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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 19 December 2025, has been entered.
The following is a Non-Final office action on the merits in response to the communications filed on 19 December 2025. Claims 1-20 are currently pending. The rejections under 35 USC § 101 directed to double patenting and non-statutory subject matter are maintained. The rejections are as stated below.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more. Examiner incorporates the rejection and response to arguments from the previous office action mailed on 02 October 2025. Further:
Claim 1 (exemplary) recites a series of steps for managing an auction for trading an instrument.
The claim is directed to a process, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception. The claim recites the limitations of receiving market data including filled and unfilled order information for a first instrument and from respective trading parties, an indication of interest in the first instrument and an indication of interest in at least one other instrument; determining a suggested mid-level price for the first instrument for an auction session; initiating an auction session for a first time period, based on a determination that an indication of interest in the first instrument of at least one first trading party of the trading parties is received respectively; monitoring countdown by a first timer of the first time period; while the auction session is determined not to be expired as indicated by the countdown of the first time period, to display an auction notification for the first instrument at the suggested mid-level price; receiving a query of a given second trading party responsive to the auction notification, in which the query indicates an order for the first instrument indicating a size and a buy or sell direction of the order; responsive to receiving the query, initiating a request for auction (RFA) session for the given second trading party for a second time period shorter than the first time period; monitoring countdown by a second electronic timer of the second time period; while the RFA session for the given second trading party is determined not to be expired as indicated by the countdown of the second time period, transmitting RFA session information, to cause a display thereof to display the RFA session information, wherein the RFA session information is indicated by the query, in which the RFA session information indicates the first instrument and the suggested mid-level price for the RPA session for the given second trading party without indicating the size of the order, the buy or sell direction of the order [[and]] or an identity of the given second trading party; receiving an RFA order of a given first trading party to trade the first instrument in the RFA session for the given second trading party, in which the RPA order indicates a second size and a second buy or sell direction without indicating an identity of the first trading party; and identifying matched orders including at least a portion of the order and the RFA order; and following execution of the matched orders, causing to display trade execution information for the matched orders
The claimed system simply describes series of steps for managing an auction for trading an instrument. These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performances and concepts relating to fundamental economic principles or practices/commercial interactions that enhance customer experience with managing a trade (see (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611), and, therefore, fall within the certain methods of organizing human activity category of the USPTO’s Guidance. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14. These limitations are directed to an abstract idea because they are managing transactions and/or activities that fall within the enumerated group of “certain methods of organizing human activity” in the 2019 PEG.
Next, the claim is analyzed to determine if it is integrated into a practical application. The recited judicial exception may be integrated into a practical application by identifying whether there are any additional elements recited in the claim beyond the judicial exception and evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The claim recites additional limitation of at least one processor (claim 12), a communication network, a market data database, computing devices, at least one first computing device of the computing devices, electronic timer, at least one second computing device, a given second computing device of the at least one second computing device and a given first computing device of the at least one first computing device to perform the steps. The processor and devices in the steps are recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using generic computer component. Merely adding generic computer components to perform abstract ideas does not integrate those ideas into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to implement an abstract idea on a computer” as an example of when an abstract idea has not been integrated into a practical application). Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the computer at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims 1 and 12. Furthermore, the dependent claims 2-11 and 13-20 do not resolve the issues raised in the independent claims.
The dependent claims do not add limitations that meaningfully limit the abstract idea. Dependent claims 2-11 and 13-20, recite additional limitations and steps. However, as mentioned above with respect to the independent claims, the claimed limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
These claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a device, and is considered to amount to nothing more than requiring a generic device to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application or amounts to significantly more than the abstract idea itself.
Accordingly, claims 1-20 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Response to Arguments
Applicant's arguments with respect to 35 USC § 101 directed to non-statutory subject matter been fully considered but they are not persuasive.
Examiner respectfully disagrees. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Examiner incorporates herein the response to arguments from the previous office actions.
Applicant amended the claims to include the above-mentioned limitations. However, the concept is directed to managing an auction for trading an instrument which does not make it less abstract. The same updated analysis based on the new 2019 Patent Eligibility Guidance (2019 PEG) applies to the newly added claimed limitations as discussed above and in the previous office action rejections.
The claims apply the abstract idea on the computer system at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claims are directed to an abstract idea.
Applicant argues in substance that the features “include “additional elements” that integrate the alleged abstract concept into a practical application.
Examiner respectfully disagrees, in the second prong of step 2A of the 2019 Revised Guidance, we determine whether the claims recite a practical application of the recited judicial exception. For example, (1) any additional elements of the claims reflect an improvement in the functioning of a computer or to another technological field, (ii) an application of the judicial exception with, or by use of, a particular machine, (iii) a transformation or reduction of a particular article to a different state or thing (iv) or a use of the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55; See also MPEP § 2106.05(a){(c), (e}(h).
