DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/28/2026 has been entered.
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.
3. Claims 2-21 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.
Regarding claims 2 and 12, the Specification recites the following regarding negotiations:
¶[0103] “In some embodiments, buy side participants may be able to establish filters that allow only some sell side participant orders to be traded with the buy side participants. For example, filters may allow sell side participant orders for a sufficient amount of a security, if the sell side agrees to a non-negotiated fulfillment of the order (e.g., according to a standard price such as the most recent traded price, etc.) and/or if the sell side and/or the sell side participant's order meets any other desired criteria of the buy side participant.”
¶[0108] “In some embodiments, to avoid negotiations between sell side and buy side participants, sell side participants may be bound to have their orders fulfilled according to a standard pricing mechanism. Such a pricing mechanism may include fulfilling the order based on a well-known midpoint pricing policy and/or any other desired mechanism.”
¶[0162] “only if the second market participant accepts the request, facilitate an execution of a trade fulfilling at least part of the first order and at least part of the second order, in which facilitating the execution includes facilitating the execution without a negotiation between the first market participant and the second market participant about a price of the trade and without a negotiation between the first market participant and the second market participant about a quantity of financial instruments in the trade.”
¶[0184] “only if the first market participant accepts the request, facilitate an execution of a trade fulfilling at least part of the at least one first order and at least part of the second order, in which facilitating the execution includes facilitating the execution without a negotiation between the first market participant and the second market participant about a price of the trade and without a negotiation between the first market participant and the second market participant about a quantity of financial instruments in the trade.”
¶[0204] “only if the second market participant accepts a request for acceptance of the first order, facilitate an execution of a trade fulfilling at least part of the first order and at least part of the second order, in which facilitating the execution includes facilitating the execution without a negotiation between the first market participant and the second market participant about a price of the trade and without a negotiation between the first market participant and the second market participant about a quantity of financial instruments in the trade.”
The specification recites that filters may allow sell side participant orders for a sufficient amount of a security, if the sell side agrees to a non-negotiated fulfillment of the order, avoiding negotiations between sell and buy side participants by sell side participants being bound to have orders fulfilled based on a well-known midpoint pricing policy and/or any other desired mechanism, and facilitating an execution of a trade without a negotiation between first and second participants.
The Specification lacks a written description for the newly added claim limitation, “preventing a negotiation between a trader associated with the first order and a trader associated with the at least one counter order for the security until the first order is filled.”
As best understood by the Examiner, the above limitation will be interpreted as “facilitating the execution without a negotiation between the first market participant and the second market participant.”
Regarding claim 2 and 12, the Specification recites the following regarding querying respective trader for interest in the security, onion routing, and obscuring a source and obscuring a destination:
¶[0084] “The use of such unfulfilled orders may include querying a party associated with the unfilled order (or any other inactive order). Such query may ask if the party is still interested in a trade related to the security and/or identify that a matching counter order is now available. The party may then reenter an order, enter into negotiations with the party associated with the new order, ignore the request, and/or take any other desired actions.”
¶[0112], “For example, suppressing evidence may include performing one or more actions that would occur if the event did not occur (e.g., transmitting requests, transmitting indications that the event did not occur, etc.), transmitting misleading information regarding the event (e.g., transmitting indications that the event did not occur, transmitting indications that another event occurred, transmitting information before the event and/or after the event that obscure the occurrence of the event (e.g., indications that the event happened earlier and/or later so that the actually occurrence of the vent is obscured)), not transmitting information that the event occurred, transmitting imitations information to mislead observers, encrypting information transmissions, using onion routing techniques, obscuring a source of transmissions, obscuring a destination of transmissions, obscuring the timing of events, and/or any other actions.”
The Specification describes that “suppressing evidence may include… using onion routing techniques, obscuring a source of transmissions, obscuring a destination of transmissions, obscuring the timing of events, and/or any other actions.” The Specification lacks a written description of querying a trader for interest by transmitting an encrypted query message over the network using onion routing to obscure a source and destination of the query message. In particular, the Specification does not recite querying a trader for interest by transmitting a message using onion routing to obscure source and destination of the message.
