DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
This action is in reply to the communication(s) filed on 24 December 2025.
Claim(s) 6, 10-12, 15, 21, 25-27 and 30 is/are cancelled.
Claim(s) 1 and 16 is/are amended.
Claim(s) 1-5, 7-9, 13-14, 16-20, 22-24, 28-29 and 31-32 is/are currently pending and have been examined.
Patent Trial and Appeal Board (PTAB) Decision
On 22 July 2025, the PTAB affirmed the 101 rejection of Claims 1-5, 7-9, 13-14, 16-20, 22-24, 28-29 and 31-32. On 1 September 2021, the PTAB affirmed the 101 rejection of Claims 1-30. The 112 rejection of Claims 1-20 was reversed. On 1 May 2019, the PTAB affirmed the 101 rejection of Claims 1-30.
Response to Arguments
Applicant's arguments filed 24 December 2025 have been fully considered but they are not persuasive.
Claim Rejections – 35 U.S.C. §101
Step 2A
Applicant argues that the Examiner fails to consider the alleged additional elements as a whole. This is incorrect. The Non-Final Rejection filed on 02 October 2025 recites on page 7: “These element(s) in combination do not add anything that is not already present when the steps are considered separately”. Thus the claims were properly considered as a whole.
Applicant argues that the anyone that has dealt with a corrupted Word document that won’t open and has had to recover the file would understand that transformation from one type of file format (i.e. from a .docx to a .pdf file) is not a requirement for it to be considered a technical process. Examiner notes that this is not a standard by which the courts have set forth for eligibility.
Applicant argues the claims are eligible for reasons similar to Example 42. Examiner respectfully disagrees. In Example 42, the claims described medical records that were stored in a non-standard format selected by whichever hardware or software platform is in use in the medical provider’s local office. These medical records were shared among medical providers which were often-times incomplete since records in separate locations are not timely or readily-shared or cannot be consolidated due to format inconsistencies. Claim 1 recited a combination of additional elements which converted non-standardized form information to a standardized format. The claim as a whole integrates the method of organizing human activity into a practical application. Specifically, the additional elements recite a specific improvement over prior art systems by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user. Applicant’s claims are not converting non-standardized form information to a standardized format but rather are changing the content of the data which applicant appears to understand and admit (“The Specification does not explicitly disclose that this process involves the conversion of the electronic data from one file format to another file format,…” remarks dated 24 December 2025 at page 12). The instant claims are not analogous to Example 42.
Step 2B
Applicant repeats their arguments regarding conversion of trade information, regardless of its formation. Examiner Respectfully disagrees. “Although the conclusion of whether a claim is eligible at Step 2B requires that all relevant considerations be evaluated, most of these considerations were already evaluated in Step 2A Prong Two. Thus, in Step 2B, examiners should:
• Carry over their identification of the additional element(s) in the claim from Step 2A Prong Two;
• Carry over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a) - (c), (e) (f) and (h):
• Re-evaluate any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant; and
• Evaluate whether any additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, per MPEP § 2106.05(d)” (See MPEP 2106.05(II)).
In both the prior and instant Office Action, the conclusions from Step 2A Prong Two are equally applied in Step 2B which further re-evaluates additional elements which are considered to be insignificant extra-solution activity and evaluates these elements as per MPEP §2106.05(d) to be well-understood, routine, and conventional activity. Said elements which are considered to be insignificant extra-solution activity are evaluated as well-understood, routine, and conventional as per the evidentiary requirements detailed in MPEP §2106.07(a)(III) utilizing option (B) via citation to one or more of the court decisions discussed in MPEP §2106.05(d)(II). Thus, there are no further elements to evaluate under Step 2B. Most considerations relating to any additional elements were already evaluated in Step 2A Prong Two and thus do not require further re-evaluation in Step 2B.
