DETAILED ACTION
This Final Office Action is in response to the application filed on 01/25/2011, the Remark filed on 11/07/2025 and the Request for Continued Examination filed on 11/07/2025.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/07/2025 has been entered.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1, 27 and 41 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1-3 of copending Application No. 13835787 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 1-53 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The recitation of the claimed invention is analyzed as follow, in which the abstract elements are boldfaced.
The claims recite:
A trading computer system for allowing enhanced coordinated execution of orders submitted by traders to said system, supporting orders from either multi-unit order, multi-item orders, or a combination of multi-unit orders and multi-item orders, and having a trading mechanism comprising a clearing method for matching multiple traders in one clearing and comprising a message space that defines admissible orders, said trading computer system comprising:
a) at least one selectable order input form that allows at least one trader i to submit admissible orders, wherein said message space defines admissible orders, and defines at least one conditioning variable that at least one admissible order may reference;
wherein said admissible orders comprise at least one order that involve at least one nonzero price and that belongings to the group of either multiunit orders, multi-item orders, or a combination of multi-unit orders and multi-item orders, and that is complex;
wherein a given admissible order is complex if it comprises at least one complex condition, wherein, given said trading mechanism, a condition comprised in an admissible order submitted by said trader i is complex if:
it is a condition on at least one conditioning variable: and if for at least one set of orders in the set of admissible orders from traders other than trader i, met at a clearing of said admissible order:
1) cannot be determined given only the information contained in the a first group of variables comprising:
trader i’s trade allocation and transfers in said clearing, trader i’s own order history up until the time of said clearing, the history of trades up until the time of said clearing excluding information about the trade allocation and transfers in said clearing, the history of intra-trade information available to said at least one trader i in said trading mechanism up until the time of said clearing excluding information about the trade allocation and transfers in said clearing, the time of said clearing, and the history, up until the time of said clearing, of exogenous variables to the trading mechanism on which said admissible order submitted by said trader i depends;
ii) can be determined given the information contained in the a second group of variables comprising:
the trade allocation and transfers in said clearing, and the entirety of trading mechanism information up until the time of said clearing;
b) an order receiver that receives submitted admissible orders
c) an order storage module that stores submitted admissible submitted orders;
d) a trade generator that generates trades based on submitted admissible orders and said trading mechanism,
wherein said clearing method matches multiple traders at the clearing of said admissible submitted orders.
wherein a price or prices corresponding to a generated trade allocation and transfers, for item or items on which said at least one submitted admissible complex • order was submitted, are determined endogenously;
wherein the trade generation involves using said clearing method to choose a generated trade at said clearing,
wherein said generated trade is associated with the realization of the at least one referenced conditioning variable at said clearing in which said generated trade is chosen.
wherein orders having unmet conditions at the realization of the at least one referenced conditioning variable at said clearing receive zero allocation in said generated trade.
e) a reporting module at said trading-apparatus that reports said generated trades.
an order manager configured for managing an event associated with 15 said orders selected from the group consisting of: submission of said orders; amendment of said orders; cancelling of said orders; generating a set of valid outstanding orders; confirming a receipt of said orders; publishing of a portion of said orders; and a trade generated based on said orders.
further comprising: an intra-trade information module configured for reporting and generating Intrartrade information based on at least one of said orders and said trades.
an exogenous communication module configured for communicating with at least one of an exogenous trading venue and a data feed, said exogenous trading venue being one other than a trading venue comprising said trading computer system.
wherein said exogenous communication module comprises: an order routing module configured for sending a portion of said orders to said exogenous trading venue; and an exogenous information accessor configured for accessing information from at least one of said exogenous trading venue and said data feed.
a trading mechanism storage module configured for storing said
trading mechanism.
