DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Acknowledgement
The Amendments and request for consideration filed 10/28/2025 is acknowledged.
Status of Claims
Claim 2 has been amended.
Claim 1 is cancelled.
Claims 2-18 are pending.
Response to Arguments
Applicant has amended Claim 2. Amended Claim 2 recites, “…prioritizing the plurality of second orders according to a prioritization scheme, wherein the prioritization scheme gives a higher priority to second orders from second originators, based on attributes of the second originators….:…”
Applicant asserts that the above amendments are supported in the specification. For example, the Applicant recites, Specification “[0157] In some embodiments, multiple orders may be determined to be matching according to some priority mechanism so that a total number of shares of all matching order sums to at least as much as a number indicated by the firm order indication, in which multiple orders are determined to be matching, a priority may be assigned to some of the orders based on one or more characteristics of the orders, an originator of the orders, and/or any other characteristic.”
Specification again recites, “[0161] …matching orders my be matched to the received firm order based any desired prioritizing mechanism. Such prioritizing mechanism may include…prioritizing given to older and most active originators of orders,…and/or any other desired prioritizing method. In some embodiments, multiple orders may be combined together to fully fulfill as many existing offers as possible. In some embodiments, par of each matching order may be fulfilled. The part may correspond to some characteristic of the order or originator, loyalty of the originator, activeness or the originator,…”
The Applicant also recites in the Specification “[0172] …For example, firm orders my be executed first,…best customers may have their orders executed first, highest ranked customers may have their orders executed first, customers willing to be charged a fee my have their orders executed first, and/or any other method may be used to determine execution order.”
Under the broadest reasonable interpretation of the claims, it is maintained that the recited parts of the specification states that a priority of multiple orders may be assigned to some orders based upon characteristics of the orders, an originator of the orders, and/or any other characteristic. It maintained that the specification does not define prioritizing the plurality of second orders (emphasis added) according to a prioritization scheme, or that the prioritization scheme gives a higher priority to second orders from second originators, based on attributes of the second originators (emphasis added).
Based upon the broadest reasonable interpretation, the specification describes a classification of orders and originators without describing how the steps performed by the prioritization scheme to carry out the claimed amendments for a plurality of second originators. Thus, there is no clear description of prioritizing the plurality of second orders according to a prioritization scheme, wherein the prioritization scheme gives a higher priority to second orders from second originators, based on attributes of the second originators. In as much as the specification describes categories of orders and/or classifications of originators that are executed first., it fails to describe the steps of how the prioritization scheme performs these functions (i.e., steps of prioritizing orders from second originators, based on attributes of the second originators). Said differently, the specification does not describe the specific way (i.e., algorithm, process or method) in which the categories are sequenced (ranked) based upon the characteristics involved. The specification merely indicates that it prioritizes based upon a particular classification, not how it prioritizes. Again, It should be mentioned that although the specification describes certain categories that are executed first it does not clearly define the steps that performed to order the categories of originators mentioned.
For example, Walker et al. (US 5, 794, 207) discloses a prioritization scheme for originators (buyers) which is based upon buyer-seller criteria using a point system (see column 16, lines 31-45). Here, buyers are prescreened to ensure their ability to bind to the conditional price offer (CPO) of a seller.
Mesaros (US 8.732,018) discloses ranking buyers in a buying group based upon most active purchasing histories (Fig. 5)(item# 500)(item#510)(see column 9, lines 12-21)
Czupek et al (US 2010/0088213) discloses algorithm based upon a preferred trader [0124], where a preferred allocation algorithm identifies orders submitted by traders who are assigned or otherwise earn priority status [0128].
Agarwal et al (US 2010/0057604) teaches that investors may desire to prefer to trade or buy from a specific dealer [0004], [0149]
Examiner Comments
The claims recite limitations which represent Non-Functional Descriptive Material. For example, Claim 2 recites, “a first message indicating a first order that defines a first side of a proposed trade for a financial instrument; receiving,…,… a plurality of second messages indicating second orders…”. Claim 4 recites, “…receiving the first order and a second order as a single message.” Claim 6 recites, “wherein each of the one or more queries is transmitted as a message. Claim 9 recites, “wherein a second order is a second message includes at least one criteria.” Claim 12 recites, “wherein the second order in the second message includes a dollar amount, and further comprising determining a quantity for the second order based on the dollar amount.”
