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 .
Notes:
There is no 35 U.S.C. 101 rejection for the reasons listed in the parent case 17/458869. This explanation is already of record in that case and will not be reproduced here.
This Office Action includes prior art rejections and a non-statutory double-patenting rejection.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claim 1-17, 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of parent application 17/458869. Although the claims at issue are not identical, they are not patentably distinct from each other because they differ only in wording or for the new dependent claims, type of data used, not functional limitation.
Regarding new claim 18, this would add a new feature that would overcome the double patenting rejection, but is still rejected under prior art discussed below.
Claim Rejections - 35 USC § 102
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-17 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Goldenberg et al. (US 7499883B2), hereinafter “Goldenberg”.
Regarding claims 1, 7, and 13, Goldenberg discloses a computer-implemented method and non-transitory computer program product for electronic portfolio trading of corporate bonds using a computer system capable of communication with one or more client computers and one or more dealer computers across a trading platform (Abstract discloses that the invention is directed to an electronic inquiry list for financial products. Specifically, inquiry lists financial interests are submitted, negotiated and traded between investors and dealers over a network or networks. An investor interface for display is provided to an investor. A dealer interface for display is provided to a plurality of dealers. The investor can create an inquiry list via the investor interface containing a plurality of inquiries for a corresponding plurality of different financial interests and can send a message containing the inquiry list to selected dealer(s) where an established relationship exists between said investor and dealers. The dealer(s) can provide respective responses to the message, the response containing respective offers/bids on the plurality of inquiries contained in the inquiry list via the dealer interface. The respective offers/bids are displayed in the inquiry list on the investor interface. The investor may then select one of the respective dealer offers/bids for each inquiry list line item via the investor interface), the method comprising:
causing to display on the client computer a pre-trade interface, the pre-trade interface designed and configured to receive one or more inputs related to one or more bonds used to create a portfolio list (As discussed above, Goldenberg relates to negotiation and trading of financial products. Col. 1, lines 50-65 define financial products as specifically including stocks, options, futures, and bonds. One area where efficiencies have been late to arrive is in inquiry lists—or the ability to request bids or offers on multiple issues simultaneously. This process has conventionally been labor intensive. An institutional investor may put together a list of items to sell and items to buy. These lists are then disseminated to various dealers for reply. For many years this process was done using a combination of paper, telephone, Teletype and fax machines. Lists are sent to one or more dealers with due-in times set for later that day (or beyond). Dealer responses come back to the investor at various times via various means (phone, fax, teletype). The responses are collated and analyzed by the Sender. Col. 4, lines 5-15 teach a solution to this problem by providing an electronic interface providing clients with the ability to create and Submit multi-issue inquiries to multi-dealers, via one integrated system. The system then allows for multi-dealer responses to these multi-issue inquiries and allows for the client to execute (trade on) any one or more of the issues. Col. 5, lines 40-45 disclose that Fig. 8 is an example of a list initiator's partially completed inquiry list edit Screen display according to a preferred embodiment of the invention. This is a pre-trade interface because this is the list that is going to be sent to the dealer (see Fig. 10 and Col. 5, lines 45-50 which define a dealer is the receiver of the list) for negotiation and trade. Regarding the list limitation, the one or more bonds are used to create a portfolio list – the recitation above explicitly states that the pre-trade interface is a list that is going to be sent to a dealer);
receiving through the pre-trade interface from a client, the request comprising data relating to a bonds used to create a portfolio (Col. 8, lines 63-67 and Col. 9, lines 1-10 disclose that in FIG. 4 the inquiry list process begins when the list initiator selects the “Bid/Offer List option from the main view (410). He is then presented with an inquiry list edit screen (420). During the edit list state, the list initiator is creating a new list or modifying a list that was either previously sent or previously created but not sent. The list initiator populates the inquiry list by selecting items from an instrument database provided by the system or by selecting items from his uploaded portfolios. For each instrument on the inquiry list the list initiator then enters a size or amount that he wants to transact. This is receiving a request for data relating to the portfolio);
generating through the trading platform a portfolio list based on the data received from the client (See limitation above and at least Col. 14, lines 50-67 disclosing a variety of different user interfaces may be employed to implement these features. FIGS. 7 through 16 are example screen displays containing user interfaces for creating and Submitting inquiry lists in accordance with a preferred embodiment of the invention. These screen displays and included user interfaces are preferably provided by a viewer software application installed on computer 230);
transmitting through the trading platform the portfolio list to the one or more dealer computers (As disclosed above, the dealer receives the list);
receiving through the trading platform from the one or more dealer computers quotes relating to one or more of the bonds that comprise the portfolio of the bonds that are displayed in the portfolio list (Col. 8, lines 25-35 disclose that transaction n engine 330 updates each item in the inquiry list as dealers respond thereto with, depending on instrument type, spread, yield, discount margin or price, or pass on the item);
