DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Receipt of Applicant’s amendments filed on December 23, 2025 is acknowledged.
Response to Amendment
Applicant amended claim 1.
Applicant cancelled claim 30.
Applicant previously cancelled claims 3, 10, and 12-27.
Claims 1, 2, 4-9, 11, 28, 29, and 31 are pending and have been examined.
Response to Arguments
Applicant's arguments filed December 23, 2025 have been fully considered but they are not persuasive.
Regarding 101 Rejections
Examiner initially rejected claims 1, 2, 4-9, 11, and 28-31 under 35 USC 101 as being directed to non-statutory subject matter.
Applicant argued that the claims do not recite an abstract idea. Examiner does not find this argument persuasive. Applicant merely alleges the claims do not recite an abstract idea and provides no analysis as to why the claims are not directed to Certain Methods of Organizing Human Activity. Merely having a different opinion as to how to describe the thrust of the claims does not change what the claims actually recite. Examiner identified the limitations which define the abstract idea and how they are directed to a fundamental economic practice. Since they are a fundamental economic practice as well as commercial/legal interactions the claims fall into the grouping of Certain Methods of Organizing Human Activity and therefore constitute an abstract idea (and thus a judicial exception). The additional technological components and their use in the claims do not amount to a non-abstract idea; but rather are indicative of generally linking the abstract idea to a computer environment. Applicant merely focuses on the utility of the claims which does not amount to a non-abstract idea/eligible subject matter. Applicant also argued that because their claims reduce latency their claims recite eligible subject matter. Applicant’s specification barely discusses latency nor explains how its methodology actually reduces latency. This argument was unpersuasive to Examiner and the PTAB on multiple occasions.
Applicant argued that they recite significantly more because the claims recite something other than what is well understood, routine, and conventional. Examiner does not find this argument persuasive. A “useful combination of elements” is not the standard for determining if something is something other than what is well understood, routine, and conventional. Merely because Applicant’s claims do something different than the prior art does not mean its claims are something other than what is well understood, routine, and conventional. Applicant again argued that Examiner has not provided the proper evidence/analysis that the claims are well-understood, routine and conventional. Examiner does not find this argument persuasive. Applicant is mistaken that Examiner must provide evidence that the underlying abstract idea is well-understood, routine and conventional. It is the additional elements that must be shown to be well-understood, routine and conventional. Outside of the abstract idea, there is only the computer implementation of the abstract idea and extra-solution activity. Examiner provided evidence that these are well-understood, routine and conventional limitations. Examiner has provided the proper evidence as required by Berkheimer.
Examiner maintains this rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, 4-9, 11, 28, 29, and 31 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1; there is no written support for the limitation “temporarily halt, by the execution manager subsystem, operation of the FAST order module prior to the execution of the instructions of the at least one order, thereby preventing the routing of the at least one order to the order book for immediate execution”. The specification does not indicate that what is halted is the FAST order module but rather the risk manager module. It also does not teach that this prevents the routing of orders for immediate execution.
Claims 2, 4-9, 11, 28, 29, and 31 are rejected due to their dependence on independent claim 1.
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, 2, 4-9, 11, 28, 29, and 31 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite the abstract idea which may be summarized as assessing whether an electronic (financial) order violates a predetermined threshold.
Step 1 Analysis
Applicants claims are directed to a machine (claims 1, 2, 4-9, 11, and 28-31).
Step 2A, Prong 1 Analysis
Claim 1 recites the abstract idea/limitations of:
establish at least one policy comprising setting one or more predetermined thresholds associated with protection characteristics for one or more transactions;
transmit information, the information comprising existing orders;
receive a plurality of electronic orders,
wherein each of a first one or more… orders of the plurality of… orders comprises instructions to route the first one or more… orders for immediate execution against a corresponding existing order within the order book;
monitor for information indicative of the risk protection characteristics;
determine, responsive to the monitoring, that at least one order among the first one or more… orders violates the one or more predetermined thresholds;
temporarily halt operation prior to the execution of the instructions of the at least one order, thereby preventing the routing of the at least one order to the order book for immediate execution;
transmit the at least one order for execution;
and resume operation;
As drafted these limitations are a process that falls within the “Certain Methods of Organizing Human Activity grouping of abstract ideas; but for the recitation of generic computer components. If a claim limitation, under its broadest reasonable interpretation, recites performance of the limitation as a fundamental economic practice, as well as commercial/legal interactions, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. By reciting/claiming a certain method of organizing human activity, Applicant’s claims recite an abstract idea.
