Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
Claims 1-18 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. The independent claims have been amended from “providing, to the participant, information identifying that the order for the financial instrument exists, in which the information does not include the side of the trade” to “exclusively providing, to the participant, information identifying that the order for the financial instrument exists, in which the information does not include the side of the trade”. The teaching nd means for exclusively providing, to the participant, information identifying that the order for the financial instrument exists, in which the information does not include the side of the trade is not described in the originally presented application.
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.
Claim 1-18 are rejected pursuant to 35 USC 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent claim 1 is directed to a method. Claim 7 is directed to a computer readable medium. Claim 13 is directed to a device. Claim The independent claims are eligible statutory categories of invention. (Step 1: YES).
Claim 1 – the representative claim - recites the abstract idea of processing an indication of a trade interest.
The steps of the abstract idea are the following:
receiving an indication of an order, in which the order includes a side of a trade for a financial instrument;
determining that a matching order is stored in an order management system associated with a participant, in which a matching order includes an opposite side of the trade for the financial instrument;
exclusively providing, to the participant, information identifying that the order for the financial instrument exists, in which the information does not include the side of the trade;
and requesting that the participant perform an action in order to receive additional information about the order.
The above abstract idea recites a fundamental economic practice and/or commercial interaction. These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice and/or commercial interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Accordingly, claim 1 (and 13) recites an abstract idea.
Step 2A-Prong 1: YES. The claims recite an abstract idea).
The bolded terms of claim 1 recite an Order Matching System (OMS). Said bolded term is just (applying) a generic computer components / computer driven systems to perform the above noted abstract idea limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. That said, the independent claims still recite per Step 2A-Prong 1 an abstract idea, despite their applying computers/ computer components to the abstract idea as just noted.
The OMS above noted is recited at a high-level of generality and the same amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, the additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. That said, the claims are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additionally claimed elements in the claims do not integrate the abstract idea into a practical application).
The above reviewed also do not include additional elements that are sufficient to amount to significantly more than the judicial exception. When considered separately and as an ordered combination, the claims do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to perform a judicial exception by applying generic computer components and thereby automating the process cannot provide an inventive concept.
This lack of providing significantly more than the judicial exception is also referred to as its claims lacking an “inventive concept. See MPEP 2106.05(f) where applying a computer as a tool to the abstract idea is not indicative of significantly more. The above detailed non-computer related elements do not change the outcome of the analysis, as they simply further limit ways which the abstract idea may be performed. (Step 2B: NO. The claims do not provide significantly more than the judicial exception).
In summary, the claim reviewed as above does not include any additional elements that integrate its abstract idea into a practical application, or that are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Claims 2-6 are further steps that fall within methods of organizing human activity and are rejected for the reasons above. Claims 7 and 13 are the functional equivalents of the method and are rejected for the reasons above.
Response to Arguments
Relying upon the claim amendment, the applicant argues that the claims are integrated into a practical application because they provide a specific technical solution to "information leakage". The examiner disagrees as the nexus between the exclusivity and the technical improvement has not been established.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1 is/are rejected under pre-AIA 35 U.S.C. 102(a) as being anticipated by Fitzpatrick US Patent 8046290
receiving an indication of an order, in which the order includes a side of a trade for a financial instrument; p (36) Search-results region 1382 is also defined in memory and upon rendering displays IOI listings 1382A-1382C from IOI database 124
determining that a matching order is stored in an order management system associated with a participant, in which a matching order includes an opposite side of the trade for the financial instrument; (38) Sell-side and buy-side order management systems (OMSs) 140 and 150 are operatively coupled to respective sell-side and buy-side access devices 110 and 130. In the exemplary embodiment, these OMSs are conventional and include conventional capabilities, such as the capability to communicate via FIX protocol, with other devices and/or systems. In some embodiments, the OMSs may include additional functionality, such as to automatically report trades in a third market, to drive special routing to an accepting trader to facilitate printing, and to send Execution Reports for specific executions directly to another OMS via FIX protocol. Also, in some embodiment, one or more portions of the order management system are incorporated into financial servers 120, or one or more portions of financial servers 120 are incorporated into order management systems 140 and/or 150.
Exclusively providing (p 0012) , to the participant, information identifying that the order for the financial instrument exists, in which the information does not include the side of the trade; (7) A buy-side trader viewing these IOIs in an online list can then select an IOI for a stock and create a placeholder trade ticket in her order management system, with the ticket order including information from the IOI. Next, the buy-side trader contacts the IOI sender via a separate telephone, email, or instant messaging system to discuss a potential trade. If agreement is reached, the buy-side trader manually edits the place holder trade ticket (in their buy-side Order Management System (OMS)) to conform to the terms and electronically sends the agreed on trade terms to the dealer trading system. The dealer then proceeds to execute the trade, reporting the transaction to the public market place and returning resulting execution reports to the buy-side OMS
and requesting that the participant perform an action in order to receive additional information about the order. P[42] Similarly defining the IOI as an actionable IOI entails checking or unchecking a check box or radio button and thereby setting a binary value to indicate whether or not the IOI is associated with an online negotiation process.
Response to Arguments
Prior art teaches the exemplary system also includes entitlement features that allow IOI senders to provide preferential treatment to select IOI recipients. For example, one feature allows IOI senders to define which, if any, recipients of their IOIs can or cannot access an IOI having the associated online negotiation mechanism.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD C WEISBERGER whose telephone number is (571)272-6753. The examiner can normally be reached Monday - Thursday 10AM-8PM PCT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RICHARD C. WEISBERGER
Examiner
Art Unit 3693
/RICHARD C WEISBERGER/Primary Examiner, Art Unit 3693
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