DETAILED ACTION
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 .
This application is a CON of 17/550,647 12/14/2021 ABN
17/550,647 is a CON of 16/233,677 12/27/2018 ABN
16/233,677 is a CON of 14/710,016 05/12/2015 ABN
14/710,016 has PRO 61/991,683 05/12/2014
Claim Status
Claims 6 and 8 are currently pending and rejected.
Claim 7, 9, and 10 are canceled.
Claims 1-5 and 11-15 are withdrawn.
Claim Rejection – 35 U.S.C. 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 6 and 8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The rationale for this finding is explained below. In the instant case, the claims are directed towards analyzing user trading strategy and applying a selected strategy profile to desired trades. The concept is clearly related to managing people’s trading behavior, thus the present claims fall within the Certain Method of Organizing Human Activity grouping. Moreover, the claimed steps can be performed mentally, thus the present claims also fall within the Mental Processes grouping. The claims do not include limitations that are “significantly more” than the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Note that the limitations, in the instant claims, are done by the generically recited computer device. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Therefore, claims 6 and 8 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Step 1: The claims 6 and 8 are directed to a process, machine, manufacture, or composition matter.
In Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014), the Supreme Court applied a two-step test for determining whether a claim recites patentable subject matter. First, we determine whether the claims at issue are directed to one or more patent-ineligible concepts, i.e., laws of nature, natural phenomenon, and abstract ideas. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–96 (2012)). If so, we then consider whether the elements of each claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.
Claim 6 and 8 are directed to a manufacture (i.e., non-transitory computer readable medium)
Step 2A: The claims are directed to an abstract idea.
Prong One
The present claims are directed towards analyzing user trading strategy and applying a selected strategy profile to desired trades. The concept comprises receiving characteristics of a preferred trading strategy from a trader and storing them in a strategy profile, providing a set of stored strategy profiles to the trader, receiving a selection of a strategy profile from the trader, receiving a selection of a desired trade, and applying the selected strategy profile to the desired trade (by comparing characteristics of selected strategy profile to the characteristics of available trades, finding the closest match, presenting the closest available trades, and receiving a selection from user). The present claims are related to analyzing human trading behavior and managing human trading, thus the present claims fall within the Certain Method of Organizing Human Activity grouping. Moreover, the claimed steps can be performed mentally, thus the present claims also fall within the Mental Processes grouping. The performance of the claim limitations using generic computer components (i.e., a processor and a memory) does not preclude the claim limitation from being in the certain methods of organizing human activity grouping. Accordingly, this claim recites an abstract idea.
Prong Two
Independent claim 6 a processor coupled with a memory as additional elements. Dependent claim 8 does not recite any other additional element. The additional elements are claimed to perform basic computer functions, such as receiving data, storing data, displaying data, receiving selection, and comparing trading data to rules. The recitation of the computer elements amounts to mere instruction to implement an abstract concept on computers. The present claims do not solve a problem specifically arising in the realm of computer networks. Rather, the present claims implement an abstract concept using existing technology in a networked computer environment. The present claims do not recite limitation that improve the functioning of computer, effect a physical transformation, or apply the abstract concept in some other meaningful way beyond generally linking the use of the abstract concept to a particular technological environment. As such, the present claims fail to integrate into a practical application.
Step 2B: The claims do not recite additional elements that amount to significantly more than the abstract idea.
As discussed earlier, the present claims only recite a processor coupled with a memory as additional elements. The additional elements are claimed to perform basic computer functions, such as receiving data, storing data, displaying data, receiving selection, and comparing trading data to rules. According to MPEP 2106.05(d), “performing repetitive calculations”, “receiving, processing, and storing data”, “electronically scanning or extracting data from a physical document”, “electronic recordkeeping”, “storing and retrieving information in memory”, and “receiving or transmitting data over a network, e.g., using the Internet to gather data” are considered well-understood, routine, and conventional functions of computer. The present claims do not improve the functioning of computer technology. Simply implementing the abstract idea on a generic computer or using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Therefore, the present claims are ineligible for patent.
Response to Remarks
Rejection under 35 U.S.C. 101
Applicant's arguments filed on 08/04/2025 have been fully considered but they are not persuasive.
