DETAILED ACTION
Status of the Claims
1. This action is in response to the application filed on December 11, 2023.
2. Claims 2-21 are newly added, are currently pending and have been examined.
3. Claim 1 has been canceled.
4. The claims were preliminarily amended on December 20, 2023, canceling Claim 1 and newly adding Claims 2-21.
Notice of Pre-AIA or AIA Status
5. The present application is being examined under the pre-AIA first to invent provisions.
Priority
6. Application 18/535,213 filed December 11, 2023 which is a continuation of 14/261,411 filed on April 24, 2014 which is a continuation of 12/917,310 filed on November 1, 2010 and in turn to 11/027,314 filed December 30, 2004.
Terminal Disclaimer
7. Examiner asserts that a Terminal Disclaimer is warranted due to the instant application 18/535,213 and US Patents US 11,900,454 (formerly Application 14/261,411); US 8,744,954 (formerly Application 12/917, 310) and US 7848991 (formerly Application 11,027,314) sharing the same inventive entity and claim language which would otherwise result in a double patenting rejection.
Claim Interpretation – Broadest Reasonable Interpretation
8. In determining patentability of an invention over the prior art, all claim limitations have been considered and interpreted using the “broadest reasonable interpretation consistent with the specification during the examination of a patent application since the applicant may then amend his claims.” See In re Prater and Wei, 162 USPQ 541, 550 (CCPA 1969); MPEP § 2111. Applicant always has the opportunity to amend the claims during prosecution, and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. See In re Prater, 162 USPQ 541, 550-51 (CCPA 1969); MPEP § 2111. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 26 USPQ2d 1057 (Fed. Cir. 1993). See also MPEP 2173.05(q) All claim limitations have been considered. Additionally, all words in the claims have been considered in judging the patentability of the claims against the prior art. See MPEP 2143.03.
Claim limitations that contain statement(s) such as “if, may, might, can, could”, are treated as containing optional language. As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted.
Claim limitations that contain statement(s) such as “wherein, whereby”, that fail to further define the steps or acts to be performed in method claims or the discrete physical structure required of system claims.
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. see MPEP § 2103(I)(C); In re Johnson, 77 USPQ2d 1788 (Fed Cir 2006). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e. the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined.
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. see MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. see MPEP §2013(I)(C).
Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009). See MPEP 2111.04, 2143.03.
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble (MPEP 2111.02);
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby” (MPEP 2111.04)
Contingent limitations (MPEP 2111.04)
Printed matter (MPEP 2111.05) and
Functional language associated with a claim term (MPEP 2181)
Examiner notes that during examination, “claims … are to be given their broadest reasonable interpretation consistent with the specification, and … claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” See In re Bond, 15 USPQ 1566, 1568 (Fed. Cir. 1990), citing In re Sneed, 218 USPQ 385, 388 (Fed. Cir. 1983). However, "in examining the specification for proper context, [the examiner] will not at any time import limitations from the specification into the claims". See CollegeNet, Inc. v. ApplyYourself, Inc., 75 USPQ2d 1733, 1738 (Fed. Cir. 2005). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984), citing In re Prater, 162 USPQ 541, 550 (CCPA 1969).
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following language is interpreted as not further limiting the scope of the claimed invention.
