameters”, “calculate and display aggregated bid/offer price indications”, “receive purchase/sale instructions”, “determining investor eligibility”, “generate matched transaction record” and “transmit matched transaction record”, similar to Electric Power Group is conventional application of technology. The receive, display and transmit is mere data gathering and outputting recited at a high level of generality and thus are insignificant extra solution activity. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses.See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms “ “receive”, “determine”, “display”, “transmit”, “generate” ... are functions can be achieved by any general purpose computer without special programming". None of these activities are used in some unconventional manner nor do any produce some unexpected result. The limitations as a combination are not directed toward a particular technological technique.
As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. Invest Pic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Applicant’s claimed functions add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis modification-transmission is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited as an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. The analysis concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception.
According to 2106.05 well-understood and routine processes to perform the abstract idea is not sufficient to transform the claim into patent eligibility. As evidence the examiner provides:
The specification discloses how the system is applied without details of any technical process or specific unconventional structure, instead discusses the system by its operations for performing transactions, data analysis and interface displays
[0002] ... The system may be qualified and regulated as an exchange, as a broker-dealer trading system, as a
multilateral trading facility, and as an Alternative Trading System.
[0003] Automated securities trading systems are well known in the art, as are systems for automated bidding,
valuation, accreditation and exchange of securities. However, there has been a long-standing, well-recognized,
unmet need tor an automated, real ti me market for the exchange of restricted securities ....
[0009] The present invention effectively addresses and solves the aforementioned drawbacks, disadvantages and
limitations of the prior art, by providing a Restricted Shares Trading System (alternatively referred to herein as
"RSTS," and the "System") and corresponding computer-implemented methods for facilitating the dynamic
valuation and exchange of restricted securities in real time.
[0101] The present invention provides an automated, closed loop stock exchange system for trading restricted
securities in publically traded companies. The Restricted Shares Trading System (RSTS) (alternatively referred to
herein simply as the "System"), includes: (a) a system operator; (b) an automated bidder qualification means, wherein
a bidder is designated a qualified bidder upon meeting bidder qualification criteria set by the system operator; (c)
means for accepting and storing a submitted bid from the qualified bidder; (d) means for accepting and storing a sell
offer from a primary or secondary seller; (e) an automated bid and offer evaluation means, wherein the submitted bid
is evaluated against bid criteria set by the system operator; (f) an automated compliance means, wherein the
submitted bid and offer is evaluated against compliance criteria set by the system operator; (g) an automated
submitted bid and offer adjustment means, wherein the submitted bid and offer is modified pursuant to criteria set by
the system operator; (h) an automatic feedback means, wherein the qualified bidder, primary or secondary seller is
informed if the qualified submitted bid is accepted; (i) an automated feedback means, wherein investor; primary and
secondary seller are electronically alerted to status of their bid or offer pursuant to criteria set by the system operator;
(j) an automated feedback means wherein investor; primary and secondary seller are electronically alerted to the
presence and status of counter bids and offers pursuant to the criteria set by the system operate r; and (k) an
automatic transaction means to effectuate the accepted transaction.
[0112] ... the system determines eligibility by programming and utilizing modified parameters pertaining to investment
experience, risk tolerance, and income net worth. An investment screen is available for listing securities that are
currently available for investment by non-accredited investors (FIG. 88). The list also includes the number of
non-accredited investors that remain eligible to participate in the RS offering.
[0114] Issuer Dash board: Upon approval, the Issuer is provided with a password protected Account screen ...
Furthermore, the system is preferably programmed to automatically count down the number of non accredited
investors participating in a particular offering ... The regulations between these three "safe harbor" designations vary
somewhat; however, the system is programmed and otherwise configured, to automatically comply with respective
varying regulations ....
[0122] ... The system is contemplated to be programmed to reference qualifying factors and set trade parameters to
automatically comply with regulations with regard to counter party eligibility, offering, designation and resale (see FIG.
50 and FIG. 62) ... For example, if the investor is designated as part of a syndicate or related investment group, the
system may be programmed to automatically link the investors for purposes of Section 16compliance, as well as for
the purpose of disqualifying barred investors from purchasing specified restricted security offerings, in accordance
with issuer's request. ...
[0126] ... Documents are preferably automatically populated in accordance with trade data and personal information,
and cross-referenced rules and regulations programmed or otherwise integrated into the system ....
[0127] Non-compliant Offers: The system may automatically reject offers that fall outside programmed compliance
parameters for trading ....
[0157] Other embodiments of the present invention also include software, or program product stored on a tangible
computer memory media as a set of instructions, operable on a computer to cause the instructions to be executed by
the computer, and used to manage and operate the system as provided in the present invention.
The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is generic components and functions in the related arts. The claim is not patent eligible.
The remaining dependent claims—which impose additional limitations—also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 39 this dependent claim have also been reviewed with the same analysis as independent claim 38. Dependent claim 39 is directed toward limiting the offeror comprising one of an issuer placing offering securities or other offeror- commercial interactions.
The dependent claim(s) have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 38. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims 39 is directed towards patent eligible subject matter, they are invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
Examiner Note
Dependent claim(s) 5 and 9 have not been rejected under 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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(s) 1; Claim(s) 21, 23-24, 26-27 and 30-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), and further in view of US Pub No. 2007/0143196 A1 by Colvin (Colvin).
In reference to Claim 1:
Altermore teaches:
(Original) A platform for an electronic marketplace for parallel exempt offerings ((Altomare) in at least Abstract), comprising:
an electronic marketplace platform computer system ((Altomare) in at least FIG. 8-9, para 0015-0017);
a network connection connecting the electronic marketplace platform computer system to a plurality of remote user-accessible devices having display capability, the electronic marketplace platform computer system maintaining a user category of issuer for at least some of the user-accessible devices and a user category of investor for at least some others of the user-accessible devices ((Altomare) in at least FIG. 4; para 0107, para 0121, para 0154, para 0156, para 0171);
a network connection connecting the electronic marketplace platform computer system in real time to one or more sources of real-time price quotations of a plurality of publicly-traded securities corresponding to exempt offerings offered by the issuer ((Altomare) in at least FIG. 4; para 0073, para 0107, para 0121, para 0154, para 0156, para 0168, para 0171);
one or more computer-processor readable memories of the electronic marketplace platform computer system storing offering criteria for exempt offerings of publicly-traded securities ((Altomare) in at least para 0199, para 0203);
the platform computer system being configured ((Altomare) in at least FIG. 8-9, para 0015-0017) to:
maintain, for a plurality of exempt securities offerings, each of the exempt securities offerings corresponding to pricing of the free-trading publicly-traded security, offering criteria of the exempt securities parallel to an exempt offering of the same publicly-traded security ((Altomare) in at least FIG. 4; para 0107, para 0154, para 0168, para 0171, para 0222, para 0228-0255);
provide to the remote user-accessible devices of the issuers interactive data displays permitting the issuers to determine the offering criteria of the offering of the exempt securities, the determined data including quantity and at least one of an offer price or a formula for determination of an offer price based on real-time price quotations of the publicly-traded corresponding securities ((Altomare) in at least para 0071, para 0107, para 0154, para 0167-0168, para 0188, para 0200, para 0212-0214, para 0238-0257, para 0299, para 0323, para 0393-0397);
receive, from the remote user-accessible devices of the issuers via the interactive data displays, the determined offering criteria including the quantity and the at least one of an offer price or formula for determination of an offer price of the parallel exempt-offering securities based on real-time price quotations of the publicly-traded corresponding securities, and store the determined offering criteria in the one or more computer processor-readable memories ((Altomare) in at least FIG. 16; para 0167-0168, para 0200, para 0212-0214, para 0222, para 0238-0257, para 0254-0255, para 0299, para 0323, para 0393-0397);
receive, from the one or more sources, at least one of streaming or real- time updates of price quotations of the one or more publicly-traded securities ((Altomare) in at least FIG. 16; para 0167-0168, para 0222, para 0245, para 0254-0255, para 0299, para 0393-0397);
dynamically determine at least some of the offer prices of the exempt- offering securities, based on the updated prices of the corresponding publicly- traded securities ((Altomare) in at least FIG. 16; para 0167-0168, para 0222, para 0245, para 0254-0255, para 0299, para 0352-0397);
dynamically display, on the remote user-accessible devices of investors, the dynamically determined offer prices of the one or more exempt-offering securities ((Altomare) in at least FIG. 16; para 0222);
receive, via one of the remote user-accessible devices of investors, an offer to purchase or to sell at least one of the exempt-offering securities ((Altomare) in at least para 0140, para 0 1 67);…
wherein the designated third party system, responsive to receipt of the instructions, performs one of: electronically transferring the exempt-offering securities in accordance with the transaction; updating shareholder account data for the exempt-offering securities in accordance with the transaction; or generating a share certificate for the exempt-offering securities in accordance with the transaction. ((Altomare) in at least para 0140, para 0172, para 0189).
