DETAILED ACTION
1. The present application is being examined under the pre-AIA first to invent provisions. This office action is in response to Applicant’s communication of November 24, 2025. Amendments to claims 4, 6, and 7 have been entered. Claims 4, 6-17 and 19-31 are pending and have been examined. The rejections and response to arguments are stated below.
Claim Rejections - 35 USC § 112
2. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
3. Claims 4, 6-17 and 19-31 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 4, 6 and 7 recite the limitation “wherein said message space defines the set of admissible orders, including defining at least one conditioning variable that at least one admissible order may reference”. It is not clear how “the message space defines the set of admissible orders, including defining at least one conditioning variable that at least one admissible order may reference”. It is better to state “message in the message space defines the set of admissible orders, including defining at least one conditioning variable that at least one admissible order may reference”. A message space defining something is figurative language that should be avoided in claim language. While such limitations/language may be acceptable in research papers submitted to Academic Journals for publication, such limitations are not sufficiently precise in the claims of a patent application for one of ordinary skill in the art to understand the invention. The Applicant needs to clarify and particularly point out and distinctly claim the subject matter which the applicant regards as the invention. Hence, it is better to state “wherein message in the message space defines the set of admissible orders, including defining at least one conditioning variable that at least one admissible order may reference”.
Similarly the limitations “(i) It cannot be determined whether said condition is met at a clearing of said admissible order submitted by said trader i given only the information contained in a first group of variables comprising: trader i’s allocation and transfers in said clearing; trader i’s own order history up until the time of said clearing; the time of said clearing; 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; the history of trades up until the time of said clearing excluding information about the trade allocation and transfers in said clearing; and 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; and (ii) It can be determined whether said condition is met at a clearing of said admissible order submitted by said trader i given the information contained in 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” (emphases added) are not sufficiently precise for one of ordinary skill in the art to understand and practice the claimed invention. Also, the metes and bounds of the emphasized portions are unclear.
Also limitations such as “2) wherein said at least one admissible complex order comprises at least one nonzero price; belongs to the group of either multi-unit orders, multi-item orders, or a combination of multi-unit orders and multi-item orders, and comprises at least one complex condition on at least one conditioning variable, wherein, given said trading mechanism, for at least one set of orders in the set of admissible orders from traders other than trader i, it cannot be determined whether said complex condition is met, given only the information contained in said first group of variables and in the trade allocations and transfers in the clearing of said admissible complex order” are not sufficiently precise for one of ordinary skill in the art to understand and practice the claimed invention. Also, the metes and bounds of the emphasized portions are unclear.
Likewise, the limitations “wherein said generated trade is jointly chosen 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 allocations in said generated trade” (emphases added) are vague and indefinite. Also, the metes and bounds of the emphasized portions of the limitations are unclear. While such limitations/language may be acceptable in research papers submitted to Academic Journals for publication, such limitations are not sufficiently precise in the claims of a patent application for one of ordinary skill in the art to understand the invention. The Applicant needs to clarify and particularly point out and distinctly claim the subject matter which the applicant regards as the invention. The Applicant is simply repeating the same arguments that were made in the previous responses to the previous Office actions. The Applicant has not made any attempt to clarify the language of the claim to conform to the standards expected in distinctly claiming the subject matter which the applicant regards as the invention. Despite repeated requests from the Examiner to amend the claim language to particularly point out and distinctly claim the subject matter which the applicant regards as the invention, the Applicant has not done so. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In view of these ambiguities, the scope of the claims is unclear.
