Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC §101
1. 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.
2. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the 2019 PEG, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity. For instance, the claim language “…the matching component being operative to match a received order for any of a set of instruments with another previously received but not yet satisfied order for the same instrument counter thereto…to at least partially satisfy one or both of the received order or the other order and…generate and communicate electronic market data indicative thereof…, upon receipt of an order for an instrument, uses multiple parallel processing threads to scan the order book database and identify when at least a previously received but not yet satisfied order for another instrument, or combination of instruments, of the set of instruments different from the instrument of the received order satisfy an implied relationship and can trade with the instrument of the received order; receiving…order data specifying an order for a transaction of a first instrument, of the set of instruments, at an associated order price, and transmitting the order to the matching component; enabling…the matching component to perform matching operations for a set of instruments…; identifying, subsequent the enabling,…which stores a plurality of pre-defined trade templates each defining an implied relationship of a combination of orders, at least one of the plurality of trade templates of only a selectively enabled subset thereof defining an implied relationship that includes the received order indicative that an implied opportunity exists for the received order at an associated match price…reducing an amount of time necessary to identity a suitable combination of orders defining an implied relationship via avoidance of evaluation all possible combination thereof; determining…that the associated match price of the implied opportunity is better than the associated order price of the received order…; preventing…the implicator from scanning the order database using the identified at least one trade template, to identify when at least a previously received but not yet satisfied order for another instrument, or combination of instruments, of the set of instruments different from the instrument of the received order satisfy an implied relationship and can trade with the instrument of the received order as well as generation and communication of electronic market data…, while allowing the matching component to continue to perform matching operations to attempt to match the received order with another previously received order for the first instrument counter thereto at the associated order price of the received order and cause the market data server to generate and communicate electronic market data …; determining…whether or not the matching component prior to elapse of a period of time. has matched the received order with another previously received order for the first instrument counter thereto at the associated order price of the received order; and when the implied opportunity controller has determined that the matching component, prior to the elapse of the period of time, has matched of the period of time, has
matched the received order with another previously received order for the first instrument
thereto at the associated order price of the received order,…preventing the implicator from
scanning the order book, using the multiple parallel processing threads and based only on the trade templates stored in the trade template database which at least partially match the
order, the order book database to identify when at least a previously received but not yet satisfied order for another instrument, or combination of instruments, of the set of instruments different from the instrument of the received order satisfy an implied relationship and can trade with the
instrument of the received order, an amount of scanning of the order book database and a number of processing threads used by the implicator being reduced thereby; and when the implied when the implied opportunity controller has determined that the matching component, prior
to the elapse of the period of time, has not matched the received order with another previously
received order for the first instrument counter thereto at the associated order price of the received order, allowing…, the implicator to scan,…, the order book database to identify when at least a previously received but not yet satisfied order for another instrument, or combination of instruments, of the set of instruments different from the instrument of the received order satisfy an implied relationship and can trade with the instrument of the received order, a match price of the received order with the at least previously received but not yet satisfied order for another instrument, or combination of instruments, of the set of instruments different from the order
instrument of the received order not being better than the associated order price of the received
order such that generation of electronic market data indicative of out of order matching is
prevented; and generating and communicating…electronic market data indicative of a result of the operations of the implicator with respect to the received order to a source thereof” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “trading system, matching component, template database, electronic communication network, market data server and processor.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, these devices are caused to perform these steps. These devices, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea.
The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited “trading system, matching component, template database, electronic communication network, market data server and processor.” The applicant does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional, hardware components or systems being used in their ordinary manner. Further, the filed specification supports the determination that these components are well-understood, routine and conventional: substantiates this, for instance at paras [0076-0077, 0078, 0083, 0091, 0094]. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. More specifically, dependent claims 2-8, 10-15 and 17-20 do not recite additional elements but merely further narrow the scope of the abstract idea.
Response to Arguments
Applicant's arguments filed on 10/28/25 have been fully considered but they are not persuasive.
