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 .
Claim Rejections - 35 USC § 112
Claim 23 is 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.
Claim limitations invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The claims contains means-plus function. The claim limitations contains means to is insufficient disclosure of the corresponding structure, material, or acts for performing the entire claimed function or why there is no clear linkage between the structure, material, or acts and the function. The disclosure is devoid of any structure that performs the function in the claim, (ii) the structure described in the specification does not perform the entire function in the claim, or (iii) no association between the structure and the function can be found in the specification.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
Under Step 1, claims are directed to at least one statutory category: apparatus, or method or system.
Under Step 2A, Prong 1, claim 1 or claim 12 or claim 23 is directed to an abstract idea of receiving a plurality of incoming data messages in a reception order, each of the plurality of incoming data messages associated with a respective request with a respective request volume; providing, in the reception order as each incoming data message is received to, the plurality of incoming data messages for attempted matching with resting data messages; processing, by the match engine executing on the processor, the plurality of incoming data messages, such that for each of the plurality of incoming data messages and due to a computational capacity of: a respective match processing duration is correlated to the respective request volume for that incoming data message; generating, by and for each one of a plurality of matched data messages of the incoming data messages, at least one respective outgoing data message; providing, and for each one of the plurality of matched data messages of the incoming electronic data messages, the respective outgoing data message to a publication queue; adding, for at least a first one of the outgoing data messages, an obfuscation delay for which the first one of the outgoing data messages is held in the publication queue to reduce a correlation between respective apparent match processing durations based on a timing indication within the outgoing data messages and the respective request volumes for the plurality of matched data messages; and sending and upon exit from the publication queue, each of the outgoing data messages. This concept of performance obfuscation to maintain user expectations fall under the abstract idea category of certain methods of organizing human activity, specifically commercial or legal interactions as it is directed to sales activities or behaviors.
Under Step 2A, Prong Two, the additional elements recited in claim 1 or claim 12 or claim 23 include: via a communication interface of an electronic trading system, electronic, electronic; electronic; a match engine executing on a processor; electronic; electronic; the processor; electronic; the match engine executing on the processor; electronic; by the processor; electronic; electronic; electronic; electronic; electronic; electronic; electronic; electronic; electronic; electronic, via the communication interface; electronic. These additional limitations do not integrate the judicial exception into a practical application. In particular, the claimed computer components, receiving and transmitting data are amount to no more than mere instructions to apply the exception using a generic computer system, generic processor, generic engine which is not indicative of integration into a practical application; see MPEP 2106.05(f). The additional element of system and display amount to no more than merely linking the general technology to the judicial exception without significantly more and, in the alternative, mere insignificant extra-solution activity to gather data used in the claimed system. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application. The claim is directed to an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Under Step 2B, the claimed invention is considered as a whole whether the additional elements individually or as an ordered combination amount to an inventive concept. Upon further determination, the claims do not integration of the abstract idea into a practical application, the additional element of via a communication interface of an electronic trading system, electronic, electronic; electronic; a match engine executing on a processor; electronic; electronic; the processor; electronic; the match engine executing on the processor; electronic; by the processor; electronic; electronic; electronic; electronic; electronic; electronic; electronic; electronic; electronic; electronic, via the communication interface; electronic is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer system, and recites the steps of data manipulation. Mere instructions to apply an exception using a generic memory and/or adding insignificant extra-solution activity to the judicial exception is not indicative of an inventive concept. The sending and receiving data over a network have been determined by the courts to be well-known, conventional and routine functions, see MPEP 2106.05(d)(II)(i). Therefore, claim 1, claim 12 or/and claim 23 is/are not patent eligible.
As for dependent claims 2-11, these claims recite limitation that further define the same abstract idea noted in claim 1. Therefore, they are considered patent ineligible for the reasons given above.
As for dependent claims 13-22, these claims recite limitation that further define the same abstract idea noted in claim 12. Therefore, they are considered patent ineligible for the reasons given above.
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
In response to applicant’s argument in regard to 112(b), the examiner respectfully disagrees. After analyzing the specification, the examiner was unable to find any structure that performed the claimed function. The proper test for meeting the definiteness requirement is that the corresponding structure … of a mean-plus-function limitation must be disclosed in the specification in a way that one skilled in the art will understand what structure … will perform the recite function. Therefore, the applicant’s argument is not persuasive.