The Applicant is respectfully reminded that where a claim limitation is directed to conveying a message or meaning to a human reader independent of intended computer system, and/or the non-transitory computer readable medium merely serves as a support for information or data, no functional relationship exists. Therefore, as above limitations are directed to further describing stored data (e.g., conveying meaning to a human reader) and do not create a functional relationship between the data and the memory on which it is stored, the limitations will not differentiate the claims from the prior art.” See In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ 2d 1031 (Fed. Cir. 1994). [see also MPEP 2111.05]
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 2-18 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.
Claim 2 recites, “…prioritizing the plurality of second orders according to a prioritization scheme, wherein the prioritization scheme gives a higher priority to second orders from second originators, based on attributes of the second originators….:…”
According to the Specification “[0157] In some embodiments, multiple orders may be determined to be matching according to some priority mechanism so that a total number of shares of all matching order sums to at least as much as a number indicated by the firm order indication, in which multiple orders are determined to be matching, a priority may be assigned to some of the orders based on one or more characteristics of the orders, an originator of the orders, and/or any other characteristic.”
Specification again recites, “[0161] …matching orders may be matched to the received firm order based any desired prioritizing mechanism. Such prioritizing mechanism may include…prioritizing given to older and most active originators of orders,…and/or any other desired prioritizing method. In some embodiments, multiple orders may be combined together to fully fulfill as many existing offers as possible. In some embodiments, par of each matching order may be fulfilled. The part may correspond to some characteristic of the order or originator, loyalty of the originator, activeness or the originator,…”
The Applicant also recites in the Specification “[0172] …For example, firm orders my be executed first,…best customers may have their orders executed first, highest ranked customers may have their orders executed first, customers willing to be charged a fee my have their orders executed first, and/or any other method may be used to determine execution order.”
The specification fails to describe the steps of how the prioritization scheme performs these functions (i.e., steps of prioritizing orders from second originators, based on attributes of the second originators). Said differently, the specification does not describe the specific way (i.e., algorithm, process or method) in which the categories are sequenced (ranked) based upon the characteristics involved. Thus, It should be mentioned that although the specification describes certain categories that are executed first, it does not clearly define the steps that performed to order the categories of originators mentioned. It merely describes a result.
Moreover, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.
Claims 3-18 are also rejected as being dependent on clam 2.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 2-18 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Waelbroek et al (US 7.908,206) in view of Marynowski (US 9, 846,910), Mesaros (US 8.732,018), Czupek et al (US 2010/0088213) and Agarwal et al (US 2010/0057604).
Regarding claim 2, Waelbroeck recites, a method comprising: receiving, via a communication network, (item# 30) a first message indicating a first order, that defines a first side of a proposed trade (order/message) for a first instrument. (column 3, lines 27-30),(see column 8, lines 38-40), (column 12, lines 18-31), (FIG. 17)(Item# 1710)
receiving, via the communication network, from one or more second originators a plurality of separate trading systems, second messages indicating second orders (contra-orders) in which each of the plurality of second orders defines, at least in part, a second side of the proposed trade for the financial instrument (Fig. 14)(item# 1440, 1460)(column 10, lines 43-49, column 39, lines 51-65), (Fig. 17)(Item# 1730)
based, at least in part, on the prioritizing, selecting (order routed) one or more of the plurality of second orders to match the first order (FIG. 14)(item# 1460)
executing the proposed trade for the financial instrument between the first order and the selected one or more of the plurality of second orders. (column 22, lines 31-41).
Waelbroek fails to disclose, “where the prioritization scheme gives a high priority to second orders from second originators based on attributes of the second originators selected from:
an older second originator, a longer-term second originator, a more active second originator, a larger second order, a smaller second order, a second order closer in size to the first order, a loyalty of a second originator, firm second orders, second orders found by querying a second originator, a newest second order, a highest ranked second originator, a second originator willing to pay a fee, or a premium second originator”.
Marynowski suggests prioritization of orders based upon various criteria (see Maryknowski, column 12, lines 31-52).