As in Claim 2:
receiving, at the gateway, a user input from the at least one trading device to define a predetermined range of prices for use by a trading strategy;
receiving, at the gateway, a predefined message usage threshold from the first electronic exchange, wherein the predefined message usage threshold is defined based on a threshold for message bandwidth;
receiving, at a trading strategy unit at the gateway, the user input from the at least one trading device to define the predetermined range of prices for use by the trading strategy, wherein the predetermined range of prices limits when the trading strategy generates and sends from the at least one trading device to the first electronic exchange a new trade order message for the first tradeable object at a new price to re-price an existing trade order pending at the first electronic exchange for the first tradeable object, wherein the existing trade order is to be re-priced to maintain a desired strategy price based on market data changes in the second tradeable object compared to the first tradeable object;
receiving, at the trading strategy unit, the predefined message usage threshold from the first electronic exchange to define a message usage threshold for the trading strategy;
determining by a message use manager at the gateway, a message usage associated with the trading strategy, wherein the message usage is based on a number of messages being sent by the trading strategy determined by a message counter, wherein the message use manager is configured to compare the message usage to the predefined message usage threshold to determine that the message usage exceeds the message usage threshold; and
in response to the message use manager determining that the message usage exceeds the message usage threshold, increasing by the trading strategy the predetermined range of prices for use by the trading strategy, wherein the increased acceptable range of prices results in the trading strategy generating and sending fewer new trade order messages for the first tradeable object to re-price the existing trade order pending at the first electronic exchange for the first tradeable object based on market changes in the second tradeable object.
As in Claim 13:
receive, at the gateway, a user input from the at least one trading device to define a predetermined range of prices for use by a trading strategy;
receive, at the gateway, a predefined message usage threshold from the first electronic exchange, wherein the predefined message usage threshold is defined based on a threshold for message bandwidth;
receive, at a trading strategy unit at the gateway, the user input from the at least one trading device to define the predetermined range of prices for use by the trading strategy, wherein the predetermined range of prices limits when the trading strategy generates and sends from the at least one trading device to the first electronic exchange a new trade order message for the first tradeable object at a new price to re-price an existing trade order pending at the first electronic exchange for the first tradeable object, wherein the existing trade order is to be re-priced to maintain a desired strategy price based on market data changes in the second tradeable object compared to the first tradeable object;
receive, at the trading strategy unit, the predefined message usage threshold from the first electronic exchange to define a message usage threshold for the trading strategy;
determine by a message use manager at the gateway, a message usage associated with the trading strategy, wherein the message usage is based on a number of messages being sent by the trading strategy determined by a message counter, wherein the message use manager is configured to compare the message usage to the predefined message usage threshold to determine that the message usage exceeds the message usage threshold; and
in response to the message use manager determining that the message usage exceeds the message usage threshold, increase by the trading strategy the predetermined range of prices for use by the trading strategy, wherein the increased acceptable range of prices results in the trading strategy generating and sending fewer new trade order messages for the first tradeable object to re-price the existing trade order pending at the first electronic exchange for the first tradeable object based on market changes in the second tradeable object.
As in Claims 3 and 14:
wherein the trading strategy comprises a spread trading strategy, wherein the predetermined range of prices is defined based on a slop parameter, and, wherein the slop parameter comprises at least one of an inside slop value and an outside slop value.
As in Claim 10:
wherein the message usage threshold is associated with a trading strategy application corresponding to the trading strategy, and wherein the trading strategy application comprises a spreader trading application.
As in Claims 11 and 20:
wherein the trading strategy unit is configured to increase the predetermined range of prices for use by the trading strategy based on a predefined rule, and wherein the predefined rule gradually increases the predetermined range of prices over time based on a comparison of the message usage to the predefined message usage threshold before the message usage exceeds the message usage threshold.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
9. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) are:
“receiving, at a trading strategy unit at the gateway, the user input from the at least one trading device to define the predetermined range of prices for use by the trading strategy…”
“receiving, at the trading strategy unit, the predefined message usage threshold from the first electronic exchange to define a message usage threshold for the trading strategy”
“determining by a message user manager at the gateway, a message usage associated with the trading strategy, wherein the message usage is based on a number of messages being sent by the trading strategy determined by a message counter, wherein the message use manager is configured to compare the message usage to the predefined message usage threshold to determine that the message usage exceeds the message usage threshold”
“in response to the message use manager determining that the message usage exceeds the message usage threshold…”
as in Claim 2 and substantially similar Claim 13.