Similarly, in the dependent claims the following phrases/limitations are not clear. “Generating a set of valid outstanding orders” (Claim 8), “a first price auction format; a second price auction format; a first price combinatorial auction format; a second price combinatorial auction format; a discriminatory price auction format; a uniform price auction format; a discriminatory price combinatorial auction format; a uniform price combinatorial auction format” (Claim 21), “NYSE Match-point” (Claim 22), “criterion selected from the group consisting of: … equity; dispersion; and price stability” (Claim 23), “one trading rule associated with said trading mechanism is selected from the group consisting of: rules regarding orders; rules regarding monetization; rules regarding a candidate set of items” (Claim 25), “at least one complex condition and at least one condition that is non‐complex selected from the group consisting of: pegging conditions; routing conditions; trade‐inspired conditions; a minimum execution size; and a bundle condition” (Claim 26), “trading apparatus operates in at least one round of a dynamic auction” (Claim 27), “wherein said orders are for items selected from the group consisting of: … data capacity; other tangible goods; and other intangible goods” (Claim 28), “operation in a rich setting” (Claim 29), “receiving at least one admissible complex order comprising a complex condition on at least one conditioning variable that contains information, at the clearing of said order, about: items bought; items sold; the auction allocation and transfers; statistics derived from information contained in said orders; variables whose calculation requires utilizing at least some information included in said orders; item‐less trades; features of orders matched with said at least one complex order; and impact on intra-trade information” (Claim 30), and “at least one admissible complex order comprising a complex condition on at least one conditioning variable that captures a concept selected from the group consisting of: price impact of an order; auction depth; market depth; liquidity; oversubscription; level of competition; equity; dispersion; supply‐demand‐imbalance; stability; and momentum” (Claim 31). Also, the metes and bounds of these identified claims are unclear. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In view of these ambiguities the scope of the claims is unclear. Applicant is respectfully advised to amend the claim language particularly for clarifying the limitations identified above.
Dependent claims are rejected based on ambiguities identified above and by virtue of dependence on a rejected claim.
The rejections below are interpreted in light of the 112 rejections discussed above.
Claim Rejections - 35 USC § 101
4. 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.
5. Claims 4, 6-17 and 19-31 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory Subject matter.
The claim(s) recite(s) a method for enhancing coordinated execution of orders submitted by traders to a trading computer system to be executed by said trading computer system, which is considered a judicial exception because it falls under the category of certain of methods of organizing human activity such as fundamental economic practices including trading and auctions and also commercial interactions including resolving agreements in the form of contracts as discussed below. This judicial exception is not integrated into a practical application as discussed below. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Analysis
Step 1: In the instant case, exemplary claim 6 is directed to a process.
Step 2A – Prong One: The limitations of “a) providing a trading mechanism comprising a clearing method for matching multiple traders in one clearing and comprising a message space that defines the set of admissible orders including defining at least one conditioning variable that at least one admissible order may reference; b) providing at least one selectable order input form that allows at least one trader i to submit admissible orders, wherein said admissible orders comprise at least one that is complex 1) wherein a given admissible order is a complex order 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: (i) it cannot be determined whether said condition is met at a clearing of said admissible order submitted by said trader i given only the information contained in a first group of variables comprising: trader i’s allocation and transfers in said clearing; trader i’s own order history up until the time of said clearing; the time of said clearing; 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; the history of trades up until the time of said clearing excluding information about the trade allocation and transfers in said clearing; and 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; and (ii) It can be determined whether said condition is met at a clearing of said admissible order submitted by said trader i given the information contained in 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; and 2) wherein said at least one admissible complex order comprises at least one nonzero price; belongs to the group of either multi-unit orders, multi-item orders, or a combination of multi-unit orders and multi-item orders, and comprises at least one complex condition on at least one complex condition on at least one conditioning variable, wherein, given said trading mechanism, for at least one set of orders in the set of admissible orders from traders other than trader i, it cannot be determined whether said complex condition is met, given only the information contained in said first group of variables and in the trade allocations and transfers in the clearing of said admissible complex order; b) receiving submitted admissible orders from said trader i and at least one trader other than said trader i with an order receiver; d) storing said admissible submitted orders, e) generating trades based on said admissible submitted orders, wherein said clearing method matches multiple traders at the clearing of said admissible submitted orders, wherein the trade generation involves using said clearing method to choose a generated trade at said clearing, wherein said generated trade is jointly chosen 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 allocations in said generated