In response to applicant’s argument, citing the recent memorandum published by the USPTO, that the claims are not directed to an abstract idea, the examiner disagrees. The examiner contends that the claims recite one of the judicial exceptions i.e. certain method of organizing human activity such as a Fundamental Economic Practice. For instance, the claim language “…the matching component being operative to match a received order for any of a set of instruments with another previously received but not yet satisfied order for the same instrument counter thereto…to at least partially satisfy one or both of the received order or the other order and…generate and communicate electronic market data indicative thereof…, upon receipt of an order for an instrument, uses multiple parallel processing threads to scan the order book database and identify when at least a previously received but not yet satisfied order for another instrument, or combination of instruments, of the set of instruments different from the instrument of the received order satisfy an implied relationship and can trade with the instrument of the received order; receiving…order data specifying an order for a transaction of a first instrument, of the set of instruments, at an associated order price, and transmitting the order to the matching component; enabling…the matching component to perform matching operations for a set of instruments…; identifying, subsequent the enabling,…which stores a plurality of pre-defined trade templates each defining an implied relationship of a combination of orders, at least one of the plurality of trade templates of only a selectively enabled subset thereof defining an implied relationship that includes the received order indicative that an implied opportunity exists for the received order at an associated match price…reducing an amount of time necessary to identity a suitable combination of orders defining an implied relationship via avoidance of evaluation all possible combination thereof; determining…that the associated match price of the implied opportunity is better than the associated order price of the received order…; preventing…the implicator from scanning the order database using the identified at least one trade template, to identify when at least a previously received but not yet satisfied order for another instrument, or combination of instruments, of the set of instruments different from the instrument of the received order satisfy an implied relationship and can trade with the instrument of the received order as well as generation and communication of electronic market data…, while allowing the matching component to continue to perform matching operations to attempt to match the received order with another previously received order for the first instrument counter thereto at the associated order price of the received order and cause the market data server to generate and communicate electronic market data …; determining…whether or not the matching component prior to elapse of a period of time. has matched the received order with another previously received order for the first instrument counter thereto at the associated order price of the received order; and when the implied opportunity controller has determined that the matching component, prior to the elapse of the period of time, has matched of the period of time, has
matched the received order with another previously received order for the first instrument
thereto at the associated order price of the received order,…preventing the implicator from
scanning the order book, using the multiple parallel processing threads and based only on the trade templates stored in the trade template database which at least partially match the
order, the order book database to identify when at least a previously received but not yet satisfied order for another instrument, or combination of instruments, of the set of instruments different from the instrument of the received order satisfy an implied relationship and can trade with the
instrument of the received order, an amount of scanning of the order book database and a number of processing threads used by the implicator being reduced thereby; and when the implied when the implied opportunity controller has determined that the matching component, prior
to the elapse of the period of time, has not matched the received order with another previously
received order for the first instrument counter thereto at the associated order price of the received order, allowing…, the implicator to scan,…, the order book database to identify when at least a previously received but not yet satisfied order for another instrument, or combination of instruments, of the set of instruments different from the instrument of the received order satisfy an implied relationship and can trade with the instrument of the received order, a match price of the received order with the at least previously received but not yet satisfied order for another instrument, or combination of instruments, of the set of instruments different from the order
instrument of the received order not being better than the associated order price of the received
order such that generation of electronic market data indicative of out of order matching is
prevented; and generating and communicating…electronic market data indicative of a result of the operations of the implicator with respect to the received order to a source thereof” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Applicant's citation of examples 39 and 47 is unpersuasive because the claims at issue in examples 39 and 47 are readily distinguishable over the instant claims and are directed to totally different subject matters.
In response to applicant’s argument that the applicant’s claims are directed to electronically controlling operations of an electronic trading system so as to improve the operation thereof (i.e. control of a matching component and further selective control of an implicator to minimize scanning of an order book database), the examiner disagrees. There is a clear difference between the improvements in computer functionality, on one hand, and the use of existing computer as tools to perform a particular task, on the other; the solution addressed by the applicant’s claims is a business problem and not a technical problem. Rather than addressing a problem unique to the technology in which the solution is implemented, applicant’s claim 1 merely automates, using generic computer technology, a business process in which profitability is increased by controlling operation of a trading system and matching trading orders. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
The examiner further contends that the alleged advantages that applicant’s tout do not concern an improvement to computer capabilities but instead relate to an alleged improvement in computer-based process; that is, a process in which a computer is used as a tool in its ordinary capacity to receive, process, and output data.
Applicant's citation of Enfish is unpersuasive because the claims at issue in Enfish are readily distinguishable over the instant claims. In Enfish the claims were held to be patent-eligible because the claimed solution was directed to improvements in computer technology with database software designed as a "self-referential" table. The patent claims here do not address improvements in computer technology with database software designed as a "self-referential" table, so Enfish is not applicable. In contrast, the instant claims also provide a generically computer-implemented solution to a communication/business-related or economic problem.
