DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1 and 4-9 are presented for examination. Applicant filed a response to non-final Office action on 05/20/2026 amending independent claim 1. In light of Applicant’s amendment, Examiner has withdrawn the previous § 101 rejections. Examiner has, however, established new § 101 rejection for claims 1 and 4-9 in the instant Office action. Since the new § 101 rejection was necessitated by Applicant’s amendment, the instant rejection of claims 1 and 4-9 is FINAL rejection of the claims.
Examiner’s Remarks
§ 101 Rejection: Applicant argues in pages 9-13 of Applicant's Remarks:
Here, the focus of the claims is on such an improvement in computers as tools, and not on certain independently abstract ideas that use computers as tools.
The present claims 1 and 4-9 do not focus on the abstract idea of generating and presenting a customized order book display using computer as a tool, but instead focus on improving the computer as a tool for generating such displays using a memory which stores data and which is altered as claimed to drive the generation of the user interface and thus are patent eligible in view of Enfish.
. . .
The current claims recite limitations relating to the selective presentation of electronic data on a display of computer device based on receipt of paired electronic messages generated by a remote system.
Claim 1 was previously amended to recite that the message transmitter synchronizes transmission of the first message and the second message from the electronic transaction processing system to the network by delaying transmission of the first message until the second message has been transmitted, the message transmitter being located proximate to a connection from the electronic transaction processing system to the network so as to normalize a transmission time of the first message and the second message to minimize disparity in time of receipt thereof.
With this response, Claim 1 has been further amened to recite the specific mechanism by which receipt the first messages causes processors of each of the plurality of market participant computer devices to automatically filter those received first messages as a function of those of the second messages received thereby by storing the order data of the received first message in a memory coupled therewith, comparing the order identifier of the received first message to the order identifiers of those of the second messages received thereby and altering the memory, when order identifier of the first received message matches the order identifier of one of the received second messages, to indicate that the stored order data is available to that market participant computer device, which is then used by the processor to generate the customized display as claimed.
Examiner respectfully disagrees. As before, Applicant's claims are recited at a high level of generality lacking details and specifics as to a technological solution for a problem of technology. Nothing in Applicant's amendments is changing this. For example, and as before, besides the preamble of independent claim 1 reciting “system for remotely controlling a user interface of each of a plurality of market participant computer devices via electronic messages communicated over a network in an electronic marketplace so as to provide information parity,” there is nothing in the body of the claim recited regarding “remotely controlling a user interface of each of a plurality of market participant computer devices.” The claim steps are silent regarding “remotely controlling user interface” lacking details and specifics as to how the “controlling” is achieved. In fact, while the independent claim 1 is recited from the point of view of “an electronic transaction processing system for remotely controlling a user interface of each of a plurality of market participant computer devices,” there are no hardware components of “the electronic transaction processing system” recited in independent claim 1. Therefore, independent claim 1 fails Step 1 of the Test. Further, and as stated before, the Federal Circuit Court, in Electric Power Group, distinguished the claims at issue from the claims in Enfish: “In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on specific improvement–a particular database technique–in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d 1335-36 … The present case is different: 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.” (8). This is similar to instant claims 1 and 4-9 which focus on an abstract idea of generating and presenting a customized order book display using computer as a tool instead of improving computer as a tool. Thus, instant claims 1 and 4-9 are not patent eligible under the Test in view of Enfish. Therefore, claims 1 and 4-9 remain rejected under § 101.