trade; f) reporting said trades with a reporting module” as drafted, when considered collectively as an ordered combination, without the italicized elements, is a process that, under the broadest reasonable interpretation, covers methods of organizing human activity such as fundamental economic practices including trading and auctions and also commercial interactions including resolving agreements in the form of contracts. Generating trades and reporting said trades is a fundamental economic practice. Generating trades and reporting said trades is also a commercial or legal interaction including resolving/fulfilling agreements in the form of contracts. That is, other than, a trading computer system, nothing in the claim precludes the steps from being performed as a method of organizing human activity. The trading mechanism; order receiver; the order storage module; the trade generator; and the reporting module of the trading computer system are interpreted to correspond to software programs/modules and memory. If the claim limitations, under the broadest reasonable interpretation, covers methods of organizing human activity but for the recitation of generic computer components, then it falls within the “Certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A – Prong Two: The judicial exception is not integrated into a practical application. In particular, the claim only recites the additional element of a trading computer system including the trading mechanism; order receiver; the order storage module; the trade generator; and the reporting module to perform all the steps. The software components of the trading computer system are interpreted to correspond to generic software programs/modules and memory suitably programmed to perform their respective functions. A plain reading of Figure 3 and associated descriptions in paragraphs [0030], [00295] – [00297] of the Applicant’s Specification reveals that the hardware component of the trading computer system may be a general-purpose networked computer system. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The trading computer system in all the steps is recited at a high-level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts no more than mere instructions to apply the exception using generic computer components. 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. Hence, claim 6 is directed to an abstract idea.
Step 2B: The claim does 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 trading computer system (including the hardware and software components of the system discussed earlier) suitably programmed to perform the steps, recited in the claim, amounts to no more than mere instructions to apply the exception using generic computer components. The trading mechanism; order receiver; the order storage module; the trade generator; and the reporting module of the trading computer system are interpreted to correspond to software programs/ modules and memory suitably programmed to perform their respective functions. The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Hence, independent claim 6 is not patent eligible. Independent claims 4 and 7 are also not patent eligible based on similar reasoning and rationale.
Dependent claims 8-17 and 19-31, when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations only refine the abstract idea further.
For instance in claim 8-11, the features “further comprising: an order manager configured for managing an event associated with 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 intra‐trade information based on at least one of said orders and said trades”; “further comprising: 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”, under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps further describe the intermediate steps of the process.
In claims 12-13, the features “further comprising: 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”, under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps further describe the intermediate conventional steps of storing and accessing.
In claims 14-15, the features “further comprising: a selectable order input form configured for being selected by said at least one trader; wherein said selectable order input form is selected from the group of selectable order input forms consisting of: a sentence specifier; a mathematical condition specifier; a function specifier; a range specifier; and a trade objective of said at least one trader”, under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps further describe the steps of inputting the data/order.
In claims 16-17, the features “further comprising: a trade storage module configured for storing information associated with said trades”, “further comprising: an instruction receiver configured for receiving trade reporting instructions”, under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps further describe the intermediate conventional steps of storing and receiving data/ information.
In claim 19, the feature “wherein said trade generator comprises: a clearing method module configured for executing a clearing method”, under the broadest reasonable interpretation, is a further refinement of methods of organizing human activity because this step further describes the final step of the process.
In claim 20-22, the features “wherein said clearing method comprises at least one of the following: a trading format, a trading objective and a tie breaker”, “wherein said trading format utilized by said trading computer system is selected from the group consisting of: a first price auction format; a second price auction format; a first price combinatorial auction format; a second price combinatorial auction format; a discriminatory price auction format; a uniform price auction format; a discriminatory price combinatorial auction format; a uniform price combinatorial auction format; and a combinatorial auction format; wherein said trading format utilized by said trading computer system is selected from the group consisting of: an exchange format; a trading format in which orders submitted consist only of quantities; NYSE Match-point; and platforms that send out intra‐trading information that is partly based on orders currently in the system”, under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps further describe the formats used in the intermediate steps of the process.
