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 request for continued examination (RCE) on 01/02/2026 amending claim 1, and canceling claims 2 and 3. In light of Applicant’s amendment, Examiner has withdrawn the previous § 101 rejections.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.
Examiner’s Remarks
§ 101 Rejection: Applicant argues in pages 10-12 of Applicant's Remarks:
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 has been further 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.
However, even if the claims are found to recite a judicial exception, here, when read as a whole, the claims are directed to a specific means that improves the relevant technology. That is, the claims require a specific, technological means that, in turn, provides a technological improvement.
For example, the claims require 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 claims further require that the message transmitter be 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.
The Examiner is cautioned not to characterize the claims at an impermissibly high level of generality as that may ensure that the exceptions to § 101 swallow the rule. It is further noted that even if the claims simply employ known or conventional components, that alone does not necessarily mean that the claim is directed to abstract idea at step one. See Contour IP Holdings LLC vs. GoPro, Inc., 2022-1654 and 2022-1691 (Fed. Cir. 2024). Further, Examiners should be careful to distinguish claims that recite an exception (which require further eligibility analysis) and claims that merely involve an exception (which are eligible and do not require further eligibility analysis.
Furthermore, in Ex Parte Desjardins, the ARP reversed and stated that "[under] a charitable view, the overbroad reasoning of the original panel ... is perhaps understandable given the confusing nature of existing f 101 jurisprudence, but troubling, because this case highlights what is at stake ... Examiners and panels should not evaluate claims at such a high level of generality." See Ex Parte Desjardins, Appeal No. 2024-000567 of U.S. App. No. 16/319,040, page 9 (ARP September 26, 2025).
This ARP decision explains that the claims are patent-eligible, pointing to the Federal Circuit's Enfish decision, which observes that many advancements in computer technology, "by their very nature, may not be defined by particular physical features but rather by logical structures and processes." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
Examiner respectfully disagrees. Examiner is not characterizing Applicant’s claims at an impermissibly high level of generality because 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. Further, 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 1-9 are not patent eligible in view of Enfish. Therefore, claims 1-9 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 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 received first messages indicative of the state of the electronic marketplace, of only the order data of those orders having assigned order identifiers which match with an order identifier from a received second message, 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 1-9 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 (“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:”. Applicant is required to amend system claims 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”;
“assign each received incoming order an identifier unique thereto”;
“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”;
“generate, for each received incoming order, a second message comprising the assigned order identifier”;
“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”;
“automatically filter, upon receipt the first messages, those received first messages as a function of those of the second messages received thereby”;
“present, responsive to the first and, if received, second messages, 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 participants 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 received first messages indicative of the state of the electronic marketplace, of only the order data of those orders having assigned order identifiers which match with an order identifier from a received second message”;
“display the generated customized display of the state of the electronic marketplace”; 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."
Prong 2: In addition to abstract steps recited above in Prong 1, independent claim 1 recites additional elements:
“a database”;
“a network”;
“an order receiver coupled with the network”;
“a market data module coupled with the order receiver”;
“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”;
“plurality of market participants computer devices”;
“processors of each of the plurality of market participants computer devices”; and
“a user interface presented on a display device coupled therewith.”
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”;
“receive a plurality of incoming orders from one or more of the plurality of market participants”;
“transmit each of the first messages via the network using a multicast protocol to all of the plurality of market participant computer devices”;
“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”; and
“receive the first messages by all of the plurality of market participants.”
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.
Haynold (US 2020/0387880 A1) discloses: “The method involves identifying (902) an extended time period for a data stream between from the exchange device to the terminal device. The representative time period is determined (904) within the extended time period. The representative quantity of multiple discrete messages is determined (906) for the at least one representative time period and the coincident value for the exchange device and the terminal device over the extended time period is calculated (908) based on the representative quantity of multiple discrete messages for representative time period between the exchange device and terminal device. The load report is generated (910) that includes coincident value and representative time period.”
Nugent (US 2019/0182188 A1) discloses: “The reader has a set of queues stored in a memory and coupled to the set of reader threads, where each queue is configured to store messages or an end of partition signal from one of the reader threads, and each queue includes first position that stores an earliest message stored by a queue. A writer thread is executed on the processor and controlled by a gate control logic, where the gate control logic compares identifiers of all of the messages in the first positions of the queues of the set of queues. The gate control logic forwards the message that is associated with the earliest identifier to a consuming application, where the gate control logic blocks the writer thread unless each of the queues contains a message or an end of partition signal.”
Studnitzer (US 2019/0295175 A1) discloses: “The system has a first logic hardware component for generating a response message for providing communication through a wide area network to a particular market participant of a set of market participants indicative of a response by an electronic marketplace to a request for a financial transaction received from the particular market participant. A second logic hardware component generates a financial data message comprising content representative of change in a state and causes the generated financial data message to be transmitted to the set of market participants based on the change in the state in the electronic marketplace caused by the received request for the financial transaction. A third logic hardware component synchronizes transmission of the financial message and the generated response message such that the generated response message to the particular market participant not overtakes the transmission of the financial message to the set of market participants.”
Singer (US 8,290,850 B1) discloses: “The method involves receiving multiple messages by a client device from an electronic device. The precedence level for each message from multiple messages is determined on the basis of market information. The market information associated with the message is stored in a data structure by a computing device, where the graphical user interface updates the market information associated with the message in real time.”
Shaffer (US 8,121,133 B2) discloses: “Techniques for regulating streams in a Peer-to-Peer (P2P) network are provided. By establishing a priority of a stream, certain users may have some level of assurance that their stream will be received by other peers. The priority may be established based on a variety of parameters including, for example, an identification of the user, a communications channel used for a multicast session, and/or a role of the user.”
O. Ronen and M. Lipinski, "Enhanced synchronization accuracy in IEEE1588," 2015 IEEE International Symposium on Precision Clock Synchronization for Measurement, Control, and Communication (ISPCS), Beijing, China, 2015, pp. 76-81.
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