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 .
Status of Application
This is a final action is in response to amendments to the claims and Remarks submitted on November 26, 2025 relating to U.S. Patent Application 18/749,141, filed on June 20, 2024, which is a Continuation of Application No. 16/651,258, filed on February 16, 2022, now Pat. No. 12,045,882, which claims priority to U.S. Provisional Application 63/149,990, all filed on February 16, 2021. Claims 1, 13, 16 and 18-19 have been amended. Claim 2 has been cancelled. Claim 21 has been added. Claims 1 and 3-21 are pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statement submitted by the Applicant on June 20, 2024 is in compliance with the provisions of 37 CFR 1.97 and has been considered by the examiner.
Response to Arguments
The Remarks submitted by Applicant on November 26, 2025 have been fully
considered.
With respect to the Double Patenting rejection, Applicant has requested that the rejection be held in abeyance until resolution of the Section 101 rejection. (Remarks, p. 8). The Double Patenting rejection is maintained.
With respect to the Section 101 rejection, Applicant has amended independent Claims 1, 13 and 18 to include the elements “… the trained model comprising: a first component, executed using a classical processor, which receives the market tick data and the order data and produces a first latent vector, a second component, executed using a quantum processor, which receives the first latent vector and produces a second latent vector, and a third component, executed using the classical processor, which receives the second latent vector and produces the classification …”. Applicant asserts that the combination of elements recite a technical improvement to the functioning of a computer which integrates the judicial exception into a practical application, as well as provide significantly more than the judicial exception, particularly, the application of quantum machine learning algorithms to the price movement identification problem using a hybrid classical / quantum structure. (Remarks, pp.8-10). Applicant’s argument is persuasive. The Section 101 rejection is withdrawn.
Insofar as the aforementioned amendments submitted by Applicant are not supported by the disclosure a Section 112(a) rejection has been issued below.
Double Patenting Rejection
The non-statutory 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 non-statutory 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 non-statutory 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 and 3-21 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 - 20 of U.S. Patent 12,045,882. Although the claims at issue are not identical, they are not patentably distinct from each. Claim 1 from the instant application and Claim 1 of the ‘882 patent each teach a method for determining which side of order book market liquidity will cluster at a future time period, the method comprising: receiving, substantially continuously and by the order book circuitry, market tick data; receiving, by the order book circuitry, order data comprising open buy side orders and open sell side orders, (claim 1 of the ‘882 patent recites “building, by the order book circuitry, an order book including open buy side orders and open sell side orders”); and in response to receipt of the market tick data: generating, substantially simultaneously with the receipt of the market tick data and by the order book circuitry and a trained model, a classification (claim 1 of the ‘882 patent recites “an outcome”), indicating whether the open buy side orders or the open sell side orders will cluster, the trained model being trained using at least in part a quantum circuit with the historical execution data and the market tick data, determining, substantially simultaneously with receipt of the market tick data and by the order book circuitry, first actions to be taken in an instance in which the open buy side orders cluster and second actions to be taken in an instance in which the open sell side orders will cluster, wherein the first actions and the second actions are based on the classification, (claim 1 of the ‘882 patent recites determining “an execution strategy”), and performing, by the order book circuitry, an action, (claim 1 of the ‘882 patent recites “performing the execution strategy”), comprising one of the first actions or the second actions based on the order data.
Claim 1 of the instant application also includes “receiving, by order book circuitry, historical execution data.” Market tick data (which is recited as being received in the instant application and the ‘882 patent) serves as a foundation for historical execution data. Historical execution data is derived from market tick data. There cannot be historical execution data without the information provided by market tick data. Accordingly, this additional element in the instant application of receiving historical execution data does not make the inventions patently distinct. This is also the case with the aforementioned differences between the claim language recitations discussed above. Simply changing recited language in the instant application to: “receiving, by the order book circuitry, order data comprising open buy side orders and open sell side orders” from “building, by the order book circuitry, an order book including open buy side orders and open sell side orders”; and “generating … a classification” from “generating … an outcome”; and “determining first and second actions to be taken” from “determining an execution strategy”; and “performing one of the first or second actions” from “performing the execution strategy” does not make the inventions patently distinct. These are obvious variations and thus do not make the inventions patently distinct.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1, 13 and 18 and their respective dependent claims, 3-12, 14-17 and 19-21, are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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 at the time the application was filed, had possession of the claimed invention. For instance, in In re Hayes Microcomputer Products, the written description requirement was satisfied because the specification disclosed the specific type of microcomputer used in the claimed invention as well as the necessary steps for implementing the claimed function. The disclosure was insufficient detail such that one skilled in the art would know how to program the microprocessor to perform the necessary steps described in the specification. In re Hayes Microcomputer Prods., Inc. Patent Litigation, 982 F.2d 1527, 1533-34, 25 USPQ2d 1241, (Fed. Cir. 1992).
The claimed 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 at the time the application was filed, had possession of the claimed invention is “the trained model comprising: a first component, executed using a classical processor, which receives the market tick data and the order data and produces a first latent vector, a second component, executed using a quantum processor, which receives the first latent vector and produces a second latent vector, and a third component, executed using the classical processor, which receives the second latent vector and produces the classification”. Independent Claims 13 and 18 recite similar limitations. There is no support or algorithm provided in the Specification as to how the second component, utilizing a quantum processor, receives the first latent vector and produces a second latent vector.
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing. Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345, 54 USPQ2d 1915, 1917 (Fed. Cir. 2000). The lack of support in the Specification is indicative that the inventor did not possess the invention. (See MPEP 2161). With computer-implemented functional claims, the Specification should disclose the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” (See MPEP 2161). The Specification and drawings contain no such disclosure and thus fail to show that as of the critical date, the inventor possessed this capability.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE PROIOS whose telephone number is (571)272-4573. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett M Sigmond can be reached at 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE N. PROIOS/Examiner, Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694
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