In claim 23, the feature “wherein the optimization of said trading objective involves the consideration of an effect of said generated trades on at least one criterion, said criterion selected from the group consisting of: auctioneer revenue; auctioneer cost; gains from trade; trade volume; equity; dispersion; and price stability”, under the broadest reasonable interpretation, is a further refinement of methods of organizing human activity because this step further describe the criterion used in an intermediate step of the process.
In claims 24-25, the features “wherein said trading mechanism comprises: at least one trading rule associated with said trading mechanism; wherein said at least one trading rule associated with said trading mechanism is selected from the group consisting of: rules regarding orders; rules regarding monetization; rules regarding a candidate set of items; and rules regarding when to clear a trade”, under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps further describe the rules used in the intermediate steps of the process.
In claim 26, the feature “wherein each of said at least one complex order comprises: at least one complex condition and at least one condition that is non‐complex selected from the group consisting of: pegging conditions; routing conditions; trade‐inspired conditions; a minimum execution size; and a bundle condition”, under the broadest reasonable interpretation, is a further refinement of methods of organizing human activity because this step further describe the conditions used in an intermediate step of the process.
In claim 27, the feature “wherein said trading computer system operates in at least one round of a dynamic auction”, under the broadest reasonable interpretation, is a further refinement of methods of organizing human activity because this step further describes the criterion used in an intermediate step of the process.
In claim 28, the feature “wherein said orders are for items selected from the group consisting of: public sector bonds, private sector bonds; bills; notes; stocks; exchange traded funds; derivatives; options; credit default swaps, variance swaps; commodities; power; oil drilling rights; emission allowances; emission credits; real estate; online advertising spots; patents; spectrum licenses; airport landing spots; data capacity; other tangible goods; and other intangible goods”, under the broadest reasonable interpretation, is a further refinement of methods of organizing human activity because this step further describe the type of orders used in the process.
In claim 29, the feature “wherein said trading computer system is configured for operation in a rich setting”, under the broadest reasonable interpretation, is a further refinement of methods of organizing human activity because this step further describes the environment in which the abstract idea is applied.
In claims 30-31, the features “wherein said order receiver is configured for receiving at least one complex order comprising a complex condition on at least one conditioning variable that contains information, at the clearing of said order, about: items bought; items sold; the auction allocation and transfers; statistics derived from information contained in said orders; variables whose calculation requires utilizing at least some information included in said orders; item‐less trades; features of orders matched with said at least one complex order; and impact on intra‐trade information”, “wherein said order receiver is configured for receiving said at least one complex order comprising a complex condition on at least one conditioning variable that captures a concept selected from the group consisting of: price impact of an order; auction depth; market depth; liquidity; oversubscription; level of competition; equity; dispersion; supply‐demand‐imbalance; stability; and momentum”, under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps further describe the rules, the variables and conditions used in the intermediate steps of the process.
Also, the limitations in many of these dependent claims further describe the different managers, accessors, receivers, comparators, executors, and modules used to perform the underlying process. For example, an order manager (claim 8), an intra‐trade information module (claim 9), an exogenous communication module (claim 10), an order routing module and an exogenous information accessor (claim 11), a trading mechanism storage module (claims 12-13), a trade storage module (claim 16), an instruction receiver (claim 17), a trade executor (claim 19). The managers, accessors, receivers, executors, and modules are interpreted to correspond to a combination of hardware and software elements. The types of hardware and software elements described in this claim are generic computer systems programmed to perform the specific functions. The claims at issue do not require any nonconventional computer, network, or other components, or even a non-conventional and non-generic arrangement of known, conventional pieces but merely call for performance of the claimed functions on a set of generic computer components. These additional elements perform their traditional functions recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components.
In all the dependent claims, the judicial exception is not integrated into a practical application because the limitations are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components. Also, the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; the claims do not affect a transformation or reduction of a particular article to a different state or thing; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment. In addition, the dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself. For these reasons, the dependent claims also are not patent eligible.
