646Detailed Action
Continued Examination Under 37 CFR 1.114
A request for continued examination (RCE) 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 9, 2025 has been entered.
Acknowledgements
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the RCE filed on September 9, 2025.
Claims 1-44 are pending.
Claims 12-22 and 34-44 are withdrawn.
Claims 1-11 and 23-33 are examined.
This Office Action is given Paper No. 20251219 for references purposes only.
IDS
The Information Disclosure Statement filed on July 22, 2025 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
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 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-11 and 23-33 are rejected under 35 U.S.C. 103(a) as being unpatentable over Boudreault et al. (US 2014/0006243), in view of Sandor et. al (WO 2016/032567), and further in view of Chadwick (US 7,921,050).
Claims 1, 23
Boudreault discloses:
determining, by the hardware matching processor, that the request to transact the inter-commodity tradeable object (e.g. financial instruments or physical commodities, see [0001]) does not at least partially match with a previously received but unsatisfied request counter (whether incoming order matches with resting orders, see [0011]) thereto stored in a first order book data structure stored in a memory coupled with the processor;
calculating, by the processor, as a function of the price ratio, the spread ratio defining a first quantity of the first component tradeable object (e.g. given quantity to sell, see [0017]) and a second quantity of the second component tradeable object (e.g. given quantity to buy, see [0017]);
generating, automatically by the processor, in lieu of a submission by the user, in a second order book data structure, a first synthetic tradeable object specifying a first synthetic request (e.g. aggressor order, see [0017]) for a transaction of the first quantity of the first component tradeable object at a first value (resting bid order price, see [0017]); and
generating, automatically by the processor, in lieu of a submission by the user, in a third order book data structure, a second synthetic tradeable object specifying a second synthetic request (e.g. market order, see [0017]) for a transaction of the second quantity of the second component tradeable object at a second value (resting ask order price, see [0017]).
Boudreault does not disclose:
Receiving… request.
Sandor teaches:
receiving, from a client computer of a user (users, see p10) by a processor coupled with a hardware matching processor configured to transact tradeable objects in a data transaction processing system (computer system, see p15), a first electronic data transaction request message comprising data indicative of a request to transact an inter-commodity tradeable object (e.g. option contracts, exchange traded, forward contracts, futures contracts, see p4 lines 15-22), the inter-commodity tradeable object comprising first and second component tradeable objects (digital cryptocurrencies, see p11 lines 25-26), the request further comprising a first request to transact the first component tradeable object (e.g. Bitcoin, see p11 lines 25-26), a second request to transact the second component tradeable object (e.g. Dogecoin, see p11 lines 25-26), where a quantity of the first component tradeable object and the second component tradeable object are not specified in the request (amount of currency transferred is that which is due when the holder’s contracts do not offset, see p4 lines 15-22) and a spread ratio between the first and second component tradeable objects is not fixed and endogenous (e.g. settlement prices may be based on trade volume weighted average of prices, see p12 lines 3-10).
Boudreault discloses determining that the request to transact does not at least partially match a previously received but unsatisfied request counter, calculating a ratio defining a first quantity and a second quantity, generating a first synthetic object, and generating a second synthetic object. Boudreault does not disclose receiving a request to transfer a first tradeable object and a second tradeable object where the ratio is not fixed and endogenous, but Sandor does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the multiple trade matching algorithms of Boudreault with the receiving a request to transfer a first tradeable object and a second tradeable object where the ratio is not fixed and endogenous of Sandor because 1) a need exists for an electronic marketplace that electronically matches orders placed by buyers and sellers (see Boudreault [0003]); and 2) a need exists for an improved system that will promote successful trading and delivery of option and future contracts for digital currencies (see Sandor p3 lines 1-10). Receiving a request to transfer a first tradeable object and a second tradeable object where the ratio is not fixed and endogenous allows for matching orders of a digital asset that maintains security, transparency, and liquidity.
Boudreault in view of Sandor discloses the limitations above. Boudreault in view of Sandor does not disclose:
Calculating… volatile.
Chadwick teaches:
calculating, by the processor, a price ratio (ratio of the price of the two stocks, see C8 L4-16) between the first component tradeable object (e.g. Stock A, currently trading at $20, see C8 L4-16) and the second component tradeable object (e.g. Stock B, currently trading at $10, see C8 L4-16) of the inter-commodity tradeable object based on current prices of the first and second component tradeable objects, wherein the current prices of the first and second component tradeable objects are volatile.
Boudreault in view of Sandor discloses determining that the request to transact does not at least partially match a previously received but unsatisfied request counter, calculating a ratio defining a first quantity and a second quantity, generating a first synthetic object, generating a second synthetic object, and receiving a request to transfer a first tradeable object and a second tradeable object where the ratio is not fixed and endogenous. Boudreault in view of Sandor does not disclose calculating a price ratio, but Chadwick does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the multiple trade matching algorithms of Boudreault, in view of Sandor, with the calculating a price ratio of Chadwick because a need exists for analyzing historical performance of financial securities and identifying trades in those securities (see Chadwick C2 L1-5). Calculating a price ratio can be used for analyzing historical performance.