Prior Art under § 102 and § 103: The closes prior art of record Bolubovsky (US 2017/0103460 A1) describes generally a system for providing information parity for electronic messages in an electronic marketplace. The prior art does not teach alone or in combination with other references the following limitations found in independent claim 1 as an ordered combination of steps:
a message transmitter coupled with the network which transmits each of the first messages via the network using a multicast protocol to all of the plurality of market participant computer devices, and transmits each of the second messages using a peer-to-peer ("p2p") protocol to only a first one or more of the plurality of market participant computer devices associated with other one or more market participants, other than the market participant computer device from which the incoming order was received, that, at the time of transmission of the second message, have, based on the data stored in the database, a relationship with the market participant associated with the market participant computer device from which the incoming order was received, the second message not being transmitted to a remainder of the plurality of market participant computer devices, wherein the message transmitter synchronizes transmission of the first message and the second message from the electronic transaction processing system to the network by delaying transmission of the first message until the second message has been transmitted, the message transmitter being located proximate to a connection from the electronic transaction processing system to the network so as to normalize a transmission time of the first message and the second message to minimize disparity in time of receipt thereof; and
each of the plurality of market participant computer devices responsive to receipt of the first and, if received, second messages to create a customized electronic display of the state of the electronic marketplace which includes the order data of a received first message only when that market participant computer device has also received the second message comprising the order identifier assigned to the incoming order from which the order data of that received first message was generated, the order data of a received first message otherwise not being included in the display, wherein, receipt the first messages causes processors of each of the plurality of market participant computer devices to automatically filter those received first messages as a function of those of the second messages received thereby by storing the order data of the received first message in a memory coupled therewith, comparing the order identifier of the received first message to the order identifiers of those of the second messages received thereby and altering the memory, when order identifier of the first received message matches the order identifier of one of the received second messages, to indicate that the stored order data is available to that market participant computer device, and generate a user interface presented on a display device coupled therewith, responsive to the memory coupled therewith, comprising a customized display of the state of the electronic marketplace containing only order data indicative of incoming orders that each of the participants associated with the plurality of market participant computer devices is permitted to access or act upon and not including order data indicative of orders that the respective participant cannot access or act upon, via selection, from among all of the order data of the received first messages stored in the memory, of only the stored order data for which the memory has been altered, and display the generated customized display of the state of the electronic marketplace on a display of the market participant computer device; and
wherein all of the plurality of market participant computer devices receive the first messages but only those of the plurality of market participant computer devices in receipt of the second messages displays the change of state for the electronic marketplace as a result of processing the first incoming order contained in the first message comprising the same order identifier in the customized order book display presented thereby.
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 and 4-9 are rejected under 35 USC § 101 because they are directed to non-statutory subject matter. The rationale for this finding is explained below.
The Supreme Court in Mayo laid out a framework for determining whether an applicant is seeking to patent a judicial exception itself or a patent-eligible application of the judicial exception. See Alice Corp., 134 S. Ct. at 2355,110 USPQ2d at 1981 (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961). This framework, which is referred to as the Mayo test or the Alice/Mayo test (“the test”), is described in detail in Manual of Patent Examining Procedure (”MPEP”) (see MPEP § 2106(III) for further guidance). The step 1 of the test: It need to be determined whether the claims are directed to a patent eligible (i.e., statutory) subject matter under 35 USC § 101. Step 2A of the test: If the claims are found to be directed to a statutory subject matter, the next step is to determine whether the claims are directed to a judicial exception i.e., law of nature, natural phenomenon, and abstract idea (Prong 1). If the claims are found to be directed to an abstract idea, it needs to be determined whether the claims recite additional elements that integrate the judicial exception into a practical application (Prong 2). Step 2B of the test: If the claims are directed to a judicial exception, the next and final step is to determine whether the claims recite additional elements that amount to significantly more than the judicial exception.
Step 1 of the Test:
When considering subject matter eligibility under 35 USC § 101, 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. Here, the claimed invention of claims 1 and 4-9 is a system, which is one of the statutory categories of invention. However, claims directed to a system must be distinguished from the prior art in terms of structure rather than function. See, e.g., In re Danly 263 F.2d 844, 847, 120 USPQ 582, 531 (CCPA 1959). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. See, e.g., Ex parte Masham, 2 USPQ2d 1657 (bd Pat. App. & Inter. 1987). The structural limitations (“a database,’” “an order receiver,” “a market data module,” and “a message transmitter”) of instant independent claim 1 are interpreted as computer code per-se and are therefore not statutory subject matter.