“wherein the trading strategy unit is configured to increase the predetermined range of prices for use by the trading strategy based on a predefined rule, and wherein the predefined rule gradually increase the predetermined range of prices over time based on a comparison of the message usage to the predefined message usage threshold before the message usage exceeds the message usage threshold”
as in Claims 11 and 20.
Because this/these claim limitation(s) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
10. 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.
As currently recited, the independent claims disclose the following limitations:
Claim 2, recites in part:
receiving, at the gateway, a predefined message usage threshold from the first electronic exchange, wherein the predefined message usage threshold is defined based on a threshold for message bandwidth;
“determining by a message use manager at the gateway, a message usage associated with the trading strategy, wherein the message usage is based on a number of messages being sent by the trading strategy determined by a message counter, wherein the message use manager is configured to compare the message usage to the predefined message usage threshold to determine that the message usage exceeds the message usage threshold”
Claim 13 recites in part:
receive, at the gateway, a predefined message usage threshold from the first electronic exchange, wherein the predefined message usage threshold is defined based on a threshold for message bandwidth;
“determine by a message use manager at the gateway, a message usage associated with the trading strategy, wherein the message usage is based on a number of messages being sent by the trading strategy determined by a message counter, wherein the message use manager is configured to compare the message usage to the predefined message usage threshold to determine that the message usage exceeds the message usage threshold”
In each instance, the claims indicate “wherein the predefined message usage threshold is defined based on a threshold for message bandwidth”. There is no disclosure of the predefined message usage threshold is defined on a threshold for message bandwidth in the specification.
Applicant’s specification discloses the following:
“Many exchanges impose limits of restrictions on the communication/transaction messages that are received from buyers and sellers. The limits are generally intended to ensure that the exchanges’ computer system is not overburdened, and to dissuade buyers and sellers from submitting excessive or unnecessary messages that could possibly limit order execution capacity and strategy capabilities of the dynamic exchange systems. For instance, one limit may include a cap on the number of any “in-flight” messages (which may include messages that have been submitted to the exchange, but the exchange has not yet provided a return confirmation receipt). In another example, a limit may be based on fill percentages, (e.g., a number of fills compared to the total number of transaction messages sent to the exchange). A fill is a message from an exchange indicating that an order has been matched [sic] another order in the market, and that a trade has now been consummated. The exchange preset limits may be enforced in many various manners. For example, an exchange may charge a fee when a specified message limit has been reached or when a percentage fill is lower than a specified percentage.” (See Applicant Spec, page 3, last para to page 4, first para)
“Yet, another limit may be on the number of transactions submitted by a member in a given time period. Orders are often revised and resubmitted by traders to reflect changes in their desired positions. Traders may revise their transactions to reflect even small changes in the market, and when prices in the market move rapidly, this may result in a large number of transactions being submitted to the exchange. Excessive quoting (which refers to any type of transaction including orders and quotes) can place a burden on the exchange.” (See Applicant Spec page 4, middle para)
“Also, with an increased use of automated trading tools, reaching or exceeding these limits may occur rather easily. Indeed, the use of such tools can easily overburden an exchange’s message handling capacity or processing capability. It is therefore desirable for electronic trading system to offer tools that can be used to control message traffic in view of limited resources protected by message policies that are set by an electronic exchange.” (See Applicant Spec page 4, last para)
“Systems and methods are provided, among other things, to facilitate managing transaction messages based on exchange-based message use policies. According to one example method, a trader or an administrator may define one or more message usage thresholds to be used in relation to a client entity, such as a client terminal associated with a single trader, or a group of client terminals associated with a plurality of traders. Alternatively, the message usage threshold can be dynamically set based on a threshold level being received from an electronic exchange. In an example embodiment, the client entity utilizes on or more trading strategies for trading at an electronic exchange, and sends transaction messages to the electronic exchange. A message usage threshold can be based on a certain limit, such as the number of transaction messages that are sent from the client entity, and/or a fill percentage associated with the client entity, or yet some other transaction message measurement.
