DETAILED ACTION
Acknowledgements
The amendment filed 1/29/2025 is acknowledged
Claims 1-20 are pending.
Claims 10-17 are withdrawn.
Claims 1-9 and 18-20 have been examined.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/29/2025 has been entered.
Response to Amendment/Arguments
Regarding the rejection of the claims under 35 USC 101, applicant states that the independent claims recite technical features of a configured connection via a user interface to each of plural participants in the networked system. Applicant states that coordinating thousands of order types via the user interface is not a mental processor that could not be practically performed in the human mind, and is a useful and technical innovation to the field of executing trades. Applicant requests that examiner reference the filing date of the instant technology when evaluating the practical application in view of the additional claim elements. Applicant also states that this features is not well-understood, routine, or conventional activity.
Examiner notes, however, that the claim does not provide any technical detail regarding the manner in which a connection is configured to each of the plural participants in the networked auction system. In order to establish a network system, each of the participants must be connected to the other participants. Thus, merely providing an instruction that such connections be established does not provide an improvement to a technology or a technical solution to a technical problem. Rather, it is a feature that arises out of the fact that a network of computers is being used as a tool to automate and/or implement the abstract idea. The claim does not require that thousands of order types be coordinated. Further, even if this was the case, the use of a computer to automate an otherwise abstract process and allow it to scale up to a larger number of uses, would not provide a practical application or significantly more than the abstract idea, because this would only be a byproduct of using a computer as a tool to automate the abstract idea. Finally, because the internet was in use in the 1990’s, such a feature would not provide an improvement to a technology or a technical solution, even considering the present application’s earliest priority date of 3/19/1999. Thus, the added features do not provide a practical application or significantly more than the abstract idea.
Regarding the rejection of the claims under 35 USC 103, applicant states that the references do not disclose the feature of configuring a connection via a user interface to each of plural participants in the networked auction system. Examiner notes, however, that Lutnick discloses this feature, because Lutnick discloses a networked auction system, in which each of the plural participants are connected to each other and a server, and in which the server and participants communicate over this connection via instructions input through user interfaces (Lutnick 5:5-24; 6:8-21; 8:34-9:40; 29:23-61).
Election/Restrictions
Applicant’s election of Species A including claims 1-9 and 18-20 in the reply filed on 9/28/2023 is acknowledged. Applicant states that this election is made with traverse. However, because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-9 and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-9 are directed to a non-transitory computer readable medium, and claims 18-20 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
The claims recite receiving an order from a first market participant, determining a market price, receiving a response order from a second market participant, communicating the order with other market participants, and executing the order after determining that the response order satisfies the order, which is an abstract idea. Specifically, the claims recite “. . . a connection . . . to each of plurality participants in a. . . auction system,” “receive, from a first participant . . . among plural participants in an auction operated in the . . . auction system, one of a buy and sell order for a product (ORDER), where the ORDER includes one or more of a price, quantity, type, and exposure time to remain active, and where the exposure time allows for one or more of a reply, opposite side order, and a pre-defined relative indication with or without a price improvement relative to a current price established by a National Best Bid/Offer or an equivalent exchange (PRI),” “receive a market best bid and ask price (MARKET PRICE) from the National Best Bid/Offer or equivalent exchange for buying and selling the product,” “receive, from a second participant . . . among the plural participants in the auction operated on the . . . auction system, the PRI to trade on the ORDER,” “effectuate a state where the PRI is maintained undisclosed from the plural participants,” “automatically transmit, to the plural participants . . . in the . . . auction system, the received ORDER,” “determine in real time based on the MARKET PRICE that the PRI satisfies the ORDER within the exposure time,” and “automatically execute the ORDER,” which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)) because the claims describe a process of carrying out a securities trade that involves receiving an order and a response, determining whether the response to the order satisfies the order, and executing the order, which is a fundamental economic practice and a commercial interaction. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54-55 (January 7, 2019)), the additional elements of the claims such as configuring the connection via a user interface to participants in a networked auction system, an interface of a first workstation, an interface of a second workstation, respective workstations, a computer readable medium including instructions executed by a processor and a networked auction system, merely use a computer as a tool to perform an abstract idea. Specifically, these additional elements perform the steps or functions of “. . . a connection . . . to each of plurality participants in a. . . auction system,” “receive, from a first participant . . . among plural participants in an auction operated in a . . . auction system, one of a buy and sell order for a product (ORDER), where the ORDER includes one or more of a price, quantity, type, and exposure time to remain active, and where the exposure time allows for one or more of a reply, opposite side order, and a pre-defined relative indication with or without a price improvement relative to a current price established by a National Best Bid/Offer or an equivalent exchange (PRI),” “receive a market best bid and ask price (MARKET PRICE) from the National Best Bid/Offer or equivalent exchange for buying and selling the product,” “receive, from a second participant . . . among the plural participants in the auction operated on the . . . auction system, the PRI to trade on the ORDER,” “effectuate a state where the PRI is maintained undisclosed from the plural participants,” “automatically transmit, to the plural participants . . . in the . . . auction system, the received ORDER,” “determine in real time based on the MARKET PRICE that the PRI satisfies the ORDER within the exposure time,” and “automatically execute the ORDER.” The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the additional elements of configuring the connection via a user interface to participants in a networked auction system, using an interface of a first workstation, an interface of a second workstation, respective workstations, a computer readable medium including instructions executed by a processor and a networked auction system to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of receiving an order from a first market participant, determining a market price, receiving a response order from a second market participant, communicating the order with other market participants, and executing the order after determining that the response order satisfies the order. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions of “. . . a connection . . . to each of plurality participants in a. . . auction system,” “receive, from a first participant . . . among plural participants in an auction operated in a . . . auction system, one of a buy and sell order for a product (ORDER), where the ORDER includes one or more of a price, quantity, type, and exposure time to remain active, and where the exposure time allows for one or more of a reply, opposite side order, and a pre-defined relative indication with or without a price improvement relative to a current price established by a National Best Bid/Offer or an equivalent exchange (PRI),” “receive a market best bid and ask price (MARKET PRICE) from the National Best Bid/Offer or equivalent exchange for buying and selling the product,” “receive, from a second participant . . . among the plural participants in the auction operated on the . . . auction system, the PRI to trade on the ORDER,” “effectuate a state where the PRI is maintained undisclosed from the plural participants,” “automatically transmit, to the plural participants . . . in the . . . auction system, the received ORDER,” “determine in real time based on the MARKET PRICE that the PRI satisfies the ORDER within the exposure time,” and “automatically execute the ORDER.” These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of receiving an order from a first market participant, determining a market price, receiving a response order from a second market participant, communicating the order with other market participants, and executing the order after determining that the response order satisfies the order. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2-9 and 19-20 further describe the abstract idea of receiving an order from a first market participant, determining a market price, receiving a response order from a second market participant, communicating the order with other market participants, and executing the order after determining that the response order satisfies the order. Specifically, claim 2 describes when the PRI or response is received, claims 3 and 19 describe disclosing the details of the transaction to the market participant, claims 4-7 and 20 describe termination of the auction, and claims 8-9 describe the financial product. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-9 and 18-20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lutnick, et al. (US 6,850,907) (“Lutnick”) in view of Lupien, et al. (US 6,012,046) (“Lupien”).
Regarding claims 1 and 18, Lutnick discloses a method, a non-transitory computer readable medium including instructions that, when executed by a processor, causes the processor to:
configure a connection via a user interface to each of plural participants in a networked auction system (Lutnick 5:5-24; 6:8-21; 8:34-9:40; 29:23-61).
receive, from a first participant via an interface of a first workstation among plural participants in an auction operated in a networked auction system, one of a buy and sell order for a product (ORDER), where the ORDER includes one or more of a price, quantity, type, and allows for one or more of a reply, opposite side order, and a pre-defined relative indication with or without a price improvement relative to a current price (PRI) (Lutnick 1:12-19; 6:48-51; 7:29-51; 8:64-9:2; 15:64-67; 25:56-65; 28:21-24; 29:24-61);
receive a market best bid and ask price (MARKET PRICE) for buying and selling the product (Lutnick 7:36-47; 24:16-20; 25:59-62;);
receive, from a second participant via an interface of a second workstation among the plural participants in the auction operated on the networked auction system, the PRI to trade on the ORDER (Lutnick 15:64-16:39; 16:40-49; 16:64-17:20; 24:59-65; 25:59-65; 26:22-65; 27:57-28:5; 28:21-67);
automatically transmit, to the plural participants via the respective workstation in the networked auction system, the received ORDER (Lutnick 6:48-51; 7:29-51; 10:38-11:25; 12:57-65; 15:64-65; 23:63-67; 29:24-61);
determine in real-time based on the MARKET PRICE that the PRI satisfies the ORDER within the exposure time and automatically execute the ORDER (Lutnick 6:48-51; 7:29-51; 8:11-15; 12:57-65; 15:64-17:20; 23:63-67; 24:16-20; 24:59-25:1; 25:56-65; 26:3-25; 26:61-66; 27:5-7, 18-26; 27:57-28:5; 28:10-67).
Lutnick does not specifically disclose that the order includes an exposure time to remain active. Lutnick also does not specifically disclose that the current price or market price is established by a National Best Bid/Offer or an equivalent exchange. Additionally, Lutnick does not specifically disclose that the PRI is maintained undisclosed from the plural participants.