Applicant argued that the amended claim 6 “utilizes the computer to compare specific characteristic of the selected strategy profile to the characteristics of available trades for the desired profile”, and presents the closest available trades to the trader. Applicant argued these are “specific steps based on specific characteristics that are significantly more than the abstract idea”. Examiner first points out that “specific steps based on specific characteristics” is not a condition for overcoming rejection under 35 U.S.C. 101. The utilization of computer to compete certain process steps does not automatically render the claims non-abstract. In this case, the computer is merely an extra-solution – automating functions that can be easily performed by human. Comparing characteristics of trading strategy to the characteristics of available trades to fine closest match can be a mental process. The amended claim 6 is similar to the ineligible claims in Electric Power Group v. Alstom, because they are directed to a computerized process of receiving data, analyzing data, and presenting result of the analysis.
Applicant argued that “amended independent claim is clearly directed to a specific method of comparing specific characteristics of the selected strategy profile to the characteristics of available trades for the desired trades”, “finding one or more available trades that are closest to the selected strategy profile”, and presenting the closest available trades for trader to select. Examiner points out that applicant’s own summary of the claim still describes managing human trading behavior by comparing available trades to user’s trading strategy. Moreover, the computer implementation is an extra-solution, as the claim can be performed by human. Therefore, the amended claim 6 still falls under the grouping of “certain methods of managing human activities” and the grouping of “mental processes”.
Applicant argued that in Step 2A states “An invention is not rendered ineligible for patent simply because it involves an abstract concept. Applications of such concepts ‘to a new and useful end’, remain eligible for patent protection”. Examiner points out to be patent eligible in Step 2A prong 2, the claim needs to integrate the abstract concept into a practical application. The conditions for integrating into practical application include recitation of limitation that improves the functioning of computer, effects a physical transformation, or applies the abstract concept in some other meaningful way beyond generally linking the use of the abstract concept to a particular technological environment. In the amended claim 6, computer performs basic computer function, such as receiving characteristics of preferred trading strategy from a trader, storing the received trade strategy characteristics, providing a set of stored strategy profiles to the trader, receiving a selection of strategy profile, receiving a selection of a desired trade, and applying the selected strategy profile to the desire trades (by comparing characteristics of selected strategy profile to the characteristics of available trades, finding the closest match, presenting the closest available trades, and receiving a selection from user). Exchanging data over network, performing data comparison/analysis, presenting result of comparison/analysis, and receiving user selection can be performed by any off-the-shelf general-purpose computers. Amended claim 6 does not recite any improvement in computer functionality or satisfy any other integration to application condition. Therefore, amended claim 6 fails to integrate the abstract concept into a practical application.
Applicant further argued the claims are patentable under 35 U.S.C. 101 “based on the second step, determining whether the additional elements transform the nature of the claim into a patent-eligible application”. Applicant argued that the “amended steps provide that the closest available trades are presented to the trader for selection”, and that these additional elements are not found in the prior art. Examiner points out that even though some of the claimed steps are not found in the prior art, those steps represent innovation in the realm of abstract concept, not inventive feature in computer functionality. The amended features, “comparing characteristics of the selected strategy profile to the characteristics of available trades for the desired trade; finding one or more available trades that are closet to the selected strategy profile; presenting the one or more closest available trades to the trader; and receiving a selection of one of the one or more closest available trades from the trader”, do not require any thing other than off-the-shelf computer to implement. The comparing and finding steps can even be performed in the human mind, and the presenting steps can be done on paper. According to MPEP 2106.05(d), “performing repetitive calculations”, “receiving, processing, and storing data”, “electronically scanning or extracting data from a physical document”, “electronic recordkeeping”, “storing and retrieving information in memory”, and “receiving or transmitting data over a network, e.g., using the Internet to gather data” are considered well-understood, routine, and conventional functions of computer. The present claims do not improve the functioning of computer technology.
Simply implementing the abstract idea on a generic computer or using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Therefore, the present claims are ineligible for patent. Examiner maintains the ground of rejection under 35 U.S.C. 101.
Rejection under 35 U.S.C. 103
Applicant’s arguments, see Remarks, filed on 08/04/2025, with respect to rejection under 35 U.S.C. 103 have been fully considered and are persuasive. Examiner agrees that the cited references, Cruz et al. (Patent No.: US 10,755,350) and Lynn et al. (Pub. No.: US 2014/0052601), fail to teach the amended feature “comparing characteristics of the selected strategy profile to the characteristics of available trades for the desired trade; finding one or more available trades that are closet to the selected strategy profile; presenting the one or more closest available trades to the trader; and receiving a selection of one of the one or more closest available trades from the trader”. Examiner has conducted updated search, but could not find prior art to address the amended feature. Therefore, the rejection of 6-10 under 35 U.S.C. 103 has been withdrawn.
Conclusion
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.
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/HAO FU/Primary Examiner, Art Unit 3695
NOV-2025