The example method further includes dynamically monitoring message usage associated with the client entity based on the defined message usage threshold. In one embodiment, the step of monitoring message usage may include monitoring the total number of messages being sent and/or a total number of fills, and calculating a fill percentage associated with the client entity. The method then includes comparing the message usage to the predefined thresholds. Based on the comparison, the method may then include dynamically adjusting one or more trading strategies being used at the client entity in attempt to not violate the message use policy at the electronic exchange.” (See Applicant Spec page 7)
“A trader could also define one or more rules that could be used to control the timing of modification of the trading strategies by the trading strategy manager 206. As mentioned earlier, any trading strategies being used at a client entity could be modified when a predefined threshold limit associated with a message use policy, such as a member of messages or fill percentage, is detected. Alternatively, more than one threshold limit could be used so that the process of modifying trading strategies could be activated a number of times before a client entity becomes close to reaching the exchange-defined limits. Different embodiments are possible as well. (See Applicant Spec page 22, para 2)
Thus, while the specification supports a predefined message usage threshold, the specification does not disclose that the basis of the threshold is a threshold for message bandwidth. Further, in the penultimate limitations, the comparison using the predetermined message usage threshold to the message usage is not supported as the underlying basis of the predetermined message threshold is based upon an unsupported element. Dependent Claims 2-12 and 14-21 are further rejected as based upon a rejected base 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.
11. Claims 2-21 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.
In Claim 2 in the last limitation, the claim recites in part “in response to the message use manager determining that the message usage exceeds the message usage threshold, increasing by the trading strategy the predetermined range of prices for use by the trading strategy, wherein the increased acceptable range of prices results in the trading strategy generating and sending fewer new trade order messages for the first tradeable object to re-price the existing trade order pending at the first electronic exchange for the first tradeable object based on market changes in the second tradeable object”. It is unclear what Applicant is attempting to claim. In the manner written, it appears that Applicant is attempting to claim that the trading strategy itself is increasing the predetermined range of prices and generating and sending fewer new trade order messages. Examiner is unclear whether Applicant intended to recite that trading strategy unit (as part of the message use manager) was performing these functions, or the trader was increasing the metrics or in fact if the Applicant intended to recite that the trading strategy was somehow being treated as a functional piece of hardware or software, which is not supported by the specification. Independent Claim 13 has a substantially similar limitation which is similarly rejected. Dependent Claims 4, 11, 15 and 20 also have the same ambiguity. Appropriate correction and amendment is required. Dependent on Applicant’s amendments and response, this may rise to a 112(a) issue.
Dependent claims 3-12 and 14-21 are further rejected as dependent on a rejected base claim.
Additionally, claim limitations:
“receiving, at a trading strategy unit at the gateway, the user input from the at least one trading device to define the predetermined range of prices for use by the trading strategy…”
“receiving, at the trading strategy unit, the predefined message usage threshold from the first electronic exchange to define a message usage threshold for the trading strategy”
“determining by a message user manager at the gateway, a message usage associated with the trading strategy, wherein the message usage is based on a number of messages being sent by the trading strategy determined by a message counter, wherein the message use manager is configured to compare the message usage to the predefined message usage threshold to determine that the message usage exceeds the message usage threshold”
“in response to the message use manager determining that the message usage exceeds the message usage threshold…”
as in Claim 2 and substantially similar Claim 13.
“wherein the trading strategy unit is configured to increase the predetermined range of prices for use by the trading strategy based on a predefined rule, and wherein the predefined rule gradually increase the predetermined range of prices over time based on a comparison of the message usage to the predefined message usage threshold before the message usage exceeds the message usage threshold”
as in Claims 11 and 20 invoke 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.