Mesaros (US 8.732,018) discloses ranking buyers in a buying group based upon most active purchasing histories (Fig. 5)(item# 500)(item#510)(see column 9, lines 12-21)
Czupek et al (US 2010/0088213) discloses algorithm based upon a preferred trader [0124], where a preferred allocation algorithm identifies orders submitted by traders who are assigned or otherwise earn priority status [0128]
Agarwal et al (US 2010/0057604) teaches that investors may desire to prefer to trade or buy from a specific dealer [0004], [0149]
Marynowski, Mesaros, Czupek and Agarwal disclose different prioritization schemes as well as suggest various preferred characteristics/attributes of the originator (buyer, trader, etc.,) that may be advantageous in the trading process between parties.
Because Waelbroek discloses ranking or prioritizing secondary orders or contra-orders based upon certain criteria and/or conditions (see column 39, lines 51-65), it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention for Waelbroek to have understood alternative prioritization schemes, (i.e., as employed and/or suggested in Marynowski, Mesaros, Czupek and Agarwal) and to have integrated alternative prioritization schemes into Waelbroek.
The motivation would be to further customize order conditions in order to meet certain order and contra-order requirements and/or preferences of particular market participants (Fig. 8)(item#840)(column 26, lines 42-52), (column 30, lines 53-65), (Fig. 15)(item# 1540)(item#1550)(see Waelbroek, column 39, lines 51-65).
Regarding claim 3, Waelbroek discloses each of a plurality of second orders defines one of a buy-side and sell-side of the proposed trade for the financial instrument. (see column 1, lines 38-49; column 27, lines 32-39; column 29, lines 16-26)
Regarding claim 4. Waelbroek discloses receiving the first order and a second order as a single message. (column 12, line 1-31; also see MPEP 2111.05)
Regarding claim 5, Waelbroek further comprising transmitting, via the communication network, one or more queries to the one or more second originators requesting a second order matching, at least in part, the first order. (column 13, lines 22-62)
Regarding claim 6, Waelbroek discloses, wherein each of the one or more queries is transmitted as a message. (column 18, lines 1-17)
Regarding claim 7, Waelbroek further comprising receiving an acceptance. (see column 22, lines
Regarding claim 8, Waelbroek further discloses wherein the proposed trade indicates a quantity of a plurality of financial instruments valued at a substantially similar amount. (column 23, lines 14-65)
Regarding claim 9, Waelbroek discloses wherein a second order in a second message includes at least one criteria. (column 23, lines 14-65)
Regarding claim 10, Waelbroek further comprising selecting one or more of the plurality of second orders based, at least in part, on the at least one criteria. (column 23, lines 14-65)
46. Regarding claim 11, 45, Waelbroek discloses wherein the at least one criteria includes at least one of: an industry, an instrument type, or a market capitalization. (column 23, lines 14-65)
47. Regarding claim 12, Waelbroek discloses wherein the second order in the second message includes a dollar amount, and further comprising determining a quantity for the second order based on the dollar amount.(see column 12, lines 18-31)
48. Regarding claim 13. Waelbroek discloses wherein the dollar amount (price) is associated with the first order (column 36, lines 6-22)
49. Regarding claim 14. Waelbroek discloses wherein the dollar amount associated with the first order includes a quantity of shares of the financial instrument.(column 23, lines 14-65)
50. Regarding claim 15, Waelbroek discloses further comprising determining a time period for cancellation.(column 5, lines 1-14)
51. Regarding claim 16, Waelbroek discloses performable on a computing device. (Fig. 1)(Item# 10)(column 4, lines 9-24)
52. Regarding claim 17, Waelbroek discloses further comprising a countdown clock for indicating the time period.(column 6, lines 31-43)
53. Regarding claim 18, Waelbroek discloses further comprising indicating that the time period has passed. (column 6, lines 31-43)
Conclusion
54. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
55. Walker et al (US 5,794,207) discloses a method and apparatus for cryptographically assisted commercial network system designed to facilitate buyer driven conditional purchase offers.
56. Applicant's amendment necessitated the new ground(s) 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 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.
57. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL S FELTEN whose telephone number is (571)272-6742. The examiner can normally be reached Flex.
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, Ryan D Donlon can be reached at 5712703602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DANIEL S. FELTEN
Examiner
Art Unit 3692
/DANIEL S FELTEN/Primary Examiner, Art Unit 3692
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