In response to applicant’s argument in regard to example 39, the examiner respectfully disagrees. The current case unlike example 39 has 101 rejections based on the MPEP. Therefore, the applicant’s argument is not persuasive.
In response to applicant’s argument that the claims are like example 47 of the USPTO’s subject matter eligibility examples, the examiner respectfully disagrees. The claims are directed to abstract idea. The original disclosure that describes the computer components merely generic components, [0005] a general computer system. The sending and receiving data over a network have been determined by the courts to be well-known, conventional and routine functions, see MPEP 2106.05(d)(II)(i). Therefore, the applicant’s argument is not persuasive.
In response to applicant’s arguments in regard to assessing 2025 USPTO Kim Memorandum, the examiner respectfully disagrees. The current claims are not eligibility under 35 U.S.C. 101 and the current claims are not related to machine learning or artificial intelligence. The current case is all of the elements in the current case are doing merely communicating or sending data back and forth and courts have recognized the computer function: receiving or transmitting data over a network, e.g., using the Internet to gather data to be routine and conventional, therefore the current case is conventional. The examiner has considered the arguments and the examiner found applicant’s argument not persuasive based on MPEP. Therefore, the applicant’s argument is not persuasive.
In response to applicant’s argument in regard to Ex Parte Annakov, Appeal No. 2023-003538 of U.S. App. No. 16/902,544 (PTAB 2024), the examiner respectfully disagrees. Ex Parte Annakov, Appeal No. 2023-003538 of U.S. App. No. 16/902,544 (PTAB 2024) is not precedential, so Ex Parte Annakov, Appeal No. 2023-003538 of U.S. App. No. 16/902,544 (PTAB 2024) does not have authority for deciding other cases. Therefore, the applicant’s argument is not persuasive.
In response to applicant’s argument in regard to decision in Ex parte Desjardins, Appeal No. 2024-000567 and applicant’s specification, the examiner respectfully disagrees. Unlike the Appeals Review Panel (ARP) decision in Ex parte Desjardins, Appeal No. 2024-000567, applicant’s specification and claims do not describe technological improvements, or a specific improvement to the way computers store and retrieve data in memory. Rather, applicant’s specification describes [0005] a general computer system. The sending and receiving data over a network have been determined by the courts to be well-known, conventional and routine functions, see MPEP 2106.05(d)(II)(i). The claims do not to improve the performance of computers or any underlying technology; instead, the focus is to use generic computer. Therefore, the applicant’s argument is not persuasive.
In response to applicant’s argument that similar to claims in Finjan. Unlike the patentable claims in Finjan, the current claim recites the abstract idea of receiving a plurality of incoming data messages in a reception order, each of the plurality of incoming data messages associated with a respective request with a respective request volume; providing, in the reception order as each incoming data message is received to, the plurality of incoming data messages for attempted matching with resting data messages; processing, by the match engine executing on the processor, the plurality of incoming data messages, such that for each of the plurality of incoming data messages and due to a computational capacity of: a respective match processing duration is correlated to the respective request volume for that incoming data message; generating, by and for each one of a plurality of matched data messages of the incoming data messages, at least one respective outgoing data message; providing, and for each one of the plurality of matched data messages of the incoming electronic data messages, the respective outgoing data message to a publication queue; adding, for at least a first one of the outgoing data messages, an obfuscation delay for which the first one of the outgoing data messages is held in the publication queue to reduce a correlation between respective apparent match processing durations based on a timing indication within the outgoing data messages and the respective request volumes for the plurality of matched data messages; and sending and upon exit from the publication queue, each of the outgoing data messages. This concept of performance obfuscation to maintain user expectations fall under the abstract idea category of certain methods of organizing human activity, specifically commercial or legal interactions as it is directed to sales activities or behaviors.
