Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
This communication is in response to Applicant’s amendment filed 25 November 2025. Claims 1-15 are currently pending. 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 1-15 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 as discussed in the previous office action mailed on 27 August 2025.
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 incorporates herein the response to arguments from the previous office actions.
Applicant submits “… that even were the presently pending claims found to fall under the judicial exception (Step 2A, Prong 1), they are integrated into a practical application of that exception (Step 2A, Prong 2). Therefore, a repeat of the §101 rejection would not be appropriate”.
Examiner respectfully disagrees. Claims 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
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.
As mentioned previously, 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 further argues that, “… under Step 2A, Prong 2, the presently pending claims recite a specific, practical application for preserving anonymity while executing a basket of trades. The specifically recited feature provides more than the abstract idea of “Certain Methods of Organizing Human Activities,” and thus it integrates the abstract idea into a practical application consistent with MPEP §2106.05(e) (other meaningful limitations) and provide a service similar to the filtering discussed by the Federal Circuit in BASCOM”.
Examiner respectfully disagrees, and notes that preserving anonymity while executing a basket of trades is an improvement to an abstract idea of conduction 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 and thus does not make the claim patent eligible. Examiner notes that 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.
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.
Examiner notes, ‘[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.
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.
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 represents nothing more than a sequence of events that occur time – a feature common to most process/method patent applications. The timing 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...”
In contrast, the instant claims provide a generically computer-implemented solution to a business-related or economic problem and are thus incomparable to the claims at issue in BASCOM or McRO. The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem.
Examiner notes that the processor limitations and the claim as a whole do not add significantly more than the abstract idea itself, because the claim does not amount to an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment. A generic recitation of a processor performing its generic computer functions does not make the claims less abstract.
Lastly, dependent 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 processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
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 extension fee 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 date of this final action.
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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Respectfully Submitted
/HANI M KAZIMI/Primary Examiner, Art Unit 3691