Conclusion of Step 1 Analysis: Therefore, claims 1-9 are NOT statutory under 35 USC § 101 in view of step 1 of the test.
Note: Examiner will consider claim 1 to recite the following in the body of the claim for the purpose of further examination of the application: “a processor” and “a memory storing instructions, wherein the processor executing the stored instructions causes the computer to perform the steps of: [X]; [X]: . . . ” Applicant is required to amend independent system claim 1 with hardware elements.
Step 2A of the Test:
Prong 1: Claims 1 and 4-9, however, recite an abstract idea of generating and presenting a customized order book display. The creation of generating and presenting a customized order book display, as recited in the independent claim 1 belongs to certain methods of organizing human activity (i.e., commercial interactions) that are found by the courts to be abstract ideas. The limitations in independent claim 1, which set forth or describe the recited abstract idea, are found in the following steps:
“update data indicative of relationships between two or more of the participants of the electronic marketplace which defines which order data of orders received by the electronic transaction processing system that the participant is permitted to access or act upon” (claim 1);
“assign each received incoming order an identifier unique thereto” (claim 1);
“generate, for each received incoming order, a first message comprising at least the order identifier assigned thereto and first order data that describes a change of state of the electronic marketplace as a result of processing that incoming order, and generate a second message comprising the assigned order identifier but not the first order data” (claim 1);
“generate, for each received incoming order, a second message comprising the assigned order identifier” (claim 1);
“create, responsive to receipt of the first and, if received, second messages, a customized electronic display of the state of the electronic marketplace which includes the order data of a received first message only when that market participant computer device has also received the second message comprising the order identifier assigned to the incoming order from which the order data of that received first message was generated, the order data of a received first message otherwise not being included in the display” (claim 1);
“automatically filter, caused by receipt the first messages, those received first messages as a function of those of the second messages received thereby by storing the order data of the received first message in a memory coupled therewith, comparing the order identifier of the received first message to the order identifiers of those of the second messages received thereby and altering the memory, when order identifier of the first received message matches the order identifier of one of the received second messages, to indicate that the stored order data is available to that market participant computer device” (claim 1);
“[displaying] the state of the electronic marketplace containing only order data indicative of incoming orders that each of the participants associated with the plurality of market participant[s] is permitted to access or act upon and not including order data indicative of orders that the respective participant cannot access or act upon, via selection, from among all of the order data of the received first messages stored in the memory, of only the stored order data for which the memory has been altered” (claim 1);
“display the generated customized display of the state of the electronic marketplace” (claim 1); and
“display, [to] only those of the plurality of market participants in receipt of the second messages, the change of state for the electronic marketplace as a result of processing the first incoming order contained in the first message comprising the same order identifier in the customized order book display presented thereby” (claim 1).
Prong 2: In addition to abstract steps recited above in Prong 1, independent claim 1 recites additional elements:
“a database” (claim 1);
“a network” (claim 1);
“an order receiver coupled with the network” (claim 1);
“a market data module coupled with the order receiver” (claim 1);
“a message transmitter coupled with the network, the message transmitter being located proximate to a connection from the electronic transaction processing system to the network” (claim 1);
“a user interface presented on a display device coupled therewith, responsive to the memory coupled therewith” (claim 1);
“plurality of market participants computer devices” (claim 1);
“processors of each of the plurality of market participants computer devices” (claim 1);
“a user interface presented on a display device coupled therewith” (claim 1).
These additional elements are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using a generic computer components. Further, the following claim limitations recite insignificant extra solution activity (for example, data gathering):
“store data indicative of relationships between two or more of the participants of the electronic marketplace which defines which order data of orders received by the electronic transaction processing system that the participant is permitted to access or act upon” (claim 1);
“receive a plurality of incoming orders from one or more of the plurality of market participants” (claim 1);
“transmit each of the first messages via the network using a multicast protocol to all of the plurality of market participant computer devices” (claim 1);
“transmit each of the second messages using a peer-to-peer ("p2p") protocol to only a first one or more of the plurality of market participants associated with other one or more market participants, other than the market participant computer device from which the incoming order was received, that, at the time of transmission of the second message, have, based on the stored data, a relationship with the market participant associated with the market participant computer device from which the incoming order was received, the second message not being transmitted to a remainder of the plurality of market participants, wherein transmission of the first message and the second message are synchronized by delaying transmission of the first message until the second message has been transmitted so as to normalize a transmission time of the first message and the second message to minimize disparity in time of receipt thereof” claim 1); and
“receive the first messages by all of the plurality of market participants” (claim 1).