Response to Arguments
6. In response to Applicant’s arguments on pages 14-19 of the remarks that traverses the rejections under 35 USC 112, the Examiner respectfully disagrees.
Other than arguing that the limitations in the claims are clear (which they are clearly not clear to one of ordinary skill in the art), the Applicant has not made any effort to clarify the claimed subject matter. The Applicant needs to clarify and particularly point out and distinctly claim the subject matter which the applicant regards as the invention. For example, instead of stating “wherein said message space defines the set of admissible orders, including defining at least one conditioning variable that at least one admissible order may reference”, it is better to state “wherein message in the message space defines the set of admissible orders, including defining at least one conditioning variable that at least one admissible order may reference”. A message space defining something is figurative language that should be avoided when drafting a claim. The Applicant repeatedly keeps using the figurative language, despite repeated requests not do so, as it renders such limitations not sufficiently precise for one of ordinary skill in the art to understand the invention.
While such limitations/language (identified in the rejection) may be acceptable in research papers submitted to Academic Journals for publication, such limitations are not sufficiently precise in the claims of a patent application for one of ordinary skill in the art to understand the invention. The claims must be precise, particularly point out and distinctly claim the subject matter, which the applicant regards as his invention. Applicant’s statements such as “(i) It cannot be determined whether said condition is met at a clearing of said admissible order submitted by said trader i given only the information contained in a first group of variables comprising: [...] (ii) It can be determined whether said condition is met at a clearing of said admissible order submitted by said trader i given the information contained in a second group of variables comprising: [...]” do not provide clarity to the claims. Similarly, statements such as “the (i) statement simply says that the condition cannot be solely expressed with the "first group" of variables, because it cannot be determined whether the condition is met using the information contained in the "first group" of variables. Mathematically, the (ii) statement says that all the variables on which the condition depends are contained in the "second group" of variables, because it can be determined whether the condition is met using the information contained in the "second group" of variables. Together, (i) and (ii) say that the condition depends on some variables that are contained in the "second group" but not in the first group” do not provide clarity to the claims. Similarly, other statements made by the Applicant do not provide any further clarity to the claims. During the interview on June 22, 2018 suggestions were made by the Examiner to overcome the 112 rejections. Similar attempts were made during the interview on September 25, 2019 with the SPE Ryan Donlon, but the Applicant has not followed up on the suggestions to overcome the 112 rejections. In the present communication, the Applicant has merely presented the same/similar arguments as during the previous times instead of amending the claims to clarify the claimed invention. Since these arguments were addressed in the previous Office actions, all the response to these arguments is not repeated here. In the interest of compact prosecution, Applicant is requested to amend the claims to clarify the ambiguities identified in the rejection. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Applicants are respectfully advised to amend the claim language particularly for clarifying the limitations identified in the rejections. Also, the dependent claims have several ambiguities (as discussed in the rejections). The identified ambiguities in the dependent claims have not been addressed by the Applicant. This renders the Applicant’s response incomplete. The Examiner has tried his best to explain why the claim limitations not sufficiently precise for one of ordinary skill in the art to understand the invention. Hence, no further response is deemed necessary.
In response to Applicant’s arguments on pages 20-31 of the remarks that the claims are Patent-Eligible under 35 USC § 101 when considered under MPEP 2106, the Examiner respectfully disagrees.
The fact that the claims are Patent-Ineligible when considered under MPEP 2106 has already been addressed in the rejection and hence not all the details of the rejection are repeated here.
Response to Traversal 1
The alleged advantages (on pages 19-20 of the remarks) such as “enabling a reduction in the number of orders would indeed enable a significant reduction in the data traffic, by reducing the number of times that the standard per order, header and body information needs to be transmitted, the invention would thus enable a significant reduction in data traffic, by reducing the number of orders to as little as one order” are due to improvements in the abstract idea of a method for enhancing coordinated execution of orders submitted by traders to a trading computer system to be executed by said trading computer system. It does not involve any improvements to another technology, technical field, or improvements to the functioning of the computer itself.
