DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The following is a non-final office action in response to the request for continuation filed 1 July 2026.
Applicant’s amendments to the Specification and Claims 1, 11, and 20 have been received and are acknowledged. Claim 2 was previously cancelled.
Claims 1, and 3-20 have been examined and are pending.
Response to Arguments
Applicant's arguments filed 1 July 2026 have been fully considered but they are not persuasive.
With regard to the rejections under 35 USC 101, Applicant argues: Referencing Enfish and the Specification [61-73], Applicant argues that the instant recited claims are similar (or in fact even “ a stronger case”) the patent eligible claims of Enfish because (1) the Specification ‘disparages” conventional systems, (2) the present invention as described in the Specification discloses “certain advantages…which indicate the present invention is not merely an abstract ide application to a general purpose computer”, and lastly, the recited invention is “directed to a particularized solution to a problem which utilized hardware solutions..” (Applicant’s response, 9-12).
Examiner respectfully disagrees as rejected below and previously. Applicant’s own arguments state that the recited invention ‘uses” known hardware solutions. As previously stated, the use of generic computing elements to execute an abstract idea is “apply it” as cited below (Specification, Fig. 2 [20] computer hardware and computer software, CPU, [27] any type of processor… [28] any type of non-transitory media [38-39] processor, memory, communication interface, electronic clock and electronic timer… ) (See also MPEP 2106.05 (f)).
As previously stated, using a computer to execute an abstract idea, is not an improvement to technology. At most the recited claim recite an improvement to the abstract idea. A novel abstract idea is still an abstract idea. As such, Applicant’s arguments are not persuasive.
With regard to the rejection under 35 USC 103, Applicant asserts that the “proposed modification of Millhuff by Eurex ….renders Millhuff unsatisfactory for its intended purpose …and there is no motivation to make the proposed combination. The remaining references fail to remedy …” (Applicant’s response, 13-14).
Examiner withdraws the rejections under 35 USC 103 in view of the newly amended claim language and the rejections below.
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 1 and 3-20 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.
Claims 1, 11 and 20 recite “ in response to detecting, via the electronic timer, expiry of the first time interval elapses, fixing each all received orders in the book, closing the book to prevent entry of any new orders, executing the second state, and initiating countdown of the second time interval;” and “tracking the countdown, via the electronic timer, of the second time interval”
However, the specification provides no support for these recited limitations. Applicant is requested to provide reference from the original disclosure to support the amendment of " in response to detecting, via the electronic timer, expiry of the first time interval elapses, fixing each all received orders in the book, closing the book to prevent entry of any new orders, executing the second state, and initiating countdown of the second time interval;” and “tracking the countdown, via the electronic timer, of the second time interval.”
Claims dependent on Claims 1, 11 and 20 are rejected by virtue of their dependency on a rejected claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, and 3-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). Claims 1 and 11 recite “…wherein the clock and the timer are separate hardware modules from each other and from the at least one processor…” The recitation is indefinite because the specification does not clearly redefine the term “hardware module.” As such the metes and bounds of the claim are unclear.
Claims dependent on Claims 1 and 11 are rejected by virtue of their dependency on a rejected 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 and 3-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
When considering subject matter eligibility under 35 U.S.C. 101, (1) 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. If the claim does fall within one of the statutory categories, (2a) it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so (2b), it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ____ (2014).
The claimed invention is directed to a judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea) without significantly more. In the instant case, the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
(1) In the instant case, the claims are directed towards a method, non-transitory computer readable medium, and the system of electronic trading. In the instant case, Claims 11-19 are directed to a process. Claims 1 and 3-10 are directed to a system. Claim 20 is directed to a non-transitory computer readable medium.
(2a) Prong 1: Electronic trading (i.e.trading) is categorized in/akin to the abstract idea subject matter grouping of: methods of organizing human activity [organizing human activity (fundamental economic practice and commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)]. As such, the claims include an abstract idea.
