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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 5, 2026 has been entered.
Response to Amendment
Applicant amended claims 1 and 28.
Applicant cancelled claim 30.
Applicant previously cancelled claims 3, 10, 12-27, and 30.
Claims 1, 2, 4-9, 11, 28, 29, and 31 are pending and have been examined.
Response to Arguments
Applicant's arguments filed June 5, 2026 have been fully considered but they are not persuasive.
Regarding 112 Rejections
Examiner initially rejected claims 1, 2, 4-9, 11, 28, 29, and 31 under 35 USC 112(a) / 1st paragraph as failing to comply with the written description requirement. Applicant deleted the limitation in question, rendering the rejection moot. In view of the amended claims Examiner withdraws this rejection.
Regarding 101 Rejections
Examiner initially rejected claims 1, 2, 4-9, 11, 28, 29, and 31 under 35 USC 101 as being directed to non-statutory subject matter.
Applicant argued that the claims are not directed to Certain Methods of Organizing Human Activity. Examiner does not find this argument persuasive. Merely having a different opinion as to how to describe the thrust of the claims does not change what the claims actually recite. The fact that the method is being performed by modules/monitors/computer components does not change the abstract nature of the claims. These components merely act in lieu of a human and their specific arrangement adds nothing that isn’t already there (e.g., the filtering done server side in BASCOM). 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 argued its claims are similar to those in Ex Parte Desjardins. Examiner does not find this argument persuasive. In those cases claims were found to be eligible because in those cases recited technical improvement to machine-learning systems themselves. For example in Desjardins the specification identified improvements as to how the machine learning model itself operates, including training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems. In Applicant’s claims there is no similar improvement to how the machine learning/AI model functions. Applicant merely notes the utility of the claims which in and of itself is not a technical improvement. The manner in which information is analyzed does not amount to a technical improvement.
Applicant argued that its claims are similar to those BASCOM. Examiner does not find this argument persuasive. In BASCOM it was the specific combination, filtering at a specific location which amounted to significantly more. Applicant’s claims do not contain similar subject matter where conventional activities are being performed in an unconventional manner, such as the filtering in BASCOM. Applicant is merely alleging the claims are similar to BASCOM and have an unconventional combination of limitations. Applicant has not expressed which limitations in combination with each other amount to significantly more or how their combination results in significantly more (similar to how the filtering in BASCOM was improved by filtering server side). Merely having specific components/modules perform specific actions does not amount to eligible subject matter.
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 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 § 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 storing one or more predetermined thresholds associated with protection characteristics for one or more transactions,
the one or more predetermined thresholds comprising at least one of a single-trade quantity threshold, a single-trade percentage threshold, a trade-series quantity threshold, and a trade-series percentage threshold;
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 at least one trade executed against at least one of the single-trade quantity threshold and the single-trade percentage threshold;
monitor a series of trades executed within a trade series duration against at least one of the trade-series quantity threshold and the trade-series percentage threshold;
identify responsive to the respective monitoring, that at least one trade is an irregular trade based on a violation of at least one of the single-trade quantity threshold, the single-trade percentage threshold, the trade-series quantity threshold, and the trade-series percentage threshold,
and report the irregular trade, the at least one trade associated with the first one or more electronic orders;
responsive receiving the irregular trade, temporarily halt trade execution for a duration of time, thereby preventing execution of the instructions of the first one or more electronic orders to route to the order book for immediate execution;
cancel or bust one or more of the irregular trade and one or more trades executing concurrently with the irregular trade; and
and resume trade execution after the duration of time.
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, a single trade monitor, a trade series monitor, a risk manager module, an execution parameter store; 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,
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, a single trade monitor, a trade series monitor, a risk manager module, an execution parameter store; 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,
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
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
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