Altomare does not explicitly teach:
determine eligibility of parties, based on party data, for offers to sell or purchase the one or more exempt-offering securities;
responsive to receipt of an instruction to purchase and a positive determination of eligibility of parties, electronically transmit, to a designated third party system, instructions a purchase transaction of the one or more exempt- offering securities;
Colvin teaches:
determine eligibility of parties, based on party data, for offers to sell or purchase the one or more exempt-offering securities ((Colvin) in at least para 0162-0164, para 0166-0168);
responsive to receipt of an instruction to purchase and a positive determination of eligibility of parties, electronically transmit, to a designated third party system, instructions a purchase transaction of the one or more exempt- offering securities ((Colvin) in at least para 0003-0005, para 0017, para 0029, para 0035, para 0039, para 0043, para 0056-0057, para 0063, para 0067, para 0083-0084, para 0094, para 0102, para 0107, para 0123, para 0137, para 0154);
Both Altomare and Colvin are directed toward trade exchanges which incorporates the sale of unregistered securities to qualified buyers. Colvin teaches the motivation of determining whether investors are qualified is a regulatory requirement for being able to sell or purchase unregistered/securities rule act securities. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the transaction process of unregistered securities of Altomare to include determining investor eligibility as taught by Colvin since Colvin teaches the motivation of determining whether investors are qualified is a regulatory requirement for being able to sell or purchase unregistered/securities rule act securities.
In reference to Claim 21:
Altomare teaches:
(CURRENTLY AMENDED) A platform computer system for an electronic marketplace for exempt-offering securities ((Altomare) in at least Abstract), comprising:
an electronic marketplace platform computer system ((Altomare) in at least FIG. 8-9, para 0015-0017);
a network connection connecting the electronic marketplace platform computer system to a plurality of remote user-accessible devices having display capability, the electronic marketplace platform computer system maintaining a user category of offeror for at least some of the user-accessible devices and a user category of investor for at least some others of the user-accessible devices ((Altomare) in at least FIG. 4; para 0073, para 0107, para 0121, para 0154, para 0156, para 0168, para 0171, para 0200, para 0207);
a network connection connecting the electronic marketplace platform computer system to one or more sources of price indications for one or more exempt-offering securities ((Altomare) in at least FIG. 4; para 0073, para 0107, para 0121, para 0154, para 0156, para 0168, para 0171), the price indications comprising at least one of:
bid prices or offer prices submitted by one or more users to the electronic marketplace platform computer system;
last transaction prices recorded on the electronic marketplace platform computer system for the exempt-offering securities;
price ranges derived from indications of interest submitted by one or more users to the electronic marketplace platform computer system;
bid prices, offer prices or transaction prices of securities comparable to the exempt-offering securities from one or more third party marketplaces; or
recommended offer prices or bid prices of securities from one or more third party marketplaces ((Altomare) in at least para 0201, para 0319-0396);
one or more computer-processor readable memories of the electronic marketplace platform computer system storing offering criteria for exempt offerings of securities and regulatory compliance standards ((Altomare) in at least para 0199, para 0203);
the electronic marketplace platform computer system being ((Altomare) in at least FIG. 8-9, para 0015-0017) configured to:
maintain, for a plurality of exempt securities offerings, offering criteria of the exempt-offering securities, including offeror data, quantity, and one or more bid or offer prices ((Altomare) in at least FIG. 4; para 0107, para 0154, para 0168, para 0171, para 0222, para 0228-0255);
provide to the remote user-accessible devices of the offerors interactive data displays permitting the offerors to determine the offering criteria of the offering of the exempt-offering securities, the determined data including quantity and at least one of an offer price or a formula, based on one or more price indications, for determining an offer price, for the exempt-offering securities ((Altomare) in at least para 0071, para 0107, para 0154, para 0167-0168, para 0188, para 0200, para 0212-0214, para 0238-0257, para 0299, para 0323, para 0393-0397);
receive, from the remote user-accessible devices of the offerors via the interactive data displays, the determined offering criteria including the quantity and the at least one of an offer price or a formula, based on one or more price indications, for determining a offer price, for the exempt-offering securities, and store the determined offering criteria in the one or more computer processor- readable memories ((Altomare) in at least FIG. 16; para 0167-0168, para 0200, para 0212-0214, para 0222, para 0238-0257, para 0254-0255, para 0299, para 0323, para 0393-0397);
receive, from the one or more sources, price indications for the one or more exempt-offering securities ((Altomare) in at least FIG. 16; para 0167-0168, para 0222, para 0245, para 0254-0255, para 0299, para 0393-0397);
dynamically determine at least some of the offer prices of the exempt- offering securities, based on the received price indications ((Altomare) in at least FIG. 16; para 0167-0168, para 0222, para 0245, para 0254-0255, para 0299, para 0352-0397);
dynamically display, on the remote user-accessible devices of investors, the dynamically determined offer prices of the one or more exempt-offering securities ((Altomare) in at least FIG. 16; para 0222);
receive, via one of the remote user-accessible devices of investors, an offer to purchase or to sell at least one of the exempt-offering securities ((Altomare) in at least para 0140, para 0167);…
wherein the designated third party system, responsive to receipt of the instructions, performs one of: electronically transferring the exempt-offering securities in accordance with the transaction; updating shareholder account data for the exempt- offering securities in accordance with the transaction; or generating a share certificate for the exempt-offering securities in accordance with the transaction. ((Altomare) in at least para 0140, para 0172, para 0189).
Altomare does not explicitly teach
determine eligibility of parties, based on party data, for offers to sell or purchase the one or more exempt-offering securities;
responsive to receipt of an instruction to purchase and a positive determination of eligibility of parties, electronically transmit, to a designated third party system, instructions for a purchase transaction of the one or more exempt- offering securities;
Colvin teaches:
determine eligibility of parties, based on party data, for offers to sell or purchase the one or more exempt-offering securities ((Colvin) in at least para 0162-0164, para 0166-0168);
responsive to receipt of an instruction to purchase and a positive determination of eligibility of parties, electronically transmit, to a designated third party system, instructions for a purchase transaction of the one or more exempt- offering securities((Colvin) in at least para 0003-0005, para 0017, para 0029, para 0035, para 0039, para 0043, para 0056-0057, para 0063, para 0067, para 0083-0084, para 0094, para 0102, para 0107, para 0123, para 0137, para 0154);
Both Altomare and Colvin are directed toward trade exchanges which incorporates the sale of unregistered securities to qualified buyers. Colvin teaches the motivation of determining whether investors are qualified is a regulatory requirement for being able to sell or purchase unregistered/securities rule act securities. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the transaction process of unregistered securities of Altomare to include determining investor eligibility as taught by Colvin since Colvin teaches the motivation of determining whether investors are qualified is a regulatory requirement for being able to sell or purchase unregistered/securities rule act securities.
In reference to Claim 23:
The combination of Altomare and Colvin discloses the limitations of independent claim 21. Altomare further discloses the limitations of dependent claim 23.