Trading strategy unit: The only references to the trading strategy unit are in the following paragraph of the Applicant’s specification:
“The message use manager 200 also includes a trading strategy manager 206 and a trading strategy unit 212. The trading strategy unit 212 may store a number of trading strategy modification rules to be applied in relation to the trading strategies being used at one or more client entities at the time when the trigger(s) are detected. The trading strategy unit 212 could also store a new set of trading strategies to be applied in relation to a client entity when one or more message use triggering events are detected. It should be understood that trading strategy modification rules may be of many different formats and functions. In general, if a message use policy at an electronic exchange is based solely on the number of messages being submitted by a client entity, the trading strategy modification rules may be configured to control and lower the number of messages being sent from a client entity. Alternatively, if a message use policy at an electronic exchange is based on a fill percentage, the trading strategy modification rules can be configured to increase the number of fills associated with a client entity, and/or decrease the overall number of messages being submitted from the client entity.” (See Applicant Spec page 15, last para)
The trading strategy unit is disclosed to be within the message usage [also referred to message use] manager as seen in Figure 2.
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“Figure 2 is a block diagram illustrating an example message use manager 200 that can be used to manage trading strategies based on message usage at a client entity. The message use manager 200 can be implemented on any entity in communication with one or more electronic exchanges and client entities. As an example, the message use manager 200 could be located at a gateway, such as the gateway 104 illustrated in Figure 1. The functionality of the message use manager 200 could be alternatively distributed between multiple devices , or it could be at the client entity. It should be understood that the message use manager 200 can be configured to manage trading strategies corresponding to multiple client entities, while the multiple client entities can access multiple exchanges having different message usage policies.”
The message use manager 200 includes a user interface 202 that can be used to define message usage thresholds. For example, a system administrator or a trader could use the user interface 202 to define message usage threshold to the be applied in relation to one or more client entities. Alternatively, message usage thresholds can be automatically updated at the message use manager 200 based on data provided by an exchange. The message usage thresholds could be provided in data feeds that are sent from an exchange to client entities. In such an embodiment, if an exchange modifies its message usage policy during a trading day, the corresponding values can be automatically updated at the message use manager based on the information provided in the data feed.” (See Applicant Spec page 11, last para to page 12)
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
12. Claims 4-5, 7, 12, 15-16, and 18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding Claims 4-5, 7, 12, 15-16 and 18, these claims depend on Claims 2 and 13 respectively. Claim 4 recites “wherein the predefined message usage threshold is based on a number of messages being sent by the trading strategy” while Claims 5 and 16 recites “wherein the predefined message usage threshold is based on a number of fills associated with trade orders corresponding to the trading strategy”.
Claims 7 and 18 recites “wherein the predefined message usage threshold is based on a fill percentage associated with trade orders corresponding to the trading strategy” and Claim 12 recites “wherein the predefined message usage threshold is selected from a plurality of predefined message usage thresholds set based on an exchange-defined message usage threshold, and wherein the plurality of predefined message usage threshold is lower than the exchange-defined message usage threshold.”
As to Claim 15, the claim recites “wherein the predefined message usage threshold is based on a number of messages being sent by the trading strategy”.
Claims 2 and 13, from which the claims depend already recite “wherein the predefined message usage threshold is defined based on a threshold for message bandwidth”. Aside from the 112(a) issues, above, the claims attempt to claim limitations redefining how the predefined message usage threshold is defined, which violates 112(d) for failing to recite the limitations of the independent claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
13. Claims 2-21 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
ANALYSIS:
STEP 1:
Does the claimed invention fall within one of the four statutory categories of invention (process, machine, manufacture or composition matter?
Claim 2 recites a method claim. Claim 13 recites a computer readable medium claim. Currently, the computer readable medium claim has a separate rejection as being non-statutory (as shown below) however Examiner assumes that Applicant will rectify the claims to properly claim the invention as within statutory categories.