wherein said trading mechanism storage module is configured to be accessible by said trade generator
The ordered combination of the recited limitations is a process that, under its broadest reasonable interpretation, covers the providing of a trading mechanism but for the recitation of generic computer components. That is, other than reciting generic computing language such as apparatus, hardware device and computer system, nothing in the claim elements that precludes the steps from that of providing the trading mechanism. For example, but for the “computer” language, the recited claim limitation in the context of the claimed invention encompasses one or more person manually executing the steps of the trading mechanism. If a claim, under its broadest reasonable interpretation, covers a commercial activity but for the recitation of certain generic computing components, then it falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas. As such, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recite the additional element of computer system to perform the form providing, receiving, storing, order generating, and reporting steps. The computer system in the above steps is recited at a high-level of generality (i.e., as a generic computer component performing steps of the recited abstract idea) such that it amounts no more than mere instruction to apply the exception using a generic computer component. 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. Thus, the claims is directed to an abstract idea.
The claims, when considered both individually and as an ordered combination, do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer system to provide a trading mechanism amounts to no more than mere instructions to apply the exception using generic computer component. Mere instruction to apply an exception using a generic computer cannot provide an inventive concept. Such additional elements are determined to not contain an inventive concept according to MPEP 2106.05(f). It should be noted that (1) the “recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not provide significantly more because this type of recitation is equivalent to the words “apply it””, and (2) “use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more”. (See MPEP 2106.05 (f))
Additional elements that require no more than a generic computer to perform generic computer functions includes receiving data (Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec,), storing data, (Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc.) accessing stored data (Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc.), reporting data (Presenting offers and gathering statistics, OIP Techs.), and communicating with a data feed (Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec,). These generic computer functions are factually determined to be well-understood, routine and conventional activities previously known to the industry as referenced by MPEP 2106.05(d) II according the USPTO Memorandum on Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) dated April 19 2018.
No additional element currently recited in the claims amount the claims to be significantly more than the cited abstract idea. Therefore, claims 1-53 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed 11/07/2025 have been fully considered but they are not persuasive.
As per traversal 1-2, the examiner maintains that the applicant failed to substantiate the assertion that a more complex trading mechanism would somehow reduce data traffic and provide technological improvement. The applicant cited 0124 that “complex orders contain complex conditions on conditioning variables, where the complex conditions have to hold when the order clears/at the clearing …”. Yet, no logical relationship is established regarding how such disclosure would substantiate the assertion that claimed invention reduce data traffic and provide technological improvement. The applicant raised a position for the first time that “zero data is published/broadcasted/sent to market participants as a data feed/data traffic”. However, neither 0055 and 0124, or the entire disclosure, discuss the technological need of data traffic reduction or the optimization of data traffic. The single instance of discuss about optimization is found in 0094, which recite “the optimization of the trading objective 152 involves the consideration of an effect of the generated trades on at least one criterion, the criterion selected from the group consisting of: auctioneer revenue; auctioneer cost; gains from trade; trade volume; maximizing auctioneer revenue; equity; dispersion; and price stability.” The examiner respectfully noted data traffic is not one of the disclosed criterion.
The examiner maintains that the applicant failed to provide support from the Specification to substantiate the alleged improvement of reducing data traffic. The applicant provided after-the-fact reasoning in attempt to support the alleged improvement of reduce data traffic and lag. However, it should be noted that nowhere does the entire disclosure of this application provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing the alleged improvement of reduce data traffic and lag. Even paragraph 0136 and 0202 acknowledge that it is the easier to calculate condition being selected to be less computationally intensive. As less difficult trade order is of course less computationally intensive, but what does it have to do with the technology executing the order? Thus, such alleged improvement is at best an improvement to the Judicial Exception, namely a trading mechanism with reduced data, not to a particular technology nor to the functionality of the computer itself. In another word, while a compacted transaction process would require less transaction information or transaction steps than an unimproved transaction process, the improvement is irrelevant to what technological platform the transaction is implemented on. Since the alleged improvement is directed to the Judicial Exception, not the technological platform, the alleged improvement does not constitute to an improvement to the functionality of the computer itself.