Applicant argues that the claims were rejected as merely reciting well-understood, routine, and conventional features. This is incorrect. As cited above, the analysis of well-understood, routine, and convention requires: “Re-evaluate any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant;” Thus only the elements which are considered to be insignificant extra-solution activity require re-evaluation. In both the prior and instant Office Action, the conclusions from Step 2A Prong Two are equally applied in Step 2B which further re-evaluates additional elements which are considered to be insignificant extra-solution activity and evaluates these elements as per MPEP §2106.05(d) to be well-understood, routine, and conventional activity. Said elements which are considered to be insignificant extra-solution activity are evaluated as well-understood, routine, and conventional as per the evidentiary requirements detailed in MPEP §2106.07(a)(III) utilizing option (B) via citation to one or more of the court decisions discussed in MPEP §2106.05(d)(II). See the instant Office Action.
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.
Step 1 of the 101 Analysis:
Claims 1-5, 7-9, 13-14, 16-20, 22-24, 28-29 and 31-32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recites a method and system for Conducting and Exchange Auction. These are a process and machine which are within the four categories of statutory subject matter.
Step 2A Prong 1 of the 101 Analysis:
The following limitations and/or similar versions are recited in claim(s) 1 and 16:
Claim(s) 1 and 16:
“receiving,…, legacy position data for a first digital asset…, the legacy position data comprising a first format;”
“determining,…, that the first format is incompatible with a clearinghouse server of the system;”
“initiating,…,a user-controlled reformatting process of the legacy position data utilizing peer position data by:”
“extracting one or more attributes from the legacy position data;”
“matching the one or more attributes of the legacy position data with one or more attributes extracted from the peer position data submitted…, the peer position data comprising the first format,”
“generating one or more first proposed transactions based on the matched one or more attributes, wherein each of the one or more first proposed transactions, if executed, cancels out the legacy position data and the respective peer position data,”
“generating for each of the one or more first proposed transactions, a corresponding second proposed transaction thereby forming one or more second proposed transactions, wherein each second proposed transaction, if executed creates new position data for a second digital asset that is equivalent to the legacy position data, the new position data comprising a second format compatible with the clearinghouse server,”
“displaying, on a trade summary screen…, the one or more second proposed transactions as a plurality of proposed trades, and
“initiating a timer for a first predetermined period of time during which…accept user input to the trade summary screen for the plurality of proposed trades;”
“receiving,…, a selection of at least one proposed trade of the plurality of proposed trades prior to expiration of the timer, the selection canceling the at least one proposed trade;”
“upon expiration of the timer, entering a second predetermined period of time during which…reject user input to the trade summary screen for the plurality of proposed trades,”
“for each remaining proposed trade of the plurality of proposed trades: automatically executing,…, the first proposed transaction, automatically executing,…, the corresponding second proposed transaction, and automatically transmitting,…, the new position data…for processing.”
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, describes Fundamental Economic Principles or Practices but for the recitation of generic computer components. That is, other than reciting “an exchange server”, “at least one processor”, “at least one non-transitory computer-readable storage medium”, and nothing in the claims’ elements precludes the steps from practically describing Fundamental Economic Principles or Practices. For example, but for the recited computer language, the limitations in the context of this claim describes Financial Trading. Financial Trading is recited when conducting a multilateral exchange auction that results in offsetting of positions associated with a first financial instrument and replacing the offset positions with replacement position associated with a second financial instrument. If a claim limitations, under their broadest reasonable interpretation, describes Fundamental Economic Principles or Practices but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Activity” grouping of abstract ideas.
Accordingly, the independent claims recite an abstract idea.
Step 2A Prong 2 of the 101 Analysis:
This judicial exception is not integrated into a practical application. In particular, the independent claim(s) recite the following (or similar) additional elements:
Claim(s) 1 and 16:
“…by an exchange server…from a first user device via a network…”
“…by the exchange server…”
“…by the exchange server…”
“…by one or more additional user devices…”
“storing, in a memory, the one or more first proposed transactions and the one or more second proposed transactions,”
“…of a graphical user interface (“GUI”) of the first user device…”
“…the GUI is configured to…”
“…by the GUI…,”
“…the GUI is configured to…”
“…by the exchange server…”
“…by the exchange server…”
“…by the exchange server…”
“…to the clearinghouse server…”
Claim 16:
“an exchange server comprising at least one processor and at least one non-transitory computer-readable storage medium having computer-readable program code portions stored therein, wherein the computer-readable program code portions, when executed, cause the exchange server to:”
The computer components (severs, user devices, memory, GUI, processors, and non-transitory computer-readable medium) are recited at a high level of generality (i.e. as generic servers, generic user devices, a generic GUI, generic processors, and generic storage) such that it amounts to no more than mere instructions to implement the judicial exception on a computer or by using a computer merely as a tool to perform an existing process. These element(s) in combination do not add anything that is not already present when the steps are considered separately. Simply implementing an abstract idea on a computer as a tool to perform an existing process is not indicative of integration into a practical application (See MPEP § 2106.05(f).)