Lupien discloses a stock exchange system (Lupien 5:27-35; 5:66-6:8) that receives an order that includes an exposure time to remain active, and that uses a current price or market price established by a National Best Bid/Offer or an equivalent exchange (Lupien 7:24-29; 42-47). Additionally, Lupien discloses that the PRI is maintained undisclosed from the plural participants (Lupien Abstract; 2:20-27; 4:27-30; 8:5-15; 19:29-32).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of Lutnick to include an order that includes an exposure time to remain active, the use of a current price or market price established by a National Best Bid/Offer or an equivalent exchange, and to maintain the PRI undisclosed from the plurality of participants, as disclosed in Lupien, in order to allow participants to make strategic trades (Lupien 3:36-39) and increase the likelihood of achieving optimal matches at prices that maximize the satisfaction of the parties (Lupien 3:40-4:7), while allowing anonymous matching of buy and sell orders (Lupien Abstract; 4:26-30).
Regarding claim 2, Lutnick discloses that the PRI is received before the ORDER (Lutnick 15:64-16:39; 16:40-49; 16:64-17:20; 24:59-65; 25:59-65; 26:22-65; 27:57-28:5; 28:21-67).
Regarding claims 3 and 19, Lutnick does not specifically disclose instructions that when executed by the processor causes the processor to automatically disclose details of a transaction involving the PRI via the user interface to all of the plural participants in the networked system.
Lupien discloses automatically disclosing details of a transaction involving the PRI via the user interface to all of the plural participants in the networked system (Lupien 2:20-27; 4:27-30; 8:5-15; 19:29-32).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of Lutnick to include automatically disclosing details of a transaction involving the PRI to all of the plural participants in the networked system, as disclosed in Lupien, in order to allow participants to make strategic trades (Lupien 3:36-39) and increase the likelihood of achieving optimal matches at prices that maximize the satisfaction of the parties (Lupien 3:40-4:7), while allowing anonymous matching of buy and sell orders (Lupien Abstract; 4:26-30).
Regarding claims 4 and 20, Lutnick discloses instructions that when executed by the processor causes the processor to automatically terminate the auction upon executing the ORDER (Lutnick 12:57-65;15:64-17:20; 23:63-67; 24:16-20; 24:59-25:1; 25:56-65; 26:3-65; 26:61-66; 27:5-7, 18-26; 27:57-28:5; 28:10-67).
Regarding claim 5, Lutnick does not specifically disclose that expiration of the exposure time causes the auction system to automatically terminate.
Lupien discloses that expiration of the exposure time causes the auction system to automatically terminate (Lupien 7:24-29).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of Lutnick to include expiration of the exposure time causing the auction system to automatically terminate, as disclosed in Lupien, in order to allow participants to make strategic trades (Lupien 3:36-39) and increase the likelihood of achieving optimal matches at prices that maximize the satisfaction of the parties (Lupien 3:40-4:7), while allowing anonymous matching of buy and sell orders (Lupien Abstract; 4:26-30).
Regarding claims 6 and 7, Lutnick in view of Lupien disclose the computer readable medium of claim 1.
Lutnick in view of Lupien does not specifically disclose that the exposure time is less than 60 seconds or less than 30 seconds.
However, this only describes a characteristic of the exposure time, and the particular characteristic of the exposure time described in these limitations (i.e. the length of the exposure time) does not require any additional steps or functions to be performed that rely on this characteristic. These specified time limits are considered non-functional descriptive material and are not functionally involved in the steps recited. The process of causing the auction system to terminate would be performed the same regardless of the descriptive material since none of the steps explicitly interact therewith. Limitations that are not functionally interrelated with the useful acts, structure, or properties of the claimed invention carry little or no patentable weight. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability (see In re Ngai 367 F.3d 1336, 1339, 70 USPQ2d 1862 (Fed. Cir. 2004); Ex parte Nehls 88 USPQ2d 1883, 1888-1889 (BPAI 2008); In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP § 2111.05; Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)).
Therefore, it would also have been obvious to a person of ordinary skill in the art at the time of applicant’s invention to set any time limit because such data does not functionally relate to the steps in the method claimed and because the subjective interpretation of the data does not patentably distinguish the claimed invention.
Regarding claim 8, Lutnick discloses that the product is a financial security (Lutnick 4:12-30).
Regarding claim 9, Lutnick does not specifically disclose that the financial security is available on a stock exchange.
Lupien discloses that the financial security is available on a stock exchange (Lupien 5:27-35; 5:66-6:8).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of Lutnick to use a security available on a stock exchange, as disclosed in Lupien, in order to allow participants to make strategic trades (Lupien 3:36-39) and increase the likelihood of achieving optimal matches at prices that maximize the satisfaction of the parties (Lupien 3:40-4:7), while allowing anonymous matching of buy and sell orders (Lupien Abstract; 4:26-30).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad A. Nilforoush whose telephone number is (571)270-5298. The examiner can normally be reached Monday-Friday 12pm-7pm.
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/Mohammad A. Nilforoush/Primary Examiner, Art Unit 3697