(PREVIOUSLY PRESENTED) The system of claim 21 (see rejection of claim 21 above), wherein the price indications comprise
bid prices or offer prices submitted by users on the platform, and the platform computer system is further configured to dynamically determine the offer prices of the one or more exempt-offering securities based on order data generated from the submitted bid prices and offer prices of platform users. ((Altomare) in at least FIG. 16; para 0167-0168, para 0222, para 0245, para 0254-0255, para 0299, para 0393-0397)
In reference to Claim 24:
The combination of Altomare and Colvin discloses the limitations of independent claim 21. Altomare further discloses the limitations of dependent claim 24. (PREVIOUSLY PRESENTED) The system of claim 21 (see rejection of claim 21 above), wherein the platform computer system is further configured to
generate and display a price index based at least on bid and offer prices recorded on the platform for a plurality of exempt-offering securities. ((Altomare) in at least FIG. 16; para 0064, para 0094-0097, para 0116, para 0222, para 0393-0397)
In reference to Claim 26:
The combination of Altomare and Colvin discloses the limitations of independent claim 21. Altomare further discloses the limitations of dependent claim 26. (PREVIOUSLY PRESENTED) The system of claim 21 (see rejection of claim 21 above), wherein the offeror comprises at least one of:
an issuer placing exempt-offering securities pursuant to a securities exemption; an investor reselling previously acquired exempt-offering securities; an insider of the issuer of the exempt-offering securities; or a control party of the issuer of the exempt-offering securities. ((Altomare) in at least para 0005, para 0010-0012, para 0015)
In reference to Claim 27:
The combination of Altomare and Colvin discloses the limitations of independent claim 21. Altomare further discloses the limitations of dependent claim 27. (PREVIOUSLY PRESENTED) The system of claim 21 (see rejection of claim 21 above), wherein the price indications comprise at least one of:
a fixed offer price determined by the offeror; a price range within which the offeror is willing to transact; a price resulting from a private counter-offer negotiation between a bidder and an offeror conducted through the platform; or a price derived from the last recorded transaction price for the exempt- offering security on the platform.((Altomare) in at least para 0164, para 0168, para 0190, para 0221-0222, para 0403-0404)
In reference to Claim 30:
The combination of Altomare and Colvin discloses the limitations of independent claim 21. Altomare further discloses the limitations of dependent claim 30.
(PREVIOUSLY PRESENTED) The system of claim 21 (see rejection of claim 21 above),
wherein the price indications comprise real-time price quotations of one or more securities other than the exempt-offering securities.((Altomare) in at least para 0010, para 0023, para 0452, para 0460, para 0462)
In reference to Claim 31:
The combination of Altomare and Colvin discloses the limitations of independent claim 21. Altomare further discloses the limitations of dependent claim 31.
(PREVIOUSLY PRESENTED) The system of claim 30 (see rejection of claim 21 above),
wherein the price indications comprise real-time price quotations of one or more free trading securities corresponding to the exempt-offering securities. ((Altomare) in at least FIG. 16; para 0167-0168, para 0222, para 0245, para 0254-0255, para 0299, para 0352-0397);
In reference to Claim 32:
The combination of Altomare and Colvin discloses the limitations of independent claim 21. Altomare further discloses the limitations of dependent claim 32.
(PREVIOUSLY PRESENTED) The system of claim 21 (see rejection of claim 21 above),
wherein the offeror comprises at least one of an issuer placing exempt-offering securities pursuant to a securities exemption or an offeror other than the issuer of the exempt-offering securities. ((Altomare) in at least para 0452, para 0460)
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), in view of US Pub No. 2007/0143196 A1 by Colvin (Colvin) as applied to claim 1 above, and further in view of WO 2007/127041 A3 by Waelbroeck et al. (Waelbroeck)
In reference to Claim 2:
The combination of Altomare and Colvin discloses the limitations of independent claim 1. Altomare further discloses the limitations of dependent claim 2
(ORIGINAL) The system of claim 1 (see rejection of claim 1 above), wherein the platform computer system is further configured to: …
Altomare does not explicitly teach:
prompt an issuer user for offering information;
responsive to receipt of the offering information, compare the received offering information to stored offering criteria;
Waelbroeck teaches:
prompt an issuer user for offering information ((Waelbroeck) in at least 17-32 wherein the prior art teaches that request for quote systems (RFQ) are known in the art)
responsive to receipt of the offering information, compare the received offering information to stored offering criteria ((Waelbroeck) in at least page 6 lines 1-9 wherein the prior art teaches RFQ with capital provider returning two-sided quote based on RFQ and responding spreads are compared; page 7 lines 30 participants modifying quotes in response to RFQ analyzed and compared for risk classification, compared to list of approved capital provider, page 11 lines 27-30 wherein the prior art teaches comparing orders pegged to market benchmark as comparted to best bid/offer);
determine, based on results of the comparison, a proposed exemption having criteria to which the offering information complies, and prompt the issuer user to select the proposed exemption [rule]. ((Waelbroeck) in at least page 3 lines 20-25, page 4 lines 20-25),
Both Altomare and Waelbroeck are directed toward rule based transaction. Waelbroeck teaches the motivation that it is known in the art to prompt participants of an investment transaction for offering information and the motivation of comparing the received offering price in order to propose and enable negotiation of rules for a final price. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the transaction process of unregistered securities of Altomare to include request/prompt for quotes and other information that is compared for enabling selection of proposed exemptions/rules of Waelbroeck since Waelbroeck teaches the motivation that it is known in the art to prompt participants of an investment transaction for offering information and the motivation of comparing the received offering price in order to propose and enable negotiation of rules for a final price.
Claim(s) 3-4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), in view of US Pub No. 2007/0143196 A1 by Colvin (Colvin) in view of WO 2007/127041 A3 by Waelbroeck et al. (Waelbroeck) as applied to claim 2 above, and further in view of US Pub No. 2002/0169774 A1 by Greenbaum et al. (Greenbaum)
In reference to Claim 3:
The combination of Altomare, Colvin and Waelbroeck discloses the limitations of dependent claim 2. Altomare further discloses the limitations of dependent claim 3.
(ORIGINAL) The system of claim 2 (see rejection of claim 2 above), wherein the platform computer system is further configured to
Altomare does not explicitly teach:
receive from the issuer a selection of the proposed exemption, and, responsive to receipt of the selection, monitor compliance with the selected exemption.
Waelbroeck teaches:
receive from the issuer a selection of the proposed exemption, and, responsive to receipt of the selection,((Waelbroeck) in at least page 3 lines 20-25, page 4 lines 20-25),
Both Altomare and Waelbroeck are directed toward rule based transaction. Waelbroeck teaches the motivation of receiving request to enable negotiation of rules for a final price or other criteria. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the transaction process of unregistered securities of Altomare to include receiving request enabling selection of proposed exemptions/rules of Waelbroeck since Waelbroeck teaches the motivation of receiving request to enable negotiation of rules for a final price or other criteria
Greenbaum teaches:
monitor compliance with the selected exemption. ((Greenbaum) in at least para 0009-0010, para 0025, para 0032, para 0096)
Both Altomare and Greenbaum are directed toward regulated security trading. Greenbaum teaches the motivation of monitoring compliance of selected regulations in order to detect non-compliance traders and trading practices. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the transaction process of unregistered securities of Altomare to monitoring compliance of trades as taught by Greenbaum since Greenbaum teaches the motivation of monitoring compliance of selected regulations in order to detect non-compliance traders and trading practices
In reference to Claim 4:
The combination of Altomare, Colvin, Waelbroeck and Greenbaum discloses the limitations of dependent claim 3. Altomare further discloses the limitations of dependent claim 4
(ORIGINAL) The system of claim 3 (see rejection of claim 3 above), wherein, the platform computer system is further configured to,
Altomare does not explicitly teach:
responsive to detection of a user-initiated attempted action not in compliance with the selected exemption, disables user rights to proceed with the attempted action.
Greenbaum teaches:
responsive to detection of a user-initiated attempted action not in compliance with the selected exemption, disables user rights to proceed with the attempted action. ((Greenbaum) in at least para 0003, para 0010, para 0059, para 0096)
Both Altomare and Greenbaum are directed toward regulated security trading. Greenbaum teaches the motivation of monitoring compliance of selected regulations in order to prevent non-compliant trading practices. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the transaction process of unregistered securities of Altomare to monitoring compliance of trades as taught by Greenbaum since Greenbaum teaches the motivation of monitoring compliance of selected regulations in order to prevent non-compliant trading practices
In reference to Claim 6:
The combination of Altomare, Colvin, Waelbroeck and Greenbaum discloses the limitations of dependent claim 3. Altomare further discloses the limitations of dependent claim 6
(ORIGINAL) The system of claim 3 (see rejection of claim 3 above),
wherein the platform computer system is in electronic communication with a transfer agent computer system ((Altomare) in at least para 0140, para 0172, para 0189), …
Altomare does not explicitly teach:
and is configured to monitor compliance with the exemption via review of data automatically obtained from the transfer agent computer system.