As per traversal 3-4, the examiner maintains that the alleged improvement of reducing data traffic is at best an improvement to the Judicial Exception, namely a trading mechanism with reduced data, not to a particular technology nor to the functionality of the computer itself. The applicant argued that there is not expressive requirement requiring that the improvement not be independent or irrelevant of what technological platform the improvement is provided to. The applicant should however note that the improvement that could integrate a Judicial Exception into practical application are an improvement in the functioning of a computer, or an improvement to other technology or technical field. (See MPEP 2106.04(d)) Thus, if an alleged improvement is independent of or irrelevant to the particular technology, the alleged improvement would not logically be considered to be a technological improvement. For example, assuming the instant trading mechanism does reduce data traffic, the reduced amount data would too be achieved should the trading mechanism in absence of a computer because the alleged reduction in data traffic is stemmed from the claimed trading mechanism or the way trade orders are processed based on conditioning variables. If the reduced data is not particular to computer functionality but is a product of the Judicial Exception itself, the argument that the reduced data being an improvement to computer functionality cannot be substantiated.
As per traversal 5, the examiner disagrees that the claims improve the functioning of electronic trading system by reducing time lags/network latency and data traffic. As explained above, the Specification is silent on the endeavor of reducing time lags or network latency and data traffic. It should also be noted that alleged reduction in data traffic is stemmed from the claimed trading mechanism or the way trade orders are processed based on conditioning variables. No of these conditioning variables is disclosed to be computer or technology related. Paragraph 0056, 0058 and 0065 provide an example of variable as “the time at which bids are submitted matters”, 0076 discussed variable as “another trading venue”; 0076 discussed variable as “price impact of an order, auction depth, market depth, liquidity oversubscription; level of completion; equity dispersion; supply-demand-imbalance; stability; and momentum; 0115 discussed variable as “best bid for a stock” 0105, 0217 discussed variable as “price impact”, 0243 recites “variables that depend on the auction results, such as revenue or the auction price”. The examiner believes sufficient disclosure from Specification indicates that the variables the claimed trading mechanism condition on are unrelated to data traffic or computer technology.
As per traversal 6, it should be noted that hardware being deemed generic does not preclude the invention from providing improvements does not contradict the finding that the claims recite a Judicial Exception (Step 2A prong one: YES) but do not integrate the Judicial Exception into practical application. (Step 2A prong two: NO) In fact, MPEP 2106.05(f) provided detail discussion on how merely apply a Judicial Exception to a generic computing environment does not result in practical application. As discussed above, an improved Judicial Exception, such as allegedly improved trading mechanism here, is not an improvement to another technology, nor is it an improvement to computer functionality mere because a generic computer is invoked to apply the Judicial Exception.
As per traversal 7, the crux of McRO is the automation of a task that is previously performed only subjectively by human. The mere invoking of a computer to apply a new trading mechanism does not share the same rationale of improving computer functionality. As discussed above, an improved Judicial Exception, such as allegedly improved trading mechanism here, is not an improvement to another technology, nor is it an improvement to computer functionality mere because a generic computer is invoked to apply the Judicial Exception.
As per traversal 8, the applicant alleged that examiner oversimplified the claims, citing Enfish. However, it should be noted that the self-referential table in Enfish is particular to database technology, while the claimed trading mechanism is applied is a Mere Instruction to Apply fashion. As discussed in the response to traversal 2, a trading mechanism that is more compact or efficient is a more compact and efficient trading mechanism. The improvement is attributed to the trading mechanism, not the technological platform the trading mechanism. Moreover, the examiner noted out of the whole 256 paragraphs of specification, the conception of data traffic is never discussed, the term “network” was only recited six times but none of which is related the reduction of network traffic. Thus, the examiner maintains that the claimed invention do not provide the alleged improvement to computer functionality.
As per traversal 9, while the response inadvertently at “As explain above”, the response sufficiently pointed out what Step 2A of the subject matter eligibility test is about and that it is not about the applicant’s alleged in the previous traversal 5.
The applicant’s arguments/traversals were fully considered but are found not persuasive.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHO KWONG whose telephone number is (571)270-7955. The examiner can normally be reached 9am - 5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL W ANDERSON can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHO YIU KWONG/Primary Examiner, Art Unit 3693