Under Step 2A, Prong Two, the additional elements recited in claims include: via a communication interface of an electronic trading system, electronic, electronic; electronic; a match engine executing on a processor; electronic; electronic; the processor; electronic; the match engine executing on the processor; electronic; by the processor; electronic; electronic; electronic; electronic; electronic; electronic; electronic; electronic; electronic; electronic, via the communication interface; electronic. These additional limitations do not integrate the judicial exception into a practical application. In particular, the claimed computer components, receiving and transmitting data are amount to no more than mere instructions to apply the exception using a generic computer system, generic processor, generic engine which is not indicative of integration into a practical application; see MPEP 2106.05(f). The additional element of system and display amount to no more than merely linking the general technology to the judicial exception without significantly more and, in the alternative, mere insignificant extra-solution activity to gather data used in the claimed system. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application. The claim is directed to an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Under Step 2B, the claimed invention is considered as a whole whether the additional elements individually or as an ordered combination amount to an inventive concept. Upon further determination, the claims do not integration of the abstract idea into a practical application, the additional element of via a communication interface of an electronic trading system, electronic, electronic; electronic; a match engine executing on a processor; electronic; electronic; the processor; electronic; the match engine executing on the processor; electronic; by the processor; electronic; electronic; electronic; electronic; electronic; electronic; electronic; electronic; electronic; electronic, via the communication interface; electronic is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer system, and recites the steps of data manipulation. Mere instructions to apply an exception using a generic memory and/or adding insignificant extra-solution activity to the judicial exception is not indicative of an inventive concept. The sending and receiving data over a network have been determined by the courts to be well-known, conventional and routine functions, see MPEP 2106.05(d)(II)(i). Therefore, the applicant’s argument is not persuasive.
In response to applicant’s argument with regard to DDR, the Examiner respectfully disagrees. In DDR, they address problems unique to the Internet and solve problem necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks and improve an existing technological process. Unlike DDR, the current case does not make specific improvement to the technology. In the current claim limitation, the computer is a generic computer. The applicant has not improved the computer. Therefore, the applicant’s argument is not persuasive.
In response to applicant’s argument regards to Bascom, the Examiner respectfully disagrees. In Bascom, they use the unconventional step of filtering Internet content using ISP. The filtering was performing remote server rather than local server. In Bascom, they provided technical basis and provided non-conventional and non-routine way of changing the filtering of Internet content using ISP. Unlike Bascom, the current case is all of the elements in the current case are doing merely communicating or sending data back and forth and courts have recognized the computer function: receiving or transmitting data over a network, e.g., using the Internet to gather data to be routine and conventional, therefore the current case is conventional. The current claims do not recite anything non-conventional and non-routine. The claim is merely gathered information of information over conventional network. Therefore, applicant’s argument with respect Bascom is not persuasive.
In response to applicant's argument with regard to Luminati Networks Ltd. v. Teso LI, UAB, CIVIL ACTION NO. 2:19-CV-00395-JRG decision, the examiner respectfully disagrees the decision is analogous to the current claims and determinative for the current 101 analysis. Luminati Networks Ltd. v. Teso LI, UAB, CIVIL ACTION NO. 2:19-CV-00395-JRG, at 1 (E. D. Tex. Feb. 12, 2021) (Gilstrap, J.) is non-precedential decisions and therefore not given weight. Therefore, the applicant’s argument is not persuasive.
In response to applicant’s arguments regards to Enfish, the Examiner respectfully disagrees. In Enfish, they made improvement to database technology. Unlike Enfish, the current case is directly to conventional and generic use of electronic trading, which doesn't make any improvement to the computer technology. In the current claim limitation, the computer is generic computer. The applicant has not improved the computer. Therefore, applicant's arguments with respect to Enfish is not persuasive.
In response to applicant's argument with regard to Contour IP Holding LLC v. GoPro, Inc., the examiner respectfully disagrees. Contour IP Holding LLC v. GoPro, Inc. is not analogous to the current claims. Therefore, the applicant’s argument is not persuasive.
In response to applicant’s arguments in regard to 101, the examiner respectfully disagrees. The claims are not eligible under the two-pronged analysis set forth in Alice Corp as shown in the office action rejections described above. Therefore, the applicant’s argument is not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 I JUNG LIU whose telephone number is (571)270-1370. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at (571)272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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I JUNG LIU
Examiner
Art Unit 3695
/I JUNG LIU/Primary Examiner, Art Unit 3695