The storing step(s) are recited at a high-level of generality (i.e., as generally storing data) such that they amounts to no more than mere data gathering which is adding insignificant extra-solution activity. These element(s) in combination do not add anything that is not already present when the steps are considered separately. Simply adding insignificant extra-solution activity is not indicative of integration into a practical application (See MPEP § 2106.05(g).)
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The independent claims are directed to an abstract idea.
Step 2B of the 101 Analysis:
The claims 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 elements identified in Step 2A Prong 2 (if any) amount to no more than mere instructions to implement the judicial exception on a computer or no more than mere data gathering or data outputting which only adds insignificant extra solution activity to the judicial exception. Accordingly, the Examiner in accordance with MPEP §2106.05(II):
• Carries over their identification of the additional element(s) in the claim from Step 2A Prong Two;
• Carries over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a) - (c), (e) (f) and (h):
• Re-evaluates any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant.
The claim elements which recite additional elements are:
Claim(s) 1 and 16:
“…by an exchange server…from a first user device via a network…”
“…by the exchange server…”
“…by the exchange server…”
“…by one or more additional user devices…”
“storing, in a memory, the one or more first proposed transactions and the one or more second proposed transactions,”
“…of a graphical user interface (“GUI”) of the first user device…”
“…the GUI is configured to…”
“…by the GUI…,”
“…the GUI is configured to…”
“…by the exchange server…”
“…by the exchange server…”
“…by the exchange server…”
“…to the clearinghouse server…”
Claim 16:
“an exchange server comprising at least one processor and at least one non-transitory computer-readable storage medium having computer-readable program code portions stored therein, wherein the computer-readable program code portions, when executed, cause the exchange server to:”
These element(s) in combination do not add anything that is not already present when the steps are considered separately. Adding insignificant extra-solution activity cannot provide an inventive concept when the activities are well-understood routine and conventional. The courts have recognized the following computer functions as well-understood, routine, and conventional functions when they are claimed in a merely generic manner:
⦁ (for storing various data) Storing and retrieving information in memory, (See MPEP § 2106.05(d)(II)).
The independent claims are not patent eligible.
Dependent Claim(s) 2-5, 7-9, 13-14, 15-20, 22-24, 28-29 and 31-32 recite limitations that are similar to the abstract idea noted in the independent claims because they further narrow the independent claim(s) which recite one or more judicial exceptions. Accordingly, these claim elements do not serve to confer subject matter eligibility to the claims since they recite abstract ideas.
The claims are not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fung (US 2004/0006534 A1) discloses improvement in transaction of financial instruments discussing matching long and short positions.
Klein (US 2009/0228398 A1) discloses wherein at least one of the long positions and short positions associated with the second financial asset is a replacement position for at least one of the matched positions associated with the first financial asset, and wherein at least one of the long positions and short positions has a notional that is equal to a notional of at least one of the matched positions.
Lutnick et al. (US 2014/0207644 A1) discloses transaction system reporting various regulations on assets.
Naratil (WO 02/07039 A2) discloses improving offsetting trades.
Westland et al. (“Electronic Financial Markets”) discloses aspects of electronic markets.
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 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 ADAM J HILMANTEL whose telephone number is (571)272-8984. The examiner can normally be reached M-F 8:30AM-5:00PM.
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.
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 phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.H./Examiner, Art Unit 3691
/ABHISHEK VYAS/Supervisory Patent Examiner, Art Unit 3691
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