causing to display on the client computer a negotiation interface, the negotiation interface designed and configured to display the portfolio list and pricing data based on the received quotes and to dynamically provide updated portfolio level pricing data and portfolio level analytics information for the portfolio list based on inputs received from the client, wherein when a client deselects an item from within the portfolio list the pricing data and portfolio level analytic information is dynamically updated in real time to reflect a sub-portfolio that comprises each of the items in the portfolio list other than the deselected item (As shown in Fig. 7, and Col. 15, lines 35-50, the investor may initiate an inquiry (which may or may not ultimately be used for a trade of a selected financial product) using the “trade” button 703 or the like. Preferably, an inquiry screen is initially displayed in response to the user clicking on trade button 703. Col, 16, lines 60-67 further teach updating the list by a select all and clear button, showing that various items on the interface can be removed by user selection/clear. This is adding and removing data, this displaying a sub-portfolio, in “real time”. Further, Col, 8, lines 25-35 disclose that transaction engine 330 updates each item in the inquiry list as dealers respond thereto with, depending on instrument type, spread, yield, discount margin or price, or pass on the item. Further at least the price discussed above is a “portfolio level analytic information”. Regarding the new limitation of portfolio level pricing data, this section clearly teaches that the updated data – all updated data – is related to a portfolio, and thus portfolio level. Further, Col. 8, lines 40-46 explicitly state that the transaction engine also updates each item in the inquiry list as dealers submit the final price and sends a final price alert to the user. This is portfolio level analytics. Please note that this addresses claim 14 because all items are commonly quoted through received data (i.e. final price and price alert)) Regarding the new limitations that the quotes are received from dealers and that the deselection is done without receiving any additional information form the dealers, this is taught by the sections cited above. Specifically, Col, 16, lines 60-67 further teach updating the list by a select all and clear button, showing that various items on the interface can be removed by user selection/clear. This is done by a user, not a dealer);
receiving through the trading platform a request to trade the items in the sub-portfolio from the client computer based on a selected dealer’s quotes (Col. 9, lines 15-25 disclose for financial instruments that require the selection of a benchmark instrument, the list initiator must select the method for trading. The list initiator can choose to trade the financial instrument "outright’ as a single transaction, or “cross' the instrument selected with the chosen benchmark instrument. For each item where “cross' is selected, the list initiator is looking to perform two simultaneous or near simultaneous opposing transactions; the buy/sell of the financial instrument and the sell/buy of the selected benchmark instrument);
executing a transaction through the trading platform for the sub-portfolio between the client and selected dealer (As disclosed above, the entire point of the invention is directed towards trading bonds).
Regarding claims 2 and 8, Goldenberg discloses the method and product of claims 1 and 7 wherein the portfolio is generated based on data from the trading platform (As disclosed above, all data is produced through the trading platform).
Regarding claims 3 and 9, Goldenberg discloses the method and product of claims 1 and 7 wherein the data relating to the portfolio includes a listing of one or more dealers (This is discussed in the rejection to claims 1 and 7);
Regarding claims 4, 10, and 15, Goldenberg discloses the method and product of claims 1 and 7 where the data relating to the portfolio includes desired timing related to a trade (Col. 11, lines 8-18 discloses a “Response Due” timer, which is desired timing related to a trade);
Regarding claim 5, 11, and 16, Goldenberg discloses the method and product of claims 1 and 7 wherein the pricing data comprises one or more of the following: net proceeds, weighted average spread, weighted average prices and weighted average yields (Col. 4, lines 60-67 disclose once the items are selected and a corresponding size for each item entered, and other relevant parameters set, the Inquiry List can be presented simultaneously to a selected group of dealers whereupon each dealer may return with spread, yield, discount margin or price levels (depending on instrument type) where they are willing to transaction each list item).
Regarding claims 6, 12 and 17, Goldenberg discloses the method and product of claims 1 and 7 further comprising receiving through the pre-trade interface a counter offer from a client, the counter offer related to the pricing of one of the one or more bonds that comprise the portfolio (Col. 24, lines 1-10 disclose a COUNTER button that a user can use to respond to a dealer’s response).
Regarding claim 18, as discussed in claim 1, when an item is deselected, the new interface is provided to the user without that item. This is recalculating portfolio-level analytics in real time.
Regarding claim 19, Col. 15, lines 25-35, as well as numerous other places within the reference discusses bonds.
Response to Arguments
Applicant’s arguments are fully considered, but are deemed unpersuasive. Regarding the new limitations that the quotes are received from dealers and that the deselection is done without receiving any additional information form the dealers, this is taught by the sections cited above. Specifically, Col, 16, lines 60-67 further teach updating the list by a select all and clear button, showing that various items on the interface can be removed by user selection/clear. This is done by a user, not a dealer.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARYAN E WEISENFELD whose telephone number is (571)272-6602. The examiner can normally be reached M-F 9-5.
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ARYAN E. WEISENFELD
Primary Examiner
Art Unit 3689
/ARYAN E WEISENFELD/Primary Examiner, Art Unit 3663
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