Greenbaum teaches:
configured to monitor compliance with the exemption via review of data automatically obtained from the transfer agent computer system. ((Greenbaum) in at least para 0009-0010, para 0025, para 0032, para 0096)
Both Altomare and Greenbaum are directed toward regulated security trading. Greenbaum teaches the motivation of monitoring compliance of selected regulations in order to detect non-compliance traders and trading practices. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the transaction process of unregistered securities of Altomare to monitoring compliance of trades as taught by Greenbaum since Greenbaum teaches the motivation of monitoring compliance of selected regulations in order to detect non-compliance traders and trading practices
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), in view of US Pub No. 2007/0143196 A1 by Colvin (Colvin) as applied to claim 1 above, and further in view of WO 2007/127041 A3 by Waelbroeck et al. (Waelbroeck)
In reference to Claim 7:
The combination of Altomare and Colvin discloses the limitations of independent claim 1. Altomare further discloses the limitations of dependent claim 7
(ORIGINAL) The system of claim 1 (see rejection of claim 1 above), wherein the platform computer system is further configured to:
Altomare does not explicitly teach:
prompt an issuer user for offering information; responsive to receipt of the offering information, compare the received offering information to stored exemption criteria;
determine, based on results of the comparison, an exemption having criteria to which the offering information complies, and automatically commence monitoring the offering for compliance with the determined exemption.
Waelbroeck teaches:
prompt an issuer user for offering information; responsive to receipt of the offering information, compare the received offering information to stored exemption criteria ((Waelbroeck) in at least page 6 lines 1-9 wherein the prior art teaches RFQ with capital provider returning two-sided quote based on RFQ and responding spreads are compared; page 7 lines 30 participants modifying quotes in response to RFQ analyzed and compared for risk classification, compared to list of approved capital provider, page 11 lines 27-30 wherein the prior art teaches comparing orders pegged to market benchmark as comparted to best bid/offer);;
determine, based on results of the comparison, an exemption having criteria to which the offering information complies, and automatically commence monitoring the offering for compliance with the determined exemption ((Waelbroeck) in at least page 6 lines 1-9 wherein the prior art teaches RFQ with capital provider returning two-sided quote based on RFQ and responding spreads are compared; page 7 lines 30 participants modifying quotes in response to RFQ analyzed and compared for risk classification, compared to list of approved capital provider, page 11 lines 27-30 wherein the prior art teaches comparing orders pegged to market benchmark as comparted to best bid/offer).
Both Altomare and Waelbroeck are directed toward rule based transaction. Waelbroeck teaches the motivation that it is known in the art to prompt participants of an investment transaction for offering information and the motivation of comparing the received offering price in order to propose and enable negotiation of rules for a final price. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the transaction process of unregistered securities of Altomare to include request/prompt for quotes and other information that is compared for enabling selection of proposed exemptions/rules of Waelbroeck since Waelbroeck teaches the motivation that it is known in the art to prompt participants of an investment transaction for offering information and the motivation of comparing the received offering price in order to propose and enable negotiation of rules for a final price.
Claim(s) 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), in view of US Pub No. 2007/0143196 A1 by Colvin (Colvin) in view of WO 2007/127041 A3 by Waelbroeck et al. (Waelbroeck) as applied to claim 7 above, and further in view of US Pub No. 2002/0169774 A1 by Greenbaum et al. (Greenbaum)
In reference to Claim 8:
The combination of Altomare, Colvin and Waelbroeck discloses the limitations of dependent claim 7. Altomare further discloses the limitations of dependent claim 8
(ORIGINAL) The system of claim 7 (see rejection of claim 7 above), wherein, the platform computer system is further configured to,
Altomare does not explicitly teach:
responsive to detection of a user-initiated attempted action not in compliance with the selected exemption, disables user rights to proceed with the attempted action.
Greenbaum teaches:
responsive to detection of a user-initiated attempted action not in compliance with the selected exemption, disables user rights to proceed with the attempted action ((Greenbaum) in at least para 0003, para 0010, para 0059, para 0096)
Both Altomare and Greenbaum are directed toward regulated security trading. Greenbaum teaches the motivation of monitoring compliance of selected regulations in order to prevent non-compliant trading practices. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the transaction process of unregistered securities of Altomare to monitoring compliance of trades as taught by Greenbaum since Greenbaum teaches the motivation of monitoring compliance of selected regulations in order to prevent non-compliant trading practices
In reference to Claim 10:
The combination of Altomare, Colvin and Waelbroeck discloses the limitations of dependent claim 7. Altomare further discloses the limitations of dependent claim 10.
(ORIGINAL) The system of claim 7 (see rejection of claim 7 above),
wherein the platform computer system is in electronic communication with a transfer agent computer system ((Altomare) in at least para 0140, para 0172, para 0189), …
Altomare does not explicitly teach:
and is configured to monitor compliance with the exemption via review of data automatically obtained from the transfer agent computer system. ((Greenbaum) in at least para 0009-0010, para 0025, para 0032, para 0096)
Both Altomare and Greenbaum are directed toward regulated security trading. Greenbaum teaches the motivation of reviewing transfer data for compliance of selected regulations in order to detect non-compliance traders and trading practices. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the transaction process of unregistered securities of Altomare to monitoring compliance of trades as taught by Greenbaum since Greenbaum teaches the motivation of reviewing transfer data for compliance of selected regulations in order to detect non-compliance traders and trading practices
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), in view of US Pub No. 2007/0143196 A1 by Colvin (Colvin) as applied to claim 1 above, and further in view of CA 2750295 A1 by Vasinkevich (Vasinkevich)
In reference to Claim 11:
The combination of Altomare and Colvin discloses the limitations of independent claim 1. Altomare further discloses the limitations of dependent claim 11.
(ORIGINAL) The system of claim 1 (see rejection of claim 1 above), wherein the platform computer system is further configured to,
Altomare suggest but does not explicitly teach:
responsive to issuer instructions, dynamically determine the offer prices of the exempt-offering securities based on a discount to the updated price of the corresponding free-trading publicly-traded securities. ((Altomare) in at least para 0008-0009)
Vasinkevich teaches:
responsive to issuer instructions, dynamically determine the offer prices of the exempt-offering securities based on a discount to the updated price of the corresponding free-trading publicly-traded securities. ((Vasinkevich) in at least para 0109, para 0112, para 0116-0118 )
Both Altomare and Vasinkevich are directed toward receiving bids for new issue
IPO's where discounts are applied to securities. Vasinkevich teaches the motivation of
investors wishing to purchase a large block of shares may be willing to negotiate a
discount to a market price of such shares by purchasing large quantity so the issuer
may reduce transaction costs and improve efficiency of the primary issue. It would have
been obvious to one having ordinary skill before the effective filing date of the claimed
invention expand on the nominal mention of price discounts on issued securities of
Altomare to include pricing based on discounts of Vasinkevich since Vasinkevich
teaches the motivation of investors wishing to purchase a large block of shares may be
willing to negotiate a discount to a market price of such shares by purchasing large
quantity so the issuer may reduce transaction costs and improve efficiency of the
primary issue.
In reference to Claim 12:
The combination of Altomare, Colvin and Vasinkevich discloses the limitations of dependent claim 11. Altomare further discloses the limitations of dependent claim 12
(ORIGINAL) The system of claim 11 (see rejection of claim 11 above), wherein the platform computer system is further configured to
Altomare does not explicitly teach:
provide the issuer an option of determining the offer prices of the exempt-offering securities based on a discount to a streaming price of the corresponding publicly-traded security.
Vasinkevich teaches:
provide the issuer an option of determining the offer prices of the exempt-offering securities based on a discount to a streaming price of the corresponding publicly-traded security. ((Vasinkevich) in at least para 0050 wherein the prior art teaches messages, order messages communicated in real time; para 0104, para 0108-0109, para 0112, para 0116-0118 )
Both Altomare and Vasinkevich are directed toward receiving bids for new issue
securities. Vasinkevich teaches the motivation of collecting price information in real
time, periodically, daily or on demand or otherwise so that the data can include details
of the order placed and other market price data . It would have been obvious to one
having ordinary skill before the effective filing date of the claimed invention to modify the
bids/pricing process of Altomare to include streaming bids/prices of Vasinkevich since
Vasinkevich teaches the motivation of collecting price information in real time,
periodically, daily or on demand or otherwise so that the data can include details of the
order placed and other market price data.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), in view of US Pub No. 2007/0143196 A1 by Colvin (Colvin) in view of CA 2750295 A1 by Vasinkevich (Vasinkevich) as applied to claim 12 above, and further in view of US Pub No. 2009/0119200 A1 by Riviere (Riviere)
In reference to Claim 13:
The combination of Altomare, Colvin and Vasinkevich discloses the limitations of dependent claim 12. Altomare further discloses the limitations of dependent claim 13
(ORIGINAL) The system of claim 12 (see rejection of claim 12 above), wherein the platform computer is further configured to
…issuer input of selection of an exempt-offering security for sale (see rejection of claim 1 above)
Altomare does not explicitly teach:
determine, based on at least market capitalization and volume, a liquidity coefficient for a plurality of securities; and
…, display an indication of illiquid status, and a recommendation to base a price of the exempt-offering security on a discount to a trailing moving average of the price of the corresponding publicly-traded security, responsive to the determined value of the liquidity coefficient being below a threshold.