Response to Traversal 2
As discussed above and in the previous Office actions and responses to arguments, the alleged advantages such as improvements in time lags and data traffic are due to improvements in the abstract idea of a method for enhancing coordinated execution of orders submitted by traders to a trading computer system to be executed by said trading computer system. It does not involve any improvements to another technology, technical field, or improvements to the functioning of the computer itself. To explain the rejection, the Examiner is not obligated to use the same language used in the MPEP. The Applicant's arguments alleging the lack of prior art as evidence that the claims contain an improvement and therefore are significantly more, this argument-sounding in § 102 novelty is beside the point for a §101 inquiry. See Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., No. 1: 10cv910 (LMB/TRJ), 2014 WL 5430956, at *11 (E.D. Va. Oct. 24, 2014)
Response to Traversal 3
Response to this traversal was already discussed in the Office action mailed on May 4, 2023 and hence not repeated here in detail. Also, as discussed in the rejection, the additional elements of the instant underlying process (in the Applicant’s invention), when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. This response is further augmented by the discussion of the USPTO guidelines incorporating the Berkheimer memo (discussed in the Office action mailed on May 4, 2023). Also as discussed in the rejection, the particular claimed way of “defining"/"processing"/"execution" of orders results in an improvement in the abstract idea of enhancing coordinated execution of orders submitted by traders to a trading computer system to be executed by said trading computer system. An improvement in an Abstract idea is not indicative of integration into a practical application. The alleged advantages such as “reduction of data traffic and lags” are due to improvements in the abstract idea of a method for enhancing coordinated execution of orders submitted by traders to a trading computer system to be executed by said trading computer system. For example, the rule for netting transactions is an accounting concept (rule). Application of this concept/rule would result in fewer transactions than otherwise without the netting. The netting of transactions results in fewer transactions making the overall process more efficient. However, application of this rule cannot be considered as an improvement in technology. Application of the Applicant’s invention does not involve any improvements to another technology, technical field, or improvements to the functioning of the computer itself.
Response to Traversal 4
As discussed in the rejection, the additional element of using a trading computer system (including the hardware and software components of the system discussed earlier) suitably programmed to perform the steps, recited in the claim, amounts to no more than mere instructions to apply the exception using generic computer components. The trading mechanism; order receiver; the order storage module; the trade generator; and the reporting module of the trading computer system are interpreted to correspond to software programs/ modules and memory suitably programmed to perform their respective functions. The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Hence, the claims are not patent eligible. Any improvements to the process achieved by applying the Applicant’s claimed invention are due to improvements in the abstract idea of enhancing coordinated execution of orders submitted by traders to a trading computer system to be executed by said trading computer system. The Applicant’s claims do not recite sufficient subject matter to take them from being in the realm of what is encompassed as an abstract idea into patentable subject matter and fail to add significantly more to “transform” the nature of the claims.
The Examiner disagrees with the Applicant’s assertion that “the specific limitations provide the capabilities of conditioning on certain information contained in other orders …. without the conditioning information being sent (compared to the prior art which involves/would involve publishing conditioning information through limit order books/data feeds), and with the conditioning being on contemporaneous orders of other users at the clearing” do or do not achieve a reduction in data traffic and lags in an electronic trading system” are improvements in technology”. As discussed earlier, these claimed features only improve the abstract idea of a method for enhancing coordinated execution of orders submitted by traders to a trading computer system to be executed by said trading computer system. Automating a manual process is insufficient to render a claim patent-eligible. See, e.g., Tranxition, Inc.v. Lenovo (U.S.) Inc., 664 F. App’x 968, 971 (Fed. Cir. 2016). The Applicant’s arguments regarding efficiencies such as “a reduction in data traffic from conditioning on information which is not sent/published /broadcasted, and conditioning on information contained in contemporaneous orders” are due to improvements in the abstract idea of a method for enhancing coordinated execution of orders submitted by traders to a trading computer system to be executed by said trading computer system. The trading computer system and its components are used as tools in their ordinary capacity to apply the abstract idea. By relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible (See Alice, 134 S. Ct. at 2359 (use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” is not an inventive concept). Therefore, the Applicant’s arguments are not persuasive.