The Specification lacks a written description of the claimed, using onion routing to obscure a source and a destination of the query message, thereby preventing interception and analysis of trading interest in a distributed computer network.”
For purposes of examination, the limitation will be interpreted as, “wherein suppressing comprises an action selected from the group consisting of : encrypting an information transmission, using onion routing, obscuring a source of an information transmission, obscuring a destination of an information transmission.”
The remaining claims are rejected due to the dependency to claims 2 and 12.
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.
4. Claims 2-21 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more. Using the language in claim(s) 2 to illustrate, the limitations of attempting to fill the first order with an active order; when the first order cannot be filled, searching the plurality of orders for at least one counter order for the security that is expired and unfilled and at least one respective trader among the plurality of traders, querying the at least one respective trader for interest in the security by transmitting an encrypted message over the network connection circuit using onion routing to obscure source and a destination of the query message…; preventing a negotiation between a trader associated with the first order and a trader associated with the at least one counter order for the security until the first order is filled; filling the first order with the at least one respective trader; and suppressing evidence that the first order is filled, as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, in particular, fundamental economic practices, but for the recitation of generic computer components. The claims as a whole recite a method of organizing human activity.
The claimed invention allows for searching a plurality of orders in a database for a counter order that is expired and unfilled after attempting to match an order with an active order, filling the first order with the at least one respective trader; and suppressing evidence that the first order was filled, which is a fundamental economic practice. The mere nominal recitation of a network connection circuit communicatively coupled with a plurality of computer systems corresponding with a plurality of traders, a database storing a plurality of orders, at least one processor configured to perform a plurality of operations, a first computer system of the plurality of computer systems, do not take the claim out of the methods of organizing human activity grouping. Thus, under step 2A, prong one of the Patent Eligibility Guidance (PEG), the claims recite an abstract idea.
Under Step 2A, prong two of the PEG, this judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements— a database, a network connection circuit communicatively coupled with a plurality of computer systems corresponding with a plurality of traders, at least one processor configured to perform a plurality of operations, and a first computer system. The network connection circuit communicatively coupled with plurality of computer systems, at least one processor, a database, a first computer are recited at a high-level of generality (i.e., a generic processor performing a generic computer functions of receiving a first order, attempting to fill the first order with an active order, when the first order cannot be filled, searching the plurality of orders in the database for at least one counter order for the security that is expired and unfilled and at least one respective trader among the plurality of traders, querying the at least one respective trader for interest in the security; preventing a negotiation…; suppressing evidence…; filling the first order…; suppressing evidence that the first order was filled…) such that they amount to no more than mere instructions to apply the exception using generic computer components (see MPEP 2106.05(f)).
The storing of a plurality of orders that are expired and unfilled and identification of a plurality of respective traders in a database and receiving a first order from a first computer system steps/functions are recited at a high level of generality (i.e., as a general means of storing data in memory and receiving data from a computer). Storing data in a database and receiving data from a computer are forms of insignificant extra-solution activity –see MPEP 2106.05(g). 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 claims are directed to an abstract idea.
Under Step 2B of the PEG, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using the network connection circuit communicatively coupled with plurality of computer systems, at least one processor, a database, and a first computer performing claim functions, amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Furthermore, under Step 2B of the 2019 PEG, the additional elements found to be insignificant extra-solution activities under step 2A prong two, are re-evaluated to determine if the elements are more than what is well-understood, routine and conventional activity in the field. Here, the Specification does not provide any indication that the database storing a plurality of orders that are expired or unfilled are anything other than generic computer components and the Versata Dev. Group, Inc., and OIP court decisions cited in MPEP 2106.05[d][ii] indicate that the mere storing and retrieving information in memory are well-understood, routine, and conventional functions when they are claimed in a merely generic manner (as they are here). Similarly, the Specification does not provide any indication that the receiving a first order from a first computer system is performed using anything other than a generic computer and the Symantec, TLI Communications, OIP Techs, and buySafe court decisions cited in MPEP 2106.05[d][ii] indicate that the mere receiving and transmitting of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Accordingly, a conclusion that the storing and retrieving, and receiving a first order from a first computer system limitations are well understood, routine, and conventional activities is supported under Berkheimer Option 2.
