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 01 July 2026.
Claim(s) 2, 5-6, 10-12, 15, 17, 20-21, 25-27 and 30 is/are cancelled.
Claim(s) 1, 8-9, 16, 23-24 and 31-32 is/are amended.
Claim(s) 1, 3-4, 7-9, 13-14, 16, 18-19, 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01 July 2026 has been entered.
Response to Arguments
Applicant's arguments filed 01 July 2026 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”. This includes considering the claim as a whole considering the fact that the combination includes all elements in combination. Thus the claims were properly considered as a whole.
Applicant argues that the standardization of data is not some small inconvenience as position data can be a massive amount of data and that in this art, trade capture systems of this art can process tens of millions of transactions and updates per day. Examiner notes that while they agree that this is no small inconvenience, the amount of data processed is not a measure of eligibility. “Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015)” (See MPEP 2106.05(f)). The use of generic computing components in the instant application to increase the speed or efficiency of the recited judicial exception does not afford the claim 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. Applicant further goes to further define the algorithm by which the matching algorithm operates. Examiner notes the following: “The Court has held that a claim may not preempt abstract ideas, laws of nature, or natural phenomena, even if the judicial exception is narrow (e.g., a particular mathematical formula such as the Arrhenius equation). See, e.g., Mayo, 566 U.S. at 79-80, 86-87, 101 USPQ2d at 1968-69, 1971 (claims directed to "narrow laws that may have limited applications" held ineligible); Flook, 437 U.S. at 589-90, 198 USPQ at 197 (claims that did not "wholly preempt the mathematical formula" held ineligible).” See MPEP 2106.04(I). Narrowing the judicial exception to the particular use case or context applicant describes does not negate the fact that the claim(s) recites and/or describes a judicial exception. The claim(s) recites and/or describes a judicial exception. Furthermore, Examiner notes that the quoted specifics of said algorithm are NOT recited in the claims. 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).
Applicant argues that the newly amended opt-in/opt-out steps provide technical improvements. Examiner respectfully disagrees. “The analysis under Step 2A Prong Two is the same for all claims reciting a judicial exception, whether the exception is an abstract idea, a law of nature, or a natural phenomenon (including products of nature). Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations introduced in subsection I supra, and discussed in more detail in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and 2106.05(e) through (h).” See MPEP 2106.04(d)(II) (emphasis added). Examiner notes that the section(s) of the claim(s) which applicant cites were and/or are elements which cause the claim to recite an abstract idea. As cited, additional elements which could cause integration into a practical application must be those recited beyond the judicial exception (emphasis added). The elements which recite the judicial exception cannot also serve to integrate the judicial exception into a practical application.
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.
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, 3-4, 7-9, 13-14, 16, 18-19, 22-24, 28-29 and 31-32 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 16 recite the term “consisting of” when describing the opt-in and opt-out request UI input. “The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) ("consisting of" defined as "closing the claim to the inclusion of materials other than those recited except for impurities ordinarily associated therewith"). But see Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331-32, 70 USPQ2d 1508, 1516 (Fed. Cir. 2004) (holding that a bone repair kit "consisting of" claimed chemicals was infringed by a bone repair kit including a spatula in addition to the claimed chemicals because the presence of the spatula was unrelated to the claimed invention). A claim which depends from a claim which "consists of" the recited elements or steps cannot add an element or step.” See MPEP 2111.03(II). While the specification does disclose the UI input comprise these requests it is silent as to the UI input “consisting of” these options. The UI input “consisting of” these options comprises new matter.
Any remaining claims not expounded upon are rejected based on their dependency to a rejected claim.
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, 3-4, 7-9, 13-14, 16, 18-19, 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…and comprising a first format;”
“receiving,…, peer position data for the first digital asset…the peer position data…and comprising the first format;”
“determining,…, that the first format is incompatible with a clearinghouse server;”
“initiating,…,a user-controlled reformatting process of the legacy position data utilizing the 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,”
“generating a first proposed transaction based on the matched one or more attributes, wherein the first proposed transaction, if executed, completely offsets a first trade associated with the legacy position data…and at least partially offsets a second trade associated with the peer position data…,”
“generating a second proposed transaction, wherein the 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 first proposed transaction and the second proposed transaction 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, the user input consisting of one of an opt-in request for both the first proposed transaction and the second proposed transaction or an opt-out request for both the first proposed transaction and the second proposed transaction,;”
“determining, upon expiration of the timer, that both the first user device and the second user device submitted the opt-in request or both the first user device and the second user device did not submit the opt-out request,”
“executing,…, the first proposed transaction…using the first trade capture system and the second trade capture system such that the first trade is completely removed from the first trade capture system and the second trade is at least partially removed from the second trade capture system;”
“simultaneous to the executing, transmitting,…, the new position data…and instructions that cause…to execute the second proposed transaction.”
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…stored in a first trade capture system of the first user device…”
“…by the exchange server of the system…from a second user device via the network…stored in a second trade capture system of the second user device…”
“…by the exchange server…”
“…by the exchange server…”
“…stored in the first trade capture system…stored in the second trade capture system…”
“storing, in a memory, the first proposed transaction and the second proposed transaction,”
“…of a graphical user interface (“GUI”) of the first user device…”
“…the GUI is configured to…from the first user device and the second user device…”
“…by the exchange server…via a straight-through process…;”
“…by the exchange server…to the clearinghouse server…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, straight-through processing, 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, generic straight-through processing, 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…stored in a first trade capture system of the first user device…”
“…by the exchange server of the system…from a second user device via the network…stored in a second trade capture system of the second user device…”
“…by the exchange server…”
“…by the exchange server…”
“…stored in the first trade capture system…stored in the second trade capture system…”
“storing, in a memory, the first proposed transaction and the second proposed transaction,”
“…of a graphical user interface (“GUI”) of the first user device…”
“…the GUI is configured to…from the first user device and the second user device…”
“…by the exchange server…via a straight-through process…;”
“…by the exchange server…to the clearinghouse server…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) 3-4, 7-9, 13-14, 15-16, 18-19, 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.
Lawrence (US 2013/0060671 A1) discloses straight-through processing of transactions.
Naratil (WO 02/07039 A2) discloses improving offsetting trades.
Westland et al. (“Electronic Financial Markets”) discloses aspects of electronic markets.
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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/ADAM HILMANTEL/Examiner, Art Unit 3691
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