Step 2A, Prong 2 Analysis
This judicial exception is not integrated into a practical application because the claims only recites system components for implementing the abstract idea and extra-solution activity. The claims recite the additional limitations of one or more specialized computers, one or more external electronic exchanges, a network, computer-readable instructions, a non- transitory computer-readable storage medium, at least one processor, an interface, an order manager subsystem, an execution manager subsystem, electronic orders, participant systems, an order book, a reporting manager subsystem, modules; and they are recited at a high level of generality. These system components amount to no more than mere instructions to apply the exception using a generic computer. These limitations generally link the use of the judicial exception to a technological environment and are not indicative of integration into a practical application. The limitations of:
transmit information, the information comprising existing orders;
receive a plurality of electronic orders,
transmit the at least one order for execution;
amount to insignificant extra-solution activity. These steps are mere sending and receiving of data, which courts have recognized as insignificant extra-solution activities see MPEP 2106.05(d)(II)(i). These additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims as a whole do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea without a practical application.
Step 2B Analysis
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of one or more specialized computers, one or more external electronic exchanges, a network, computer-readable instructions, a non- transitory computer-readable storage medium, at least one processor, an interface, an order manager subsystem, an execution manager subsystem, electronic orders, participant systems, an order book, a reporting manager subsystem, modules; amount to no more than mere components to implement the judicial exception using a generic computer components. For the same reason these elements are not sufficient to provide an inventive concept. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The limitations of:
transmit information, the information comprising existing orders;
receive a plurality of electronic orders,
transmit the at least one order for execution;
amount to the sending and receiving data between devices, claimed at a high level of generality. These insignificant extra-solution activities are also well-understood, routine, and conventional as recognized by the federal courts See MPEP 2106.05(d)(II)(i). See Applicant’s specification paragraphs [0050-0053], [0106], about implementation of the abstract idea using general purpose or special purpose computing devices; and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus, Applicant’s claims are not patent eligible.
Dependent Claims Analysis
As for dependent claims 2, 5-9, 11, 28, 29, and 31, these claims recite limitations that further define the same abstract idea noted in independent claim 1. Therefore, claims 2, 5-9, 11, 28, 29, and 31 are considered ineligible subject matter for the reasons given above.
As for dependent claims 4 and 28, these claims recite limitations that further define the same abstract idea noted in independent claims 1. In addition, the recite the additional elements of
receive an inbound order
transmit the display price for the side
This is considered insignificant extra-solution activity, because as drafted the limitations are mere data gathering and storing of information. These limitations do not qualify as a practical application of the judicial exception or significantly more. See MPEP 2106.05(g). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. Therefore, claims 4 and 28 are considered ineligible subject matter.
Thus, the dependent claims 2, 4-9, 11, 28, 29, and 31 are not patent-eligible either.
Examiner Request
The Applicant is requested to indicate where in the specification there is support for amendments to claims should Applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112 first paragraph issues that can arise when claims are amended without support in the specification. The Examiner thanks the Applicant in advance.
Prior Art
There was no prior art rejection on file in the present case. Examiner conducted an updated prior art search in view of the broadened claims. In view of the updated search, Examiner will not provide an art rejection at this time.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 MICHAEL J WARDEN whose telephone number is (571)272-9602. The examiner can normally be reached M-F; 9-6 CDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett M Sigmond can be reached at 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J. WARDEN/
Examiner
Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694