These additional elements/limitations do not integrate the abstract idea into a practical application because they do not impose a meaningful limit on the judicial exception. The additional elements/limitations of independent claim 1 here do not render improvements to the functioning of a computer or to any other technology or technical field (see MPEP § 2106.05(a)), nor do they integrate the abstract idea into a practical application under MPEP § 2106.05(b) (particular machine); MPEP § 2106.05(c) (particular transformations); or MPEP § 2106.05(e) (other meaningful limitations). Further, the combination of these additional elements/limitations is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements/ limitations do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Conclusion of Step 2A Analysis: Therefore, independent claim 1 is non-statutory under 35 USC § 101 in view of step 2A of the test.
Step 2B of the Test: The additional elements of independent claim 1 (see above under Step 2A – Prong 2) are well-understood, routine, and conventional elements that amount to no more than implementing the abstract idea with a computerized system. The Applicant’s Specification describes these additional elements in following terms:
[00205] The system 400 includes an order receiver 406 coupled with an electronic communications network, such as the network 126 described above and the match engine 402. The order receiver 406 may be implemented as a separate component or as one or more logic components, e.g. first logic, such as on an FPGA that may include a memory or reconfigurable component to store logic and processing component to execute the stored logic, or as computer program logic, stored in the memory 204, or other non-transitory computer-readable medium, and executable by a processor 202, such as the processor 202 and memory 204 described with respect to Fig. 2, to cause the processor 202 to, or otherwise be operative to receive, via the electronic communications network 126 from an electronic trading terminal 150, 152, 154, 156 of a market participant of a plurality of market participants, an incoming order, e.g. an incoming electronic message including data indicative of an order, to transact a tradeable instrument. The order receiver 406 may also be configured as part of the order processing module 136. []Page 65 of 90
[00208] The system 400 further includes a market data module 112 coupled with the accounts database 404, match engine 402, and the message transmitter 414. The market data module 112 may be operative to generate financial messages for public or private consumption. [] The market data module 112 may be implemented as a separate component or as one or more logic components, e.g. second logic, such as on an Page 67 of 90 FPGA that may include a memory or reconfigurable component to store logic and processing component to execute the stored logic, or as computer program logic, stored in the memory 204, or other non-transitory computer-readable medium, and executable by a processor 202, such as the processor 202 and memory 204 described with respect to Fig. 2, to cause the processor 202 to, or otherwise be operative to generate a first message and a second message, the first message including order details from an at least partially unsatisfied incoming order including at least the unique order identifier assigned to the order by the order receiver 406, the first message configured to be multicast via a public feed, the second message including the unique order identifier and configured to be transmitted only to market participants that can access or act upon the at least partially unsatisfied incoming order based on a relationship stored in the accounts database 404.
[00210] The system includes a message transmitter 414. The message transmitter 414 may be implemented as a separate component or as one or more logic components, e.g. second logic, such as on an FPGA that may include a memory or reconfigurable component to store logic and processing component to execute the stored logic, or as computer program logic, stored in the memory 204, or other non-transitory computer- readable medium, and executable by a processor 202, such as the processor 202 and memory 204 described with respect to Fig. 2, to cause the processor 202 to, or otherwise be operative to transmit messages to market participants.