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.-see MPEP 2106.05(f). The instant claims do not attempt to solve an unconventional technological solution. Using the processor as a tool to implement the abstract idea and the way the information is processed and displayed does not make it less abstract. The claimed use of computer elements recited at a high level of generality is an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
A claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, examiner notes that "claiming the improved efficiency inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
Applicant argues in substance that “… Executing an auction among trading parties while keeping the parties’ identities secret is a novel approach to market trading … Securing anonymity in the buy/sell quoting process increases market liquidity by helping to ensure fairness of trading and by preventing "gamesmanship" against other traders”.
Examiner respectfully disagrees, ‘[t]he “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.’” Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (“[T]he jury’s general finding that [the defendant] did not prove by clear and convincing evidence that three particular prior art references do not disclose all the limitations of or render obvious the asserted claims does not resolve the question of whether the claims embody an inventive concept at the second step of Mayo/Alice.’’). Accordingly, the claim elements individually and as a whole do not provide significantly more than the abstract idea.
Examiner notes that “securing anonymity in the buy/sell quoting process” is an improvement to an abstract idea of executing a trade and not to the technology or any of the additional elements. The algorithm may be a technical element but, it does not result in a technical improvement. Instead, it provides an improvement to an abstract idea itself. Improvement to the abstract idea does not integrate the abstract idea into a practical application.
The claims here do not recite an improvement in computers. The claims do not improve the functioning of the computer, or solve any technological problem. Rather, the claim simply “includes instructions to implement an abstract idea on a computer” and “does no more than generally link the use of a judicial exception to a particular technological environment or field of use.” 2019 Revised Guidance, 84 Fed. Reg. at 55. The claim uses generic computer components and generic computer functionality to manage trades. The claims merely use instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Here, the additional limitations do not integrate the judicial exception into a practical application.
Applicant’s citation of BASCOM is non-persuasive because the claims at issue in BASCOM are readily distinguishable over the instant claims. In BASCOM v. AT&T: The claimed invention is able to provide individually customizable filtering at the remote ISP server by taking advantage of the technical capability of certain communication networks. …recite a system for filtering Internet content. The claimed filtering system is located on a remote ISP server that associates each network account with (1) one or more filtering schemes and (2) at least one set of filtering elements from a plurality of sets of filtering elements, thereby allowing individual network accounts to customize the filtering of Internet traffic associated with the account. For example, one filtering scheme could be “a word-screening type filtering scheme” and one set of filtering elements (from a plurality of sets) could be a “master list [] of disallowed words or phrases together with [an] individual [list of] words, phrases or rules.” Id. at 4:30-35.
In Core Wireless Licensing the court found that, “Although the generic idea of summarizing information certainly existed prior to the invention, these claims are directed to a particular manner of summarizing and presenting information in electronic devices. … These limitations disclose a “a computing device being configured to display on the screen a main menu listing at least a first application, and additionally being configured to display on the screen an application summary window that can be reached directly from the main menu, wherein the application summary window displays a limited list of at least one function offered within the first application, each function in the list being selectable to launch the first application and initiate the selected function, and wherein the application summary window is displayed while the application is in an un-launched state.”. Like the improved systems claimed in Enfish, Thales, Visual Memory, and Finjan, these claims recite a specific improvement over prior systems, resulting in an improved user interface for electronic devices.” In the instant invention, stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on ... a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.”
Moreover, Applicant’s citation of McRo is non-persuasive because the claims at issue in McRo are readily distinguishable over the instant claims.
In McRO, the Federal Circuit held the claimed methods of automatic lip synchronization and facial expression animation using computer-implemented rules patent eligible under 35 U.S.C. § 101, because they were not directed to an abstract idea. The basis for the McRO court's decision was that the claims were directed to an improvement in computer-related technology (allowing computers to produce "accurate and realistic lip synchronization and facial expressions in animated characters" that previously could only be produced by human animators), and thus did not recite a concept similar to previously identified abstract ideas. In McRO, timing phonemes in milliseconds represents both the problem being solved and the inventive solution. On the other hand, timing in the instant application is not critical to accomplishing the process. For example, a few second delay in a network transmission will not materially affect the outcome of the ordered combination of method steps. Timing is not a problem introduced by the technology itself or arising in the realm of computer networks that the instant application seeks to solve...”
Examiner notes that the instant claims provide a generically computer-implemented solution to a business-related problem. The focus of the claimed invention in the present application is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.
As mentioned previously, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer. Taking the additional elements individually and in combination, each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer performing its generic computer functions. Accordingly, claims are ineligible.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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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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Respectfully Submitted
/HANI M KAZIMI/Primary Examiner, Art Unit 3691