Claims 2, 24
Furthermore, Boudreault discloses:
attempting, subsequent to the generating of the first synthetic request, by the hardware matching processor, to match (matching, see [0018]) the first synthetic request with a previously received but unsatisfied request counter thereto stored in the second order book data structure stored in the memory coupled with the processor;
attempting, subsequent to the generating of the second synthetic request by the hardware matching processor, to match (matching, see [0018]) the second synthetic request with a previously received but unsatisfied request counter thereto stored in the third order book data structure stored in the memory coupled with the processor; and
only when there is a match of both the first and second synthetic requests, satisfying both the first and second synthetic requests (see [0018]).
Claims 10, 32
Furthermore, Boudreault discloses:
the request specifies the first quantity (quantity to sell, see [0017]) of the first component tradeable object, the calculating further comprising calculating the second quantity (quantity to buy, see [0017]) of the second component tradeable object.
Claims 11, 33
Furthermore, Boudreault discloses:
the first request to transact comprises one of a buy or sell transaction (sell, see [0017]) and the second request to transact comprises the other of the buy or sell transaction (buy, see [0017]).
Claims 3, 25
Furthermore, Sandor teaches:
the first value for the first synthetic request is calculated as a function of an average best price of quantities of other unsatisfied requests (if no trade occurs, then the settlement prices is based on the volume weighted average, see p12 lines 3-10) in the second order book data structure.
Claims 4, 26
Furthermore, Boudreault discloses:
the second value for the second synthetic request is calculated as a function of the first value (resting bid order price, see [0017]).
Claims 5, 27
Furthermore, Sandor teaches:
the price ratio is rounded to a nearest tick (settlement price based on trade volume weighted average of the prices rounded to the nearest tick, see p12 lines 3-10).
Claims 6, 28
Furthermore, Sandor teaches:
a minimum spread tick is equal to that of a minimum tick of the first component tradeable object (minimum price or tick increment, see p11 lines 27-31).
Claims 7, 29
Furthermore, Sandor teaches:
the first component tradeable object is a first futures contract (futures contract, see p 7 lines7-17) for a first cryptocurrency (e.g. Bitcoin, see p11 lines 25-26) and the second component tradeable object is a second futures contract (futures contract, see p 7 lines7-17) for a second cryptocurrency (e.g. Dogecoin, see p 11 lines 25-26).
Claims 8, 30
Furthermore, Boudreault discloses:
the first futures contract and the second futures contract have the same expiration month and year (expiration month, see [0082]).
Claims 9, 31
Furthermore, Sandor teaches:
the first cryptocurrency is BitcoinTM (Bitcoin, see p11) and the second cryptocurrency is EtherTM (LiteCoin, see p11).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to have the second cryptocurrency as EtherTM because Sandor already teaches that any digital cryptocurrency can be used (e.g. Bitcoin, Litecoin, Dogecoin and the like, see p11). EtherTM is a type of digital cryptocurrency. Therefore, it would have been obvious to try, choosing from a finite number of identified predicable solutions, with a reasonable expectation of success (KSR Rationale E).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 and 23-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,042,935.
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant application would have been obvious to one of ordinary skill in the art in light of the disclosure of U.S. Patent No. 11,042,935.
The instant application is directed to receiving a first request to transact a first tradeable object, receiving a second request to transaction a second tradeable object, determining that the request does not at least partially match a previously received but unsatisfied request counter, calculating a price ratio, calculating a ratio of a first quantity and a second quantity, generating a first synthetic object, and generating a second synthetic object (see claim 1).
US patent 11,042,935 is directed to receiving a first transaction request message comprising a first tradeable object and a second tradeable object, where the ratio between the first tradeable object and the second tradeable object is not fixed, determining that the tradeable object does not at least partially match with a previously received but unsatisfied order counter, calculating the ratio defining a first quantity and a second quantity, generating a first synthetic object and a second synthetic object (see claim 1).
The instant application would have been obvious to one of ordinary skill in the art in light of US patent 11,042,935 because both encompass receiving a request to transact a first tradeable object and a second tradeable object, determining that the request does not at least partially match a previously received but unsatisfied request counter, calculating a ratio of a first quantity and a second quantity, generating a first synthetic object, and generating a second synthetic object.
Response to Arguments
103 rejection
Applicant argues the prior art does not teach calculating a price ratio between the first and second tradeable objects.
Please see revised rejection.
Claim Interpretation
Examiner hereby adopts the following definitions under the broadest reasonable interpretation standard. In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), Examiner points to these other sources to support her interpretation of the claims.1 Additionally, these definitions are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language. Finally, the following list is not intended to be exhaustive in any way:
configuration “(1) (A) (software) The arrangement of a computer system or component as defined by the number, nature, and interconnections of its constituent parts.” “(C) The physical and logical elements of an information processing system, the manner in which they are organized and connected, or both. Note: May refer to hardware configuration or software configuration.” IEEE 100 The Authoritative Dictionary of IEEE Standards Terms, 7th Edition, IEEE, Inc., New York, NY, Dec. 2000.
Conclusion
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from Examiner should be directed to Chrystina Zelaskiewicz whose telephone number is 571-270-3940. Examiner can normally be reached on Monday-Friday, 9:30am-5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Neha Patel can be reached at 571-270-1492.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal/pair <http://pair-direct.uspto.gov>. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866.217.9197 (toll-free).
/CHRYSTINA E ZELASKIEWICZ/
Primary Examiner, Art Unit 3699
1 While most definition(s) are cited because these terms are found in the claims, Examiner may have provided additional definition(s) to help interpret words, phrases, or concepts found in the definitions themselves or in the prior art.