(Currently amended) An … trading … comprising:
a … having a … is configured to:
set_, , a first time interval and a second time interval, both set to elapse prior to a time that an auction commences, wherein the at least… operates in a first state while the first time interval has not elapsed and in a second state after the first time interval has elapsed and the second time interval has not elapsed;
when operating in the first state-
…, …, from a plurality of computing devices, orders for the auction, wherein each of the orders indicates a price, a side and a size,
stamp, …, each of the orders with a time of receipt,
…, …, the orders by the side as bids and offers and by the price and the size in a book having price level tiers, and
in response to detecting, …, expiry of the first time interval, fix all received orders in the book, close the book to prevent entry of any new orders, execute the second state, and initiate countdown of the second time interval; and
when operating in the second state-
track the countdown, …, of the second time interval, and
determine at least one possible order match at top of the price level tiers of the book by:
determining an aggressing side based on a total size of orders at the top of the price level tiers including the at least one possible order match, wherein the side having a smaller total order size is the aggressing side, and
determining each aggressing order at each price level tier of the top of the book price level tiers having a possible order match, in best price level tier to worst price level tier order starting from the top of the book price level tier of the aggressing side,and
when at least a portion of an aggressing order at a given price level tier is determined to match pro rata with at least a portion of a resting order on a resting side, filling the resting order by reducing a remaining size of the aggressing order by an amount equal to the pro rata matching size, thereby resulting in a trade between the aggressing side and the resting side of the pro rata matching size, until an aggressing order at the given price level tier can no longer be determined to match pro rata with a given resting order on the resting side, and
wherein a pro rata matching size for a first resting order on the resting side is determined based on a size of the first resting order divided by a total order size of the resting side multiplied by a total order size of the aggressing side at the top of the price level tiers and when the auction commences, atomic match each possible order match determined in the second state.
11. (Currently amended) A method of …trading for an … trading … the …trading …including …and at least …, wherein the … the method comprising
setting, by the at least one …, a first time interval and a second time interval, both set to elapse prior to a time that an auction commences, wherein the at least one … operates in a first state while the first time interval has not elapsed and in a second state after the first time interval has elapsed and the second time interval has not lapsed;
when operating in the first state-
…, over a … from a plurality of …, orders for the auction, wherein each of the orders indicates a price, a side and a size,
stamping, …, each of the orders with a time of receipt,
arranging, …, the orders by the side as bids and offers and by the price and the size in a book having price level tiers, and
in response to detecting, via the …, expiry of the first time interval elapses, fixing each all received orders in the book, closing the book to prevent entry of any new orders, executing the second state, and initiating countdown of the second time interval; and
when operating in the second state; and
tracking the countdown, via the electronic timer, of the second time interval; and
determining at least one possible order match at top of the price level tiers of the book by:
determining an aggressing side based on a total size of orders at the top of the price level tiers including the at least one possible order match, wherein the side having a smaller total order size is the aggressing side, and
determining each aggressing order at each price level tier of the top of the book price level tiers having a possible order match, in best price level tier to worst price level tier order starting from the top of the price level tier of the aggressing side, and
when at least a portion of an aggressing order at a given price level tier is determined to match pro rata with at least a portion of a resting order on a resting side, filling the resting order by reducing a remaining size of the aggressing order by an amount equal to the pro rata matching size, thereby resulting in a trade between the aggressing side and the resting side of the pro rata matching size, until an aggressing order at the given price level tier can no longer be determined to match pro rata with a given resting order on the resting side,
wherein a pro rata matching size for a first resting order on the resting side is determined based on a size of the first resting order divided by a total order size of the resting side multiplied by a total order size of the aggressing side at the top of the price level tier; and when the auction commences, atomic matching each possible order match determined in the second state.