This is a description of software that render general-purpose computer operational. Further, the additional limitations of “storing,” “transmitting,” and “receiving” information amount to no more than mere instructions to apply the exception using generic computing devices. For the same reason, these additional limitations are not sufficient to provide an inventive concept. The additional limitations of “storing,” “transmitting,” and “receiving” information were considered insignificant extra-solution activity in Step 2A – Prong 2. Re-evaluating here in Step 2B, they are also determined to be well-understood, routine, and conventional activity in the field. Similarly to OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network), and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), the additional elements of independent claim 1 “transmit” and “receive” information over a network in a merely generic manner. Further, similarly to Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015) and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93, the additional limitations of independent claim 1 “store” information in memory. The courts have recognized “storing,” “transmitting,” and “receiving” information functions as well-understood, routine and conventional when claimed in a merely generic manner. Therefore, the additional limitations of independent claim 1 are well-understood, routine, and conventional. Further, taken as combination, the additional elements/limitations add nothing more than what is present when the additional elements/limitations are considered individually. There is no indication that the combination provides any effect regarding the functioning of the computer or any improvement to another technology.
Conclusion of Step 2B Analysis: Therefore, independent claim 1 is non-statutory under 35 USC § 101 in view of step 2B of the test.
Dependent Claims: Dependent claims 4-9 depend on independent claim 1. The elements in dependent claims 4-9, which set forth or describe the abstract idea, are:
“the order receiver is configured to assign the first and second order identifier to the market participant prior to an open of the electronic marketplace; the market data module is configured to generate the second message; and the message transmitter is configured to transmit the second message to the one or more market participants prior to the open of the electronic marketplace” (claim 4: “assigning” and “generating” steps are further narrowing the recited abstract idea; and “transmitting” step is insignificant extra solution activity);
“the order receiver is configured to assign a range of order identifiers to the market participant” (claim 5: further narrowing the recited abstract idea);
“the order receiver is configured to randomly assign the first and second order identifier to the market participant” (claim 6: further narrowing the recited abstract idea);
“the relationships between the two or more participants comprise credit relationships” (claim 7: further narrowing the recited abstract idea);
“the first one or more market participants are defined subsequent to an update of the database and based thereon” (claim 8: insignificant extra solution activity); and
“the customized order book display is generated and presented by the user interface of each of the respective first and second one or more market participant computer devices via selection, from an order book which comprises all orders generated from a plurality of market data, of those orders having order identifiers which match with an order identifier from a received second message or fourth message” (claim 9: further narrowing the recited abstract idea).
Conclusion of Dependent Claims Analysis: Dependent claims 4-9 do not correct the deficiencies of independent claim 1 and they are, thus, rejected on the same basis.
Conclusion of the 35 USC § 101 Analysis: Therefore, claims 1 and 4-9 are rejected as directed to an abstract idea without “significantly more” under 35 USC § 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pierce (US 2022/0172311 A1) discloses: “Specifically, the disclosed embodiments provide systems and methods for ensuring that only authenticated/verified participants receive data streams. A third party, e.g., a party other than the data provider or the data recipient, who is nevertheless associated with both the data provider and the data recipient, may be involved in controlling whether data streams from the data provider can reach the data recipient. Thus, a third party may logically sit between the data provider and the data recipient, and may decide whether the data recipient should receive data streams. The disclosed embodiments implement data generation, flow, control and permissioning between multiple entities via digital assets accessed and manipulated on a shared data structure.”
Studnitzer (US 10,332,206 B2) discloses: “The disclosed embodiments relate to implementation of a trading system, which may also be referred to as a trading system architecture, having improved performance which further assures transactional determinism under increasing processing transaction loads while providing improved trading opportunities, fault tolerance, low latency processing, high volume capacity, risk mitigation and market protections with minimal impact, as well as improved and equitable access to information and opportunities.”
M. Ganesh, S. Raghunathan and C. Rajendran, "Distribution and Equitable Sharing of Value From Information Sharing Within Serial Supply Chains," in IEEE Transactions on Engineering Management, vol. 61, no. 2, pp. 225-236, May 2014.
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRPI H. KANERVO whose telephone number is 571-272-9818. The examiner can normally be reached on Monday – Friday, 10 am – 6 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Abhishek Vyas can be reached on 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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/VIRPI H KANERVO/Primary Examiner, Art Unit 3691
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