Riviere teaches:
determine, based on at least market capitalization and volume, a liquidity coefficient for a plurality of securities ((Riviere) in at least para 0006, para 0023-0024, para 0027, para 0032, para 0050, para 0052-0058, para 0066-0068); and
responsive to issuer input of selection of an …offering security for sale, display an indication of illiquid status, and a recommendation to base a price of the exempt-offering security on a discount to a trailing moving average of the price of the corresponding publicly-traded security, responsive to the determined value of the liquidity coefficient being below a threshold ((Riviere) in at least para 0050, para 0097, para 0113, para 0131-0139, para 0197, para 0263-0270, para 0276; Table 18).
Both Altomare and Riviere are directed toward receiving and pricing securities offered for purchase/sell. Riviere teaches the motivation of assigning liquidity factors to each security using historical trading values over a trailing period in order to derive a return value for quarterly allocation for ensuring sufficient liquidity to support investment in future contracts within selected forward allocation. It would have been obvious to one
having ordinary skill before the effective filing date of the claimed invention to modify the
bids/pricing process of Altomare to include liquidity considerations as taught by Riviere since Riviere teaches the motivation of assigning liquidity factors to each security using historical trading values over a trailing period in order to derive a return value for quarterly allocation for ensuring sufficient liquidity to support investment in future contracts within selected forward allocation.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), in view of US Pub No. 2007/0143196 A1 by Colvin (Colvin) in view of CA 2750295 A1 by Vasinkevich (Vasinkevich) as applied to claim 12 above, and further in view of WO
2004102350 A2 by Funkhouser et al. (Funkhouser)
In reference to Claim 14:
The combination of Altomare, Colvin and Vasinkevich discloses the limitations of dependent claim 11. Altomare further discloses the limitations of dependent claim 14
(ORIGINAL) The system of claim 11 (see rejection of claim 11 above), wherein the platform computer system is further configured to,
Altomare does not explicitly teach:
responsive to an instruction received via the issuers dynamic data display, dynamically determine an offer price of the one or more exempt- offering securities based on a discount to a trailing moving average price of the corresponding free-trading publicly-traded security.
Funkhouser teaches:
responsive to an instruction received via the issuers dynamic data display, dynamically determine an offer price of the one or more exempt- offering securities based on a discount to a trailing moving average price of the corresponding free-trading publicly-traded security. ((Funkhouser) in at least FIG. 20; para 0089-0090, para 0142-0144);
Both Altomare and Funkhouser teach analyzing data for determining pricing on
provided issues based on market information. Funkhouser teaches the motivation of
calculating the trend of market prices in order to provide an effective means of spotting
the start of trend in prices. It would have been obvious to one having ordinary skill
before the effective filing date of the claimed invention to modify the bids/pricing
analysis of Altomare to include applying moving averages as taught by Funkhouser
since Funkhouser teaches the motivation of calculating the trend of market prices in
order to provide an effective means of spotting the start of trend in prices.
Claim(s) 15 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), in view of US Pub No. 2007/0143196 A1 by Colvin (Colvin) in view of CA 2750295 A1 by Vasinkevich (Vasinkevich) as applied to claim 11 above, and further in view of JP 2001501333 A by マーチン et al. (JP2001) the translation as annotated by the examiner
In reference to Claim 15:
The combination of Altomare, Colvin and Vasinkevich discloses the limitations of dependent claim 11. Altomare further discloses the limitations of dependent claim 15.
(ORIGINAL) The system of claim 11 (see rejection of claim 11 above),
Altomare does not explicitly teach:
wherein the platform computer system is further configured to display an interactive market depth screen showing one or more current bids or offers for one or more exempt-offering securities, wherein the market depth screen displays bids and offers arranged in order of amount of discount from the price of corresponding free-trading publicly-traded securities.
JP2001 teaches:
wherein the platform computer system is further configured to display an interactive market depth screen showing one or more current bids or offers for one or more exempt-offering securities, wherein the market depth screen displays bids and offers arranged in order of amount of discount from the price of corresponding free-trading publicly-traded securities. ((JP2001) in at least para 0027-0028, para 0037, para 0038-0039; Claims 13)
Both Altomare and JP2001 teach displaying market and price data. JP2001
teaches the motivation of providing a user interface securities display for displaying
suitable specific functions so that user can view and select specific trading data and
activity with functions the user can specifically choose from include displaying market
depth, ranking of securities and selected discounts. It would have been obvious to one
having ordinary skill before the effective filing date of the claimed invention to modify the
display functions for displaying market data of Altomare to include the functions for
selecting specific market data as taught by J P2001 since J P2001 teaches the
motivation of providing a user interface securities display for displaying suitable specific
functions so that user can view and select specific trading data and activity with
functions the user can specifically choose from include displaying market depth, ranking
of securities and selected discounts.
In reference to Claim 19:
The combination of Altomare, Colvin and Vasinkevich discloses the limitations of dependent claim 11. Altomare further discloses the limitations of dependent claim 19
(ORIGINAL) The system of claim 11 (see rejection of claim 11 above), wherein the platform computer system is further configured to:
Altomare does not explicitly teach:
provide a plurality of user-selectable parameters associated with bids and offers, the user-selectable parameters comprising at least one of: a discount to a streaming price of corresponding free-trading publicly-traded securities; a discount to a streaming trailing moving average of corresponding free-trading publicly-traded securities; or a fixed price.
JP2001 teaches:
provide a plurality of user-selectable parameters associated with bids and offers, the user-selectable parameters comprising at least one of: a discount to a streaming price of corresponding free-trading publicly-traded securities; a discount to a streaming trailing moving average of corresponding free-trading publicly-traded securities; or a fixed price. ((JP2001) in at least Claims 13) and 25)
Both Altomare and JP2001 teach displaying market and price data. JP2001
teaches the motivation of providing a user interface securities display for displaying
suitable specific functions so that user can view and select specific trading data and
activity with functions the user can specifically choose to set minimum and maximum
bid and volume based on market depth. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the
display functions for displaying market data of Altomare to include the functions for
selecting specific market data as taught by J P2001 since J P2001 teaches the
motivation of providing a user interface securities display for displaying suitable specific
functions so that user can view and select specific trading data and activity with
functions the user can specifically choose to set minimum and maximum bid and
volume based on market depth.
In reference to Claim 20:
The combination of Altomare, Colvin, Vasinkevich and JP2001 discloses the limitations of dependent claim 19. Altomare further discloses the limitations of dependent claim 20
(ORIGINAL) The system of claim 19 (see rejection of claim 19 above), wherein the platform computer system is further configured to:
responsive to user selection of determination of a price of exempt-offering securities based on one of a discount to a streaming price of corresponding free-trading publicly-traded securities or a discount to a streaming trailing moving average of a price of corresponding free-trading publicly-traded securities, provide as a user-selectable parameter at least one of a maximum price or a minimum price.
JP2001 teaches:
responsive to user selection of determination of a price of exempt-offering securities based on one of a discount to a streaming price of corresponding free-trading publicly-traded securities or a discount to a streaming trailing moving average of a price of corresponding free-trading publicly-traded securities, provide as a user-selectable parameter at least one of a maximum price or a minimum price. ((JP2001) in at least Claims 13) and 25)
Both Altomare and JP2001 teach displaying market and price data. JP2001
teaches the motivation of providing a user interface securities display for displaying
suitable specific functions so that user can view and select specific trading data and
activity with functions the user can specifically choose to set minimum and maximum
bid and volume based on market depth. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the
display functions for displaying market data of Altomare to include the functions for
selecting specific market data as taught by J P2001 since J P2001 teaches the
motivation of providing a user interface securities display for displaying suitable specific
functions so that user can view and select specific trading data and activity with
functions the user can specifically choose to set minimum and maximum bid and
volume based on market depth.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), in view of US Pub No. 2007/0143196 A1 by Colvin (Colvin) in view of CA 2750295 A1 by Vasinkevich (Vasinkevich) as applied to claim 11 above, and further in view of WO
2004/102350 A2 by Funkhouser et al. (Funkhouser) and WO 2006/104509 A2 by Lutnick et al (Lutnick)
In reference to Claim 16:
The combination of Altomare, Colvin and Vasinkevich discloses the limitations of dependent claim 11. Altomare further discloses the limitations of dependent claim 16.