Response to Traversal 5
The Applicant’s arguments have already been addressed in the rejection and as such no further explanation is deemed necessary.
Response to Traversal 6
The Examiner does not see the parallel between the Applicant’s claims and those in DDR. In DDR Holdings an improvement in web technology was used to address the problem of retaining web customers. DDR Holdings was solving a problem introduced by technology, such that it was a technological solution to a technological problem. The claims in DDR Holdings were patentable not because they were tied to the computer and the Internet but because the claims in DDR Holdings specified how interactions with the Internet were manipulated to yield a desired result—a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink. When the limitations of the DDR patent’s asserted claims are taken together as an ordered combination, the claims recite an invention that is not merely the routine or conventional use of the Internet. Hence, the claims in DDR Holdings were patent eligible. Whereas the Applicants’ invention is a business solution, using computers, to a problem rooted in an abstract idea. In the instant application, the computer is used in its normal, expected, and routine manner. The claims contain little more than a directive to “use the computer” to implement the abstract idea embraced by the claims. The transformation of an abstract idea into patent-eligible subject matter “requires ‘more than simply stat[ing] the [abstract idea] while adding the words ‘apply it.’’ Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1294). By relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible (See Alice, 134 S. Ct. at 2359 (use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” is not an inventive concept). Therefore, the Applicant’s arguments are not persuasive.
Response to Traversal 7
The Applicant’s arguments have already been addressed in the rejection and as such no further explanation is deemed necessary. Each and every limitation in the claims have been considered in the rejection. Hence, there is no oversimplification of the claims.
The Examiner does not see the parallel between the claims of the instant case and those of Enfish. In Enfish, the claims describe the steps of configuring a computer memory in accordance with a self-referential table, in both method claims and system claims. The focus of the claims in Enfish is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database). Specifically, the claimed invention in Enfish achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Hence, the Enfish claims were not directed to an abstract idea. On the other hand, the Applicant’s claims do not involve any improvements to another technology, technical field, or improvements to the functioning of the computer itself. The invention in Enfish was a technological solution to a technological problem (using self-referential table for a computer database rather than using conventional table for a computer database). Whereas the Applicants’ invention is a business solution, using computers, to a problem rooted in an abstract idea.
The Applicant has not demonstrated that the claims result in an improved computer, another technology, technical field or network. All the alleged improvements such as defining and processing a complex order are in the realm of abstract idea of enhancing coordinated execution of orders submitted by traders to a trading computer system. The computer is merely a platform on which the abstract idea is implemented. Steps not disclosed by prior art does not imply improvements to another technology, technical field, or improvements to the functioning of the computer itself. Steps not disclosed by prior art could be considered an improvement in the abstract idea. For example, an improvement in a claim directed to mathematical formulas will not imply improvements to another technology, technical field, or improvements to the functioning of the computer itself. Hence, Applicants’ arguments are not persuasive.
What the Applicant considers to be improvements in technology may, at best be characterized as, nothing more than improvements in the abstract idea of a method for enhancing coordinated execution of orders submitted by traders for execution by a trading computer system. It does not involve any improvements to another technology, technical field, or improvements to the functioning of the computer itself. The Applicant admits (in one of her previous assertions made in the prosecution history) that “that enabling a reduction in the number of orders would indeed enable a significant reduction in the data traffic, by reducing the number of times that 10 the standard per order, header and body information needs to be transmitted, the invention would thus enable a significant reduction in data traffic, by reducing the number of orders to as little as one order”. As explained by the examiner in the previous Office actions and by SPE Ryan Donlon (during the interview on September 18, 2019), reducing the number of orders is a business solution to a problem rooted in abstract idea. It is not a technological solution to a technological problem. Similarly, allowing for coordinated execution of orders without the conditioning information being broadcasted, is a business solution (not a technological solution), using computers, to a business problem. However, such a business solution cannot be attributed to any improvements to another technology, technical field, or improvements to the functioning of the computer itself. Such a business solution is a result of an improvement in the abstract idea of enhancing coordinated execution of orders submitted by traders to a trading computer system. It does not involve any improvements to another technology, technical field, or improvements to the functioning of the computer itself. Therefore, the Applicant’s arguments are not persuasive.