STEP 2A:
Prong One: Does the Claim Recite A Judicial Exception (An Abstract Idea, Law of Nature or Natural Phenomenon)? (If Yes, Proceed to Prong Two, If No, the claim is not directed to a judicial exception and qualifies as subject matter patent eligible material)
Claim 2 (and substantially similarly Claim 13) recite the abstract idea of managing a trading strategy. The idea is described by the following limitations:
determining a trade order message for a first tradeable object was sent;
receiving a user input to define a predetermined range of prices for use by a trading strategy;
receiving market data changes in the first tradeable object;
receiving a predefined message usage threshold, wherein the predefined message usage threshold is defined based on a threshold for message bandwidth;
receiving market data changes in a second tradeable object;
receiving the user input to define the predetermined range of prices for use by the trading strategy, wherein the predetermined range of prices limits when the trading strategy generates and sends a new trade order message for the first tradeable object at a new price to re-price an existing trade order pending for the first tradeable object, wherein the existing trade order is to be re-priced to maintain a desired strategy price based on market data changes in the second tradeable object compared to the first tradeable object;
receiving the predefined message usage threshold to define a message usage threshold for the trading strategy;
determining a message usage associated with the trading strategy, wherein the message usage is based on a number of messages being sent by the trading strategy determined by a message counter, to compare the message usage to the predefined message usage threshold to determine that the message usage exceeds the message usage threshold; and
in response determining that the message usage exceeds the message usage threshold, increasing by the trading strategy the predetermined range of prices for use by the trading strategy, wherein the increased acceptable range of prices results in the trading strategy generating and sending fewer new trade order messages for the first tradeable object to re-price the existing trade order pending for the first tradeable object based on market changes in the second tradeable object.
As to certain methods of organizing human activity, the steps involve fundamental economic principles or practices including hedging and/or mitigating risk; commercial interactions including marketing and sales activities or behaviors, business relations; and/or managing personal behavior or relationships or interactions between people including following rules or instructions as seen in the limitations recited above. (Step 2A – Prong 1: YES, the claims are abstract)
Prong Two: Does the Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application of the Exception? (If Yes, the claim is not directed to a judicial exception and qualifies as subject matter patent eligible material. If No, Proceed to Step 2B)
The claims do not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, are not applying the judicial exception with, or by use of a particular machine, are not effecting a transformation or reduction of a particular article to a different state or thing, and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In particular, the claims only recite a gateway, at least one trading device, a first electronic exchange, a second electronic exchange, a trading strategy unit, a message use manager, a computer readable medium, instructions, and a processor which are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, Claims 2 and 13 are directed to an abstract idea without a practical application. (Step 2A – Prong 2: No, the additional claimed elements are not integrated into a practical application)
STEP 2B: If there is an exception, determine if the claim as a whole recites significantly more than the judicial exception itself.
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: i) receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)); ii) performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims."); iii) electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); iv) storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93; v) electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and vi) a web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015). (MPEP §2106.05(d)(II))
This listing is not meant to imply that all computer functions are well‐understood, routine, conventional activities, or that a claim reciting a generic computer component performing a generic computer function is necessarily ineligible. Courts have held computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking). On the other hand, courts have held computer-implemented processes to be significantly more than an abstract idea (and thus eligible), where generic computer components are able in combination to perform functions that are not merely generic. (MPEP §2106.05(d)(II) – emphasis added)
Below are examples of other types of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: recording a customer’s order, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016); shuffling and dealing a standard deck of cards, In re Smith, 815 F.3d 816, 819, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016); restricting public access to media by requiring a consumer to view an advertisement, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014); identifying undeliverable mail items, decoding data on those mail items, and creating output data, Return Mail, Inc. v. U.S. Postal Service, -- F.3d --, -- USPQ2d --, slip op. at 32 (Fed. Cir. August 28, 2017); presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; determining an estimated outcome and setting a price, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; and arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir. 2015) (MPEP 2106.05(d))
Here, the steps are receiving or transmitting data over a network; performing repetitive calculations; storing and retrieving information in memory as well as setting or determining a price– all of which have been recognized by the courts as well-understood, routine and conventional functions.
The claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known in the industry.
For the next step of the analysis, it must be determined whether the limitations present in the claims repre