(ORIGINAL) The system of claim 11 (see rejection of claim 11 above),
Altomare does not explicitly teach:
wherein the one or more exempt- offering securities are offered at a price based on a streaming discount to trailing moving average of the corresponding free-trading publicly-traded securities, and the platform computer system is configured to compare the offer price of the one or more exempt-offering securities to the real-time updates of the price of the corresponding free-trading publicly-traded securities and, responsive to the offer price of the exempt- offering securities being equal to or greater than the price of the corresponding free- trading publicly-traded securities, automatically cancel the offer of the exempt-offering securities, and notify the offeror of the cancellation.
Funkhouser teaches:
wherein the one or more exempt- offering securities are offered at a price based on a streaming discount to trailing moving average of the corresponding free-trading publicly-traded securities ((Funkhouser) in at least FIG. 20; para 0089-0090, para 0142-0144), and the platform computer system is configured to compare the offer price of the one or more exempt-offering securities to the real-time updates of the price of the corresponding free-trading publicly-traded securities ((Funkhouser) in at least para 0073, para 0076, para 0081-0083)…
Both Altomare and Funkhouser teach analyzing data for determining pricing on
provided issues based on market information. Funkhouser teaches the motivation of
calculating the trend of market prices in order to provide an effective means of spotting
the start of trend in prices. It would have been obvious to one having ordinary skill
before the effective filing date of the claimed invention to modify the bids/pricing analysis of Altomare to include applying moving averages as taught by Funkhouser since Funkhouser teaches the motivation of calculating the trend of market prices in order to provide an effective means of spotting the start of trend in prices.
Lutnick teaches:
responsive to the offer price of the exempt- offering securities being equal to or greater than the price of the corresponding free- trading publicly-traded securities, automatically cancel the offer of the exempt-offering securities, and notify the offeror of the cancellation. ( (Lutnick) in at least pge 14 lines 1-13, page 15 lines 18-page 16 lines 1-19, page 17 lines 11-25 )
Both Altomare and Lutnick are directed toward receiving trade request and bids for trade orders. Lutnick teaches the motivation of applying rules when matching bids and based on thresholds set forth cancelling orders and that there is a need to determine whether a trade order is an outlier using alert messages for such outlying trade orders when determining whether to cancel a trade order. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the trading process of Altomare to include using alert messages as taught by Lutnick since Lutnick teaches the motivation of applying rules when matching bids and based on thresholds set forth cancelling orders and that there is a need to determine whether a trade order is an outlier using alert messages for such outlying trade orders when determining whether to cancel a trade order.
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), in view of US Pub No. 2007/0143196 A1 by Colvin (Colvin) in view of CA 2750295 A1 by Vasinkevich (Vasinkevich) as applied to claim 11 above, and further in view of WO
2004/102350 A2 by Funkhouser et al. (Funkhouser)
In reference to Claim 17:
The combination of Altomare, Colvin and Vasinkevich discloses the limitations of dependent claim 11. Altomare further discloses the limitations of dependent claim 17
(ORIGINAL) The system of claim 11 (see rejection of claim 11 above), wherein the platform computer system is further configured to
Altomare does not explicitly teach:
dynamically determine at least some of the bid or offer prices of the one or more exempt-offering securities based on a streaming discount to a price of the corresponding free-trading publicly-traded securities.
Funkhouser teaches:
dynamically determine at least some of the bid or offer prices of the one or more exempt-offering securities based on a streaming discount to a price of the corresponding free-trading publicly-traded securities ((Funkhouser) in at least FIG. 20; para 0089-0090, para 0142-0144), and the platform computer system is configured to compare the offer price of the one or more exempt-offering securities to the real-time updates of the price of the corresponding free-trading publicly-traded securities ((Funkhouser) in at least para 0073, para 0076, para 0081-0083)…
Both Altomare and Funkhouser teach analyzing data for determining pricing on
provided issues based on market information. Funkhouser teaches the motivation of
calculating the trend of market prices in order to provide an effective means of spotting
the start of trend in prices. It would have been obvious to one having ordinary skill
before the effective filing date of the claimed invention to modify the bids/pricing analysis of Altomare to include applying moving averages as taught by Funkhouser since Funkhouser teaches the motivation of calculating the trend of market prices in order to provide an effective means of spotting the start of trend in prices.
In reference to Claim 18:
The combination of Altomare, Colvin and Vasinkevich discloses the limitations of dependent claim 11. Altomare further discloses the limitations of dependent claim 18
(ORIGINAL) The system of claim 11 (see rejection of claim 1 above), wherein the platform computer system is further configured to
Altomare does not explicitly teach:
dynamically determine at least some of the bid or offer prices of the one or more exempt-offering securities based on a streaming discount to a trailing moving average price of the corresponding free-trading publicly-traded securities.
Funkhouser teaches:
dynamically determine at least some of the bid or offer prices of the one or more exempt-offering securities based on a streaming discount to a trailing moving average price of the corresponding free-trading publicly-traded securities ((Funkhouser) in at least FIG. 20; para 0089-0090, para 0142-0144), and the platform computer system is configured to compare the offer price of the one or more exempt-offering securities to the real-time updates of the price of the corresponding free-trading publicly-traded securities ((Funkhouser) in at least para 0073, para 0076, para 0081-0083)…
Both Altomare and Funkhouser teach analyzing data for determining pricing on
provided issues based on market information. Funkhouser teaches the motivation of
calculating the trend of market prices in order to provide an effective means of spotting
the start of trend in prices. It would have been obvious to one having ordinary skill
before the effective filing date of the claimed invention to modify the bids/pricing analysis of Altomare to include applying moving averages as taught by Funkhouser since Funkhouser teaches the motivation of calculating the trend of market prices in order to provide an effective means of spotting the start of trend in prices.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), in view of US Pub No. 2007/0143196 A1 by Colvin (Colvin) as applied to claim 21 above, and further in view of US Pub No. 2011/0153521 A1 by Green et al. (Green)
In reference to Claim 22:
The combination of Altomare and Colvin discloses the limitations of independent claim 21. Altomare further discloses the limitations of dependent claim 22.
(PREVIOUSLY PRESENTED) The system of claim 21 (see rejection of claim 21 above),
Altomare does not explicitly teach:
wherein the price indications comprise real-time price quotations of one or more publicly-traded securities corresponding to the exempt-offering securities, and the platform computer system is further configured to dynamically determine the offer prices of the exempt-offering securities based on a discount to the updated price of the corresponding publicly-traded securities.
Green teaches:
wherein the price indications comprise real-time price quotations of one or more publicly-traded securities corresponding to the exempt-offering securities, and the platform computer system is further configured to dynamically determine the offer prices of the exempt-offering securities based on a discount to the updated price of the corresponding publicly-traded securities. ((Green) in at least para 0007, para 0012, para 0016, para 0019, para 0020, para 0027, para 0053, para 0069, para 0077, para 0090, para 0148-0150, para 0155, para 0157, para 0163-0185, para 0270, para 0282)
Both Altomare and Green are directed toward analyzing price data. Green
teaches the motivation of analyzing real time discounts in order to project prices over
time. It would have been obvious to one having ordinary skill before the effective filing
date of the claimed invention to modify the calculation of pricing of Altomare to include
streaming discount of average pricing of Green since Green teaches the motivation of
analyzing real time discounts in order to project prices over time.
Claim(s) 25 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), in view of US Pub No. 2007/0143196 A1 by Colvin (Colvin) as applied to claim 21 above, and further in view of US Pub No. 2009/0119200 A1 by Riviere (Riviere)
In reference to Claim 25:
The combination of Altomare and Colvin discloses the limitations of independent claim 21. Altomare further discloses the limitations of dependent claim 25. (PREVIOUSLY PRESENTED) The system of claim 21 (see rejection of claim 21 above),
Altomare does not explicitly teach:
wherein the exempt- offering securities are shares of a company that does not have a class of shares publicly traded on a national securities exchange or over-the-counter market.