In summary, using computers for enhancing 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 does not imply improving the computer function of execution of orders. There is nothing, for example, in the pending claims to suggest that the claimed “trading computer system comprising a trading mechanism; an order receiver; an order storage module; a trade generator; and a reporting module” is somehow made more efficient or that the manner in which the trading computer system carries out its basic functions is otherwise improved in any way. The focus of the Applicant’s claims is not on any improved computer or network, but improved analysis of an abstract idea; and indeed, the specification makes clear that generic computer technology is usable to carry out the analysis. The claims at issue do not require any nonconventional computer, network, or other components, or even a non-conventional and non-generic arrangement of known, conventional pieces but merely call for performance of the claimed functions on a set of generic computer components. The elements of the instant process, when taken alone, each execute in a manner conventionally expected of these elements. The elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Hence, the additional elements do not add anything significantly more than an abstract idea. The Examiner would like to point out that while “receiving submitted orders, storing submitted admissible orders, defining qualifying conditions to be met by submitted orders, generating trades based on said submitted orders and based on certain criteria, and reporting said trades” are conventional functions of a computer, further refining these steps, by applying business rules, do not take them from being in the realm of what is encompassed as an abstract idea into patentable subject matter and therefore fail to add significantly more to “transform” the nature of the claims. An improvement in abstract idea is still abstract (SAP America v. Investpic *2-3 (“We may assume that the techniques claimed are “groundbreaking, innovative, or even brilliant,” but that is not enough for eligibility). The Applicant is merely using the computer system as a tool in its ordinary capacity, to implement the abstract idea. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. There are no improvements to another technology or technical field, no improvements to the functioning of the computer itself, transformation or reduction of a particular article to a different state or thing or any other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment as a result of performing the Applicants’ claimed method or executing the Applicants’ claimed system. Also, the addition of merely novel or non-routine components to the claimed idea does not necessarily turn an abstraction into something concrete (See Ultramercial, Inc. v. Hulu, LLC, _ F.3d __, 2014 WL 5904902, (Fed. Cir. Nov. 14, 2014). For all the foregoing these reasons, the claims do not recite significantly more than an abstract idea. Hence, Applicant’s arguments are not persuasive.
For these reasons and those stated in the rejections above, rejections of claims under 35 USC § 101 are maintained by the Examiner.
Conclusion
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
(a) Peterffy; Thomas Pechy (US Pub. 2018/0089754A1) discloses embodiments that include computer-implemented methods and systems that permit a market participant to automatically scale a block order into relatively smaller, incrementally priced scale trade component orders based on scale order parameters (such as price and size) provided by the market participant. The scale orders may continue automatically, without the need for further intervention from the market participant, until the total number of shares specified by the market participant is accumulated or sold. Some embodiments also permit the marker participant to automatically submit opposite-side profit-taking component orders against the market participant's original scale order components. The profit-taking orders can be automatically created and submitted when the original scale order component has executed.
8. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at
http://www.uspto.gov/interviewpractice.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Narayanswamy Subramanian whose telephone number is (571) 272-6751. The examiner can normally be reached Monday-Friday from 9:00 AM to 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Abhishek Vyas can be reached at (571) 270-1836. The fax number for Formal or Official faxes and Draft to the Patent Office is (571) 273-8300.
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/Narayanswamy Subramanian/
Primary Examiner
Art Unit 3691
February 2, 2026