20. (Currently amended) A …configured to … … trading comprising:
setting, …, a first time interval and a second time interval, both set to elapse prior to a time that an auction commences, wherein the at least one processor operates in a first state while the first time interval has not elapsed and in a second state after the first time interval has elapsed and the second timer interval has not elapsed;
when operating in the first state;
…, …, from a plurality of computing devices, orders for the auction, wherein each of the orders indicates a price, a side and a size;
stamping, …, each of the orders with a time of receipt,
arranging, … the orders by the side as bids and offers and by the price and the size in a book having price level tiers, and
in response to detecting, …, expiry of the first time interval elapses, fixing all received orders in the book, closing the book to prevent entry of any new orders, executing the second state, and initiating countdown of the second time interval; and
when operating in the second state;-
determining at least one possible order match at top of the book price level tiers by:
determining an aggressing side based on a total size of orders at the top of the price level tiers including the at least one possible order match, wherein the side having a smaller total order size is the aggressing side,
determining each aggressing order at each price level tier of the top of the book price level tiers having a possible order match, in best price level tier to worst price level tier order starting from the top of the price level tier of the aggressing side, and
when at least a portion of an aggressing order at a given price level tier is determined to match pro rata with at least a portion of a resting order on a resting side, filling the resting order by reducing a remaining size of the aggressing order by an amount equal to the pro rata matching size, thereby resulting in a trade between the aggressing side and the resting side of the pro rata matching size, until an aggressing order at the given price level tier can no longer be determined to match pro rata with a given resting order on the resting side, and
wherein a pro rata matching size for a first resting order on the resting side is determined based on a size of the first resting order divided by a total order size of the resting side multiplied by a total order size of the aggressing side at the top of the book price level tier and_
when the auction commences, atomic matching each possible order match determined in the second state.
As stated above, this abstract idea falls into the (b) subject matter grouping of: methods of organizing human activity [organizing human activity (fundamental economic practice and commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)].
Prong 2: When considered individually and in combination, the instant claims are do not integrate the exception into a practical application because the steps of setting..…operating… stamping… arranging… determining/fixing…closing…operating…tracking… determining…determining… determining/determined… … matching … do not apply, rely on, or use the judicial exception in a manner that that imposes a meaningful limitation on the judicial exception (i.e. the abstract idea).
The instant recited claims including additional elements (i.e. receiving… storing…) do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The limitations merely recite: “apply it” (or an equivalent) or merely include instructions to implement an abstract idea on a computer or merely uses a computer a as tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or generally link the use of the judicial exception to a particular technological environment or field of use (See MPEP 2106.05 (g) and (f))
(2b) In the instant case, Claims 11-19 are directed to a process. Claims 1 and 3-10 are directed to a system. Claim 20 is directed to a non-transitory computer readable medium.
Additionally, the claims (independent and dependent) do not include additional elements that individually or in combination are sufficient to amount to significantly more than the judicial exception of abstract idea (i.e. provide an inventive concept). As discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) of: (system, timer, memory, processor, network, non-transitory storage medium, instructions ) merely uses a computer a as tool to perform an abstract idea or merely uses generic computing elements to perform well known, routine, and conventional functions (i.e. storing/receiving). (See MPEP 2106.05 (d) and (f)) (Specification, Fig. 2 [20] computer hardware and computer software, CPU, [27] any type of processor… [28] any type of non-transitory media [38-39] processor, memory, communication interface, electronic clock and electronic timer… )
The dependent claims have also been examined and do not correct the deficiencies of the independent claims.
It is noted that claim (3-10 and 12-19 ) introduces the additional elements of further defining elements such as total sizes (Claims 12 ), pro rata matching size (Claim 10) wherein clauses further adjusting (Claims 3, 13), further defining the auction ( Claims 4, 14 ), transmitting… (Claim 5, 6, 15, 16 ), displaying…, (Claims 7, 17…) notifying…(Claims 8, 18) orders..(Claims 9, 19). These elements are not a practical application of the judicial exception because the limitations merely recite: “apply it” (or an equivalent) or merely include instructions to implement an abstract idea on a computer or merely uses generic computing elements to perform well known, routine, and conventional functions or generally link the use of the judicial exception to a particular technological environment or field of use (See MPEP 2106.05 (d) and (f)) Further these limitations taken alone or in combination with the abstract do not amount to significantly more than the abstract idea alone because these elements amount to mere use of a computer as tool to perform an abstract idea or merely uses generic computing elements to perform well known, routine, and conventional functions. (See MPEP 2106.05 (d) and (f)) (Specification, Fig. 2 [20] computer hardware and computer software, CPU, [27] any type of processor… [28] any type of non-transitory media [38-39] processor, memory, communication interface, electronic clock and electronic timer… )
Therefore, claims 1, 3-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHA PUTTAIA H whose telephone number is (571)270-1352. The examiner can normally be reached on Monday- Friday 8:00am - 5:00 pm EST.
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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/ASHA PUTTAIA H/Primary Examiner, Art Unit 3691