Riviere teaches:
wherein the exempt- offering securities are shares of a company that does not have a class of shares publicly traded on a national securities exchange or over-the-counter market. ((Riviere) in at least para 0307-0309)
According to KSR, common sense rationale, Simple Substitution of One Known Element for Another To Obtain Predictable Results is obvious combination. Both Altomare and Riviere are directed toward purchasing and selling securities which include exempt securities. The prior art Altomare differs from the claimed exempt securities by the substitution of one type of exempt security with another. The prior art Riviere provides evidence that classless/permanently exempt securities for purchase and sale were known in the art. One of ordinary skill in the art could have substituted one known type of exempt security for a transaction for another type of exempt security, and the results of the substitution would have been predictable.
In reference to Claim 29:
The combination of Altomare and Colvin discloses the limitations of independent claim 21. Altomare further discloses the limitations of dependent claim 29. (PREVIOUSLY PRESENTED) The system of claim 21 (see rejection of claim 21 above), wherein the platform computer system is further configured to:
Altomare does not explicitly teach:
determine, based on at least market capitalization and average daily trading volume of the exempt-offering securities or corresponding securities, a liquidity coefficient; and
responsive to a determination that the liquidity coefficient is below a threshold, recommend to the offeror that the offer price be determined based on a trailing moving average price of a corresponding security.
Riviere teaches:
determine, based on at least market capitalization and average daily trading volume of the exempt-offering securities or corresponding securities, a liquidity coefficient((Riviere) in at least para 0006, para 0023-0024, para 0027, para 0032, para 0050, para 0052-0058, para 0066-0068); and
responsive to a determination that the liquidity coefficient is below a threshold, recommend to the offeror that the offer price be determined based on a trailing moving average price of a corresponding security. ((Riviere) in at least para 0050, para 0097, para 0113, para 0131-0139, para 0197, para 0263-0270, para 0276; Table 18).
Both Altomare and Riviere are directed toward receiving and pricing securities offered for purchase/sell. Riviere teaches the motivation of assigning liquidity factors to each security using historical trading values over a trailing period in order to derive a return value for quarterly allocation for ensuring sufficient liquidity to support investment in future contracts within selected forward allocation. It would have been obvious to one
having ordinary skill before the effective filing date of the claimed invention to modify the
bids/pricing process of Altomare to include liquidity considerations as taught by Riviere since Riviere teaches the motivation of assigning liquidity factors to each security using historical trading values over a trailing period in order to derive a return value for quarterly allocation for ensuring sufficient liquidity to support investment in future contracts within selected forward allocation.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), in view of US Pub No. 2007/0143196 A1 by Colvin (Colvin) as applied to claim 21 above, and further in view of WO 2008/095140 A1 by Beddis et al (Beddis)
In reference to Claim 28:
The combination of Altomare and Colvin discloses the limitations of independent claim 21. Altomare further discloses the limitations of dependent claim 28.
(PREVIOUSLY PRESENTED) The system of claim 21 (see rejection of claim 21 above), wherein the platform computer system is further configured to:
Altomare does not explicitly teach:
receive a counter-offer from a first party in response to a bid or offer of a second party;
communicate the counter-offer to the second party via the interactive data displays;
receive a response to the counter-offer from the second party; and,
responsive to receipt of an acceptance of the counter-offer, transmit instructions for the corresponding transaction.
Bettis teaches:
receive a counter-offer from a first party in response to a bid or offer of a second party ((Beddis) in at least FIG. 8, FIG. 10, FIG. 13-17; para 0116, para 0118, para 0134, para 00138-00140, para 0149-0150, para 0162-0174);
communicate the counter-offer to the second party via the interactive data displays ((Beddis) in at least FIG. 8, FIG. 10, FIG. 13-17; para 0116, para 0118, para 00138-00140, para 0149-0150, para 0163-0174);
receive a response to the counter-offer from the second party ((Beddis) in at least para 0114, para 0116, para 0132, para 0169, para 0174); and,
responsive to receipt of an acceptance of the counter-offer, transmit instructions for the corresponding transaction ((Beddis) in at least para 0014, para 0169, para 0174).
Both Altomare and Beddis teach providing to the investor information related to
trades submitted. Beddis teaches the motivations providing a mechanism for facilitating
negotiations between parties allowing that identifies bids and counteroffers based on investor inputted requirements. It would have been obvious to one having ordinary skill
before the effective filing date of the claimed invention to modify the trading process of
Altomare to include notifications of price status and negotiation mechanisms of Beddis
since Beddis teaches the motivations providing a mechanism for facilitating negotiations
between parties allowing that identifies bids and counteroffers based on investor
inputted requirements
Claim(s) 33-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2011/0060675 A1 by Altomare et al (Altomare), and further in view of US Pub. No. 2013/0185187 by Vasinkevich (Vasinkevich)
In reference to Claim 33:
Altomare teaches:
(PREVIOUSLY PRESENTED) A computerized electronic marketplace system ((Altomare) in at least Abstract ) comprising:
a platform computer system connected via a communications network to a plurality of remote user devices operated by investors and offerors of securities((Altomare) in at least FIG. 4; para 0073, para 0107, para 0121, para 0154, para 0156, para 0168, para 0171);
one or more processors and computer-readable memory storing instructions that cause the platform computer system ((Altomare) in at least para 0199, para 0203) to:
receive offering parameters from an offeror for securities offered pursuant to an exemption from registration under applicable securities laws, the offering parameters including at least one of a price range, a minimum transaction size, and a maximum offering amount ((Altomare) in at least para 0148, para 0395-0492);
display aggregated bid and offer price indications reflecting market depth across a plurality of investors on the remote user devices, the price indications derived from at least one of: investor-submitted indications of interest, historical platform transaction data, or a discount or premium applied relative to a reference price indication ((Altomare) in at least FIG. 13- 16; para 0219, para 0220, para 0222);
receive purchase or sale instructions for the exempt-offering securities from the remote user devices ((Altomare) in at least para 0140, para 0167); …
transmit the matched transaction record to a transfer agent system configured to update beneficial ownership records in book entry form. ((Altomare) in at least para 0228-0347, para 0349-0390)
Altomare does not explicitly teach:
automatically determine eligibility of each investor to participate in transactions for the exempt-offering securities by performing multi-factor verification comprising at least: accreditation status verification, and analysis of transfer restrictions applicable to the securities, prior to permitting order execution;
generate a matched transaction record upon determining a correspondence between a purchase instruction and a sale instruction within the offering parameters and upon confirming eligibility of all transacting parties; and
Vasinkevich teaches:
automatically determine eligibility of each investor to participate in transactions for the exempt-offering securities by performing multi-factor verification comprising at least: accreditation status verification, and analysis of transfer restrictions applicable to the securities, prior to permitting order execution ((Vasinkevich) in at least FIG. 2B; para 0080, para 0085 wherein the prior art teaches a plurality of verification options, para 0134, para 0174, para 0205);
generate a matched transaction record upon determining a correspondence between a purchase instruction and a sale instruction within the offering parameters and upon confirming eligibility of all transacting parties ((Vasinkevich) in at least para 0086, para 0092-0093, para 0130-0131, para 0177, para 0197, para 0215, para 0218, para 0237);
Both Altomare and Vasinkevich are directed toward processes for selling issued
shares. Vasinkevich teaches the motivation that secondary sales have different
regulatory requirements than new primary issues. It would have been obvious to one
having ordinary skill before the effective filing date of the claimed invention to modify the
transaction terms of Altomare to include the selling of secondary securities of
Vasinkevich since Vasinkevich teaches the motivation that secondary sales have
different regulatory requirements than new primary issues.
In reference to Claim 34:
The combination of Altomare and Vasinkevich discloses the limitations of independent claim 33. Altomare further discloses the limitations of dependent claim 34.
(PREVIOUSLY PRESENTED) The system of claim 33 (see rejection of claim 33 above), wherein the offeror comprises
Altomare does not explicitly teach:
at least one of an issuer placing exempt-offering securities pursuant to a securities exemption or an offeror other than the issuer of the exempt-offering securities.
Vasinkevich teaches:
at least one of an issuer placing exempt-offering securities pursuant to a securities exemption or an offeror other than the issuer of the exempt-offering securities. ((Vasinkevich) in at least para 0164, para 0236, para 0238-0240)
Both Altomare and Vasinkevich teach submitting bids for security transactions.