In response to applicant’s argument that the examiner oversimplifies the claimed subject matter, the examiner disagrees. The examiner has not oversimplified the subject matter of the claims. The pending claims focus on asserted advances in uses to which existing computer capabilities could be put, but not on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. In other words, in the present case, the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.
In response to applicant’s argument that the present claims analogy to Finjan renders the claims patent-eligible, the examiner disagrees. It is held that the claims in Finjan are directed to a behavior-based virus scanning which employs a new kind of file that enables a computer security system to do things it could not do before including “accumulating and utilizing newly available, behavior-based information about potential threats.” 2018 WL 341882 at *4 (Fed. Cir. Jan. 10, 2018). The claimed behavior-based scans, in contrast to prior art systems which searched for matching code, enabled more “nuanced virus filtering” in analyzing whether “a downloadable’s code . . . performs potentially dangerous or unwanted operations.” Id. at *3. Finjan’s claims, compared to the present claims, constitute non-abstract improvements in functionality, rather than the abstract idea of computer security. The claims in Finjan are not similar to the claims in the pending application.
Applicant’s citation of Luminati Networks is unpersuasive because the claims at issue in Luminati Networks are readily distinguishable over the instant claims. Looking at the claims in Luminati Networks, the Court notes that they are directed to an architecture comprised of a clients, servers, and web servers configured into an architecture to facilitate providing requested content using an IP address that is selected from a group of IP addresses and used to fetch the content., which improves data communication speed and bandwidth efficiency on the internet. However, the solution addressed by the pending claims is a business problem and not a technical problem. Rather than addressing a problem unique to the technology in which the solution is implemented, the pending claims merely automates, using generic computer technology, a business process in which profitability is increased by controlling operation of a trading system and matching trading orders. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
In response to applicant’s argument that the present claims analogy to DDR renders the claims patent-eligible, the examiner disagrees. The examiner contends that while the patent claims in DDR Holdings, as described by the Court, involve conventional computers and the Internet, the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after “clicking” on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. “[T]he claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” However, this is just not the case with the claimed subject matter.
Applicant's citation of Bascom is unpersuasive, as the claims at issue in Bascom are readily distinguishable over the instant claims. In Bascom the claims were held to be patent-eligible because the claimed solution focused upon the specific asserted improvement in filtering technology by providing individually customizable filtering at a remote ISP server by taking advantage of the technical capability of certain communication networks. The invention in Bascom was a technological solution to a technological problem, using an improved filtering technology rather than using conventional filtering technology. In contrast, again, the instant claims provide a generically computer-implemented solution to a business-related or economic problem, and are incomparable to the claims at issue in Bascom.
In response to applicant’s argument that, citing Ex Parte Annakov Appeal 2023-003538, Application 16/902,544, that the claimed invention is unique in that it essentially externally selectively controls the scanning of the order book database by the implicatory to identify transactions among different instruments, the examiner disagrees. The case in Appeal 2023-003538 relates to “semi-automated service-provision systems and distributed database systems and is directed in particular to a semi-automated service-provision and transaction system incorporated in commercial aircraft and in other transportation systems.” The Board determine in the Appeal 2023-003538 that the recited method claims 1 and 15 recite non-abstract invention that utilizes various types of tangible hardware components to carry out the recited steps and/or functions of the claimed process. The pending claims do not recite a process for downloading and installing application on an aircraft as recited in the claims of Appeal 2023-003538, nor do they recite additional applications and services executing on a server as recited in the claims of Appeal 2023-003538.
In response to applicant’s argument that the claim recites additional elements that amount to significantly more than the exception, the examiner disagrees. It is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited “trading system, matching component, template database, electronic communication network, market data server and processor.” The applicant does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional, hardware components or systems being used in their ordinary manner. Further, the filed specification supports the determination that these components are well-understood, routine and conventional: substantiates this, for instance at paras [0076-0077, 0078, 0083, 0091, 0094]. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Regarding the argument that the final office action violates Berkheimer, the examiner did not rely upon 2106.05(d) considerations. Instead the examiner stated the additional elements of the claim were mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on "the draftsman’s art").
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 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 OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. 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, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695
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