In addition, under Step 2B of the 2019 PEG, the additional elements of using a processor configured to perform the operation of suppressing evidence, the suppressing comprising using an onion router is a well-understood, routine and conventional activity and the following publications demonstrate the well-understood, routine, and conventional nature of the additional element:
Dingledine et al. "Tor: The Second-Generation Onion Router;" June 2004.
Feigenbaum, J., Johnson, A., Syverson, P. (2007). “A Model of Onion Routing with Provable Anonymity. In: Dietrich, S., Dhamija, R. (eds) Financial Cryptography and Data Security.” FC 2007. Lecture Notes in Computer Science, vol 4886. Springer, Berlin, Heidelberg. https://doi.org/10.1007/978-3-540-77366-5_9.
US Patent No. 6,266,704 (Reed et al.) -The onion routing network allows the connection between the initiator and responder to remain anonymous.
Accordingly, a conclusion that the operation of suppressing evidence, the suppressing comprising using an onion router is a well-understood, routine and conventional activity is supported under Berkheimer Option 3.
For these reasons, there is no inventive concept. The claims are not patent eligible.
Similar arguments can be extended to independent claim 12 is rejected on similar grounds as claim 2.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 3-11, 13-21, simply help to define the abstract idea.
The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 2-21 is/are ineligible.
Response to Arguments
5. Applicant's arguments filed 1/28/2026 have been fully considered but they are not persuasive.
On page 8 of the Remarks, Applicants argue that the amendments to claims 2 and 12 overcome the rejection under 35 USC 112(a). The argument is not convincing because the amendments were not made to the limitation that was rejected. As indicated in the rejection, the Specification lacks a written description for the claim limitation, “preventing a negotiation between a trader associated with the first order and a trader associated with the at least one counter order for the security until the first order is filled.”
The newly added claim limitations and reference to the Specification ¶[0112] do not overcome the rejection because they do not address preventing negotiations between traders. Note that the amendments to the claims resulted in additional rejections under 35 USC 112 (a).
On page 9 of the Remarks, regarding the rejection of the claims under 35 USC 101, Applicants allege that under Step 2A, prong 2, the claims integrate the abstract idea into a practical application. Applicants further contend that claims 2 and 12 improve the functioning of the computer by preventing interception and analysis of trading interest in a distributed computer network. The argument is not convincing. The preventing of interception and analysis of trading interest on the distributed network is recited as an intended result of transmitting an encrypted query message.
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).
Furthermore, in determining whether a claim integrates a judicial exception into a practical application, a determination is made of whether the claimed invention pertains to an improvement in the functioning of the computer itself or any other technology or technical field (i.e., a technological solution to a technological problem). Here, the claims recite generic computer components, i.e., a database, a network connection circuit communicatively coupled with a plurality of computer systems corresponding with a plurality of traders, at least one processor configured to perform a plurality of operations, and a first computer system. The database, network connection circuit, computer systems, at least one processor, a first computer system, are recited at a high level of generality and are recited as performing generic computer functions customarily used in computer applications. Furthermore, the recitation of using an onion routing network to allow for anonymous communication is well-understood, routine and conventional as demonstrated in the publications cited in the 35 USC 101 rejection above.
The focus of the claims here, is not on an improvement to the identified additional elements as tools, but on the abstract ideas that use the additional elements as tools. The use of generic computer components to carry out the abstract idea does not impose any meaningful limit on the computer implementation of the abstract idea.
Applicants argue that suppressing evidence includes actions to mitigate timing-based attacks, enhancing network security and privacy which meaningfully limit the claim to a technological improvement in secure, anonymous order matching over vulnerable networks, reducing risks like front-running or data breaches in electronic trading platforms, beyond mere automation of commercial practices.
This argument is not persuasive because the argued mitigation of timing-based attacks, enhancement in network security and in privacy comes from the capabilities of a general-purpose computer that includes a microprocessor, rather than the claimed method itself. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)(“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”).
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELDA MILEF whose telephone number is (571)272-8124. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm; Friday 7am-12pm.
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/ELDA G MILEF/Primary Examiner, Art Unit 3694