Vasinkevich teaches the motivation third party regulatory databases applied for
registration and compliance for regulation restriction. It would have been obvious to one
having ordinary skill before the effective filing date of the claimed invention to modify the
securities trading platform of Altomare to include the third party entities as taught by
Vasinkevich since Vasinkevich teaches the motivation third party regulatory databases
applied for registration and compliance for regulation restriction.
In reference to Claim 35:
The combination of Altomare and Vasinkevich discloses the limitations of independent claim 33. Altomare further discloses the limitations of dependent claim 35.
(PREVIOUSLY PRESENTED) The system of claim 33 (see rejection of claim 33 above),
wherein the price indications are derived from a price index based on historical platform transaction data.((Altomare) in at least para 0064, para 0094-0096, para 0116, para 0220, para 0222)
In reference to Claim 36:
Altomare teaches:
(PREVIOUSLY PRESENTED) A computer-implemented method ((Altomare) in at least Abstract) comprising:
receiving, by a platform computer system, offering parameters from an offeror for securities offered pursuant to an exemption from registration under applicable securities laws ((Altomare) in at least para 0148, para 0395-0492);
generating and displaying, on remote investor devices, aggregated bid and offer price indications for the exempt-offering securities, the price indications derived from investor-submitted indications of interest received by the platform computer system, reflecting current market depth for the securities ((Altomare) in at least FIG. 13- 16; para 0219, para 0220, para 0222);
receiving, from the remote investor devices, purchase or sale instructions specifying at least a price and a quantity for the exempt-offering securities ((Altomare) in at least para 0140, para 0167); …
transmitting the matched transaction record to a settlement system that coordinates with a transfer agent to update beneficial ownership records and initiate post-transaction reporting. ((Altomare) in at least para 0228-0347, para 0349-0390)
Altomare does not explicitly teach:
prior to executing any transaction, automatically performing multi-factor eligibility verification for each investor comprising: accreditation verification and analysis of transfer restrictions applicable to the securities being traded;
upon determining that a purchase instruction and a sale instruction satisfy the offering parameters and that all transacting parties satisfy the eligibility verification, generating a matched transaction record; and
Vasinkevich teaches:
prior to executing any transaction, automatically performing multi-factor eligibility verification for each investor comprising: accreditation verification and analysis of transfer restrictions applicable to the securities being traded ((Vasinkevich) in at least FIG. 2B; para 0080, para 0085 wherein the prior art teaches a plurality of verification options, para 0134, para 0174, para 0205);
upon determining that a purchase instruction and a sale instruction satisfy the offering parameters and that all transacting parties satisfy the eligibility verification, generating a matched transaction record ((Vasinkevich) in at least para 0086, para 0092-0093, para 0130-0131, para 0177, para 0197, para 0215, para 0218, para 0237);
Both Altomare and Vasinkevich are directed toward processes for selling issued
shares. Vasinkevich teaches the motivation that secondary sales have different
regulatory requirements than new primary issues. It would have been obvious to one
having ordinary skill before the effective filing date of the claimed invention to modify the
transaction terms of Altomare to include the selling of secondary securities of
Vasinkevich since Vasinkevich teaches the motivation that secondary sales have
different regulatory requirements than new primary issues.
In reference to Claim 37:
The combination of Altomare and Vasinkevich discloses the limitations of independent claim 36. Altomare further discloses the limitations of dependent claim 37.
(PREVIOUSLY PRESENTED) The system of claim 36 (see rejection of claim 36 above),
Altomare does not explicitly teach:
wherein the offeror comprises at least one of an issuer placing exempt-offering securities pursuant to a securities exemption or an offeror other than the issuer of the exempt-offering securities.
Vasinkevich teaches:
wherein the offeror comprises at least one of an issuer placing exempt-offering securities pursuant to a securities exemption or an offeror other than the issuer of the exempt-offering securities.((Vasinkevich) in at least para 0164, para 0236, para 0238-0240)
Both Altomare and Vasinkevich teach submitting bids for security transactions.
Vasinkevich teaches the motivation third party regulatory databases applied for
registration and compliance for regulation restriction. It would have been obvious to one
having ordinary skill before the effective filing date of the claimed invention to modify the
securities trading platform of Altomare to include the third party entities as taught by
Vasinkevich since Vasinkevich teaches the motivation third party regulatory databases
applied for registration and compliance for regulation restriction.
In reference to Claim 38:
Altomare teaches:
(PREVIOUSLY PRESENTED) A non-transitory computer-readable medium storing instructions that, when executed by one or more processors of a platform computer system ((Altomare) in at least para 0208-0210), cause the processors to:
receive offering parameters from an offeror for securities offered pursuant to an exemption from registration under applicable securities laws, including offeror-defined trading constraints ((Altomare) in at least para 0148, para 0395-0492);
calculate and display bid and offer price indications for the exempt-offering securities based on at least one of: aggregated investor indications of interest received by the platform computer system, or a discount or premium applied relative to a reference price indication ((Altomare) in at least FIG. 13- 16; para 0219, para 0220, para 0222);
receive purchase or sale instructions from remote investor devices ((Altomare) in at least para 0140, para 0167); …
transmit the transaction confirmation record to a transfer agent interface configured to update beneficial ownership records and initiate post-transaction reporting. ((Altomare) in at least para 0228-0347, para 0349-0390)
Altomare does not explicitly teach:
automatically determine investor eligibility to participate in transactions based on stored accreditation data and securities-specific transfer restriction data, prior to permitting execution of any transaction;
upon matching a purchase instruction with a sale instruction within the offering parameters and upon confirming eligibility of all transacting parties, generate a transaction confirmation record; and
Vasinkevich teaches:
automatically determine investor eligibility to participate in transactions based on stored accreditation data and securities-specific transfer restriction data, prior to permitting execution of any transaction ((Vasinkevich) in at least FIG. 2B; para 0080, para 0085 wherein the prior art teaches a plurality of verification options, para 0134, para 0174, para 0205);
upon matching a purchase instruction with a sale instruction within the offering parameters and upon confirming eligibility of all transacting parties, generate a transaction confirmation record ((Vasinkevich) in at least para 0086, para 0092-0093, para 0130-0131, para 0177, para 0197, para 0215, para 0218, para 0237);
Both Altomare and Vasinkevich are directed toward processes for selling issued
shares. Vasinkevich teaches the motivation that secondary sales have different
regulatory requirements than new primary issues. It would have been obvious to one
having ordinary skill before the effective filing date of the claimed invention to modify the
transaction terms of Altomare to include the selling of secondary securities of
Vasinkevich since Vasinkevich teaches the motivation that secondary sales have
different regulatory requirements than new primary issues.
In reference to Claim 39:
The combination of Altomare and Vasinkevich discloses the limitations of independent claim 38. Altomare further discloses the limitations of dependent claim 39.
(PREVIOUSLY PRESENTED) The system of claim 38 (see rejection of claim 38 above),
Altomare does not explicitly teach:
wherein the offeror comprises at least one of an issuer placing exempt-offering securities pursuant to a securities exemption or an offeror other than the issuer of the exempt-offering securities.
Vasinkevich teaches:
wherein the offeror comprises at least one of an issuer placing exempt-offering securities pursuant to a securities exemption or an offeror other than the issuer of the exempt-offering securities.((Vasinkevich) in at least para 0164, para 0236, para 0238-0240)
Both Altomare and Vasinkevich teach submitting bids for security transactions.
Vasinkevich teaches the motivation third party regulatory databases applied for
registration and compliance for regulation restriction. It would have been obvious to one
having ordinary skill before the effective filing date of the claimed invention to modify the
securities trading platform of Altomare to include the third party entities as taught by
Vasinkevich since Vasinkevich teaches the motivation third party regulatory databases
applied for registration and compliance for regulation restriction.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub No. 2014/0180811 A1 by Boal; Securities Law’s Dirty Little Secret by Rodrigues (2013); Some Securities Law Issues in Lending on Pledged Stock by Lehr (1982), Private Investment Companies In the Wake of the Financial Crisis: Rethinking the Effectiveness of the Sophisticated Investor Exemption by Martin (2012); EQUITY-BASED CR0WDFUNDING OUTSIDE THE USA by Joseph J. Dehner (2007); Angels on the Internet: The Elusive Promise of "TECHNOLOGICAL DISINTERMEDIATION" FOR UNREGISTERED OFFERINGS OF SECURITIES” by Langevoort (1998); AU-2007243607-A1 by Federspiel; CA-2361535-A1 by Hunking; CA-2681767-A1 by Arnott
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/MARY M GREGG/Examiner, Art Unit 3695
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