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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/30/26 has been entered.
Status of Claims
Claims 1-12 are pending in this application.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12045886 (application no. 18143134), claim 2 of U.S. Patent No. 11682078 (application no. 17866641), claim 2 of U.S. Patent No. 11393028 (application no. 16526370), and claim 1 of U.S. Patent No. 10402903 (application no. 14459267). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reason.
Claim 2 of '886 recites:
2. An apparatus comprising:
at least one processor associated with a workstation of a given trader, in which the at least one processor is configured to control:
receiving, over a communication network, a first order for an item from a first computer associated with a first user, the first order associated with a first fill rate and a first response time;
after receiving the first order, receiving, over the communication network, from a second computer associated with a second user, a second order for the item associated with a second fill rate and a second response time;
ordering, in an electronic database of an order book of the given trader, the second order ahead of the first order based on a first combination of at least a first weighting of the first fill rate and a second weighting of the first response time associated with the first order and a second combination of at least a third weighting of the second fill rate and a fourth weighting of the second response time associated with the second order;
executing an order of the given trader against the second order before executing any order of the given trader against the first order;
before receiving the second order, receiving, over the communication network, a third order for the item from a third computer associated with a third user, the third order associated with a third response time that is longer than the second response time; and
ordering in the order book the second order ahead of the third order based at least in part on the third response time associated with the third order being longer than the second response time associated with the second order;
assigning a given item to at least one port of a plurality of ports on the communication network;
routing a trading command for the second order to a first port of the plurality of ports of the communication network assigned to the item, to communicate the trading command to the second user before any trading command concerning the item is communicated to the third user, and
in which the second order has a price equal to the price of the third order.
Claim 2 of '078 recites:
2. An apparatus comprising:
at least one processor associated with a workstation of a given trader, in which the at least one processor is configured to control:
receiving, over a communication network, a first order for an item from a first computer associated with a first user, the first order associated with a first fill rate and a first response time;
after receiving the first order, receiving, over the communication network, from a second computer associated with a second user, a second order for the item associated with a second fill rate and a second response time;
ordering, in an electronic database of an order book of the given trader, the second order ahead of the first order based on a first combination of at least a first weighting of the first fill rate and a second weighting of the first response time associated with the first order and a second combination of at least a third weighting of the second fill rate and a fourth weighting of the second response time associated with the second order;
executing an order of the given trader against the second order before executing any order of the given trader against the first order;
before receiving the second order, receiving, over the communication network, a third order for the item from a third computer associated with a third user, the third order associated with a third response time that is longer than the second response time; and
ordering in the order book the second order ahead of the third order based at least in part on the third response time associated with the third order being longer than the second response time associated with the second order;
assigning routing of a communication of a trading message for a given item to at least one port of a plurality of ports on the communication network;
in which executing the order of the given trader against the second order includes routing a trading command for the second order to a first port of the plurality of ports of the communication network assigned for routing the item, to communicate the trading command to the second user before any trading command concerning the item is communicated to the third user, and
in which the second order has a price equal to the price of the third order.
Claim 2 of ‘028 recites:
2. An apparatus comprising:
at least one processor associated with a workstation of a given trader, the at least one processor being in electronic communication with a plurality of computers via an electronic communications network; and
at least one memory having instructions stored thereon which, when executed by the at least one processor, control:
receiving a first order for an item from a first computer associated with a first user, the first order associated with a first fill rate and a first response time;
after receiving the first order, receiving from a second computer associated with a second user, a second order for the item associated with a second fill rate and a second response time;
ordering, in an electronic database of an order book of the given trader, the second order ahead of the first order based on a first combination of at least a first weighting of the first fill rate and a second weighting of the first response time associated with the first order and a second combination of at least a third weighting of the second fill rate and a fourth weighting of the second response time associated with the second order;
responsive to ordering the second order ahead of the first order in the order book, executing an order of the given trader against the second order before any executing of any order of the given trader against the first order;
before receiving the second order, receiving a third order for the item from a third computer associated with a third user, the third order associated with a third response time that is longer than the second response time;
ordering in the order book the second order ahead of the third order based at least in part on the third response time associated with the third order being longer than the second response time associated with the second order;
assigning routing of a communication of a trading message for a given item to at least one port of a plurality of ports on the electronic communications network,
in which executing the order of the given trader against the second order includes communicating a trading command for the second order to the second user via a first port of the plurality of ports of the electronic communications network assigned to the item, before communicating any trading command concerning the item to the third user,
in which the communicating is responsive to ordering in the order book the second order ahead of the third order, and
in which the second order has a price equal to the price of the third order;
receiving first electronic signals that customize trading applications; and
generating second electronic signals that execute the trading applications customized based on the first electronic signals.
Claim 1 of ‘903 recites:
1. An apparatus comprising:
at least one processor associated with a workstation of a specific trader, the at least one processor being in electronic communication with a plurality of computers via an electronic communications network; and
at least one memory having instructions stored thereon which, when executed by the at least one processor, direct the at least one processor to:
receive a first order for an item from a first computer, the first order associated with a first fill rate and a first response time;
after receiving the first order, receive from a second computer a second order for the item associated with a second fill rate and a second response time;
order, in an electronic database of an order book of the specific trader, the second order ahead of the first order based at least in part on the first fill rate and first response time associated with the first order and the second fill rate and second response time associated with the second order;
responsive to ordering the second order ahead of the first order in the order book, cause an order of the specific trader to be executed against the second order before any executing of any order of the specific trader against the first order,
wherein the second order is associated with a first response time, and
wherein the instructions, when executed by at least one processor, further direct the at least one processor to:
before receiving the second order, receive by the at least one server a third order for the item from a third user, the third order associated with a second response time that is longer than the first response time; and
order by at least one server in the order book the second order ahead of the third order based at least in part on the second response time associated with the third order being longer than the first response time associated with the second order,
wherein the act of communicating by at least one server the trading command to the second user occurs before communicating by the at least one server any trading command concerning the item to the third user, wherein the act of communicating is responsive to ordering in the order book the second order ahead of the third order, and
in which the second order has a price equal to the price of the third order;
receive electronic signals to customize trading applications;
generate electronic signals to cause to execute the customized trading applications;
assign routing of communication regarding execution of trading commands for orders of specific traders to ports of the electronic communications network; and
generate electronic signals for execution of execution of trading commands for orders of specific traders for routing communication through the assigned ports of the electronic communications network.
Claim 1 of the instant application recites
1. An apparatus comprising:
at least one processor associated with a workstation of a specific trader; and at least one memory having instructions stored thereon which, when executed by the at least one processor, further direct the at least one processor to:
receive a first order for an item, the first order associated with a first fill rate and a first response time over a communication network, wherein the first fill rate is based at least in part on a total quantity of the item routed to a provider of the first order that was filled by the provider of the first order compared to a total quantity of the item routed to the provider of the first order that was not filled by the provider of the first order;
after receiving the first order, receive a second order for the item associated with a second fill rate and a second response time;
order, in an order book of the specific trader, the second order ahead of the first order based at least in part on the first fill rate and first response time associated with the first order and the second fill rate and second response time of the second order;
responsive to ordering the second order ahead of the first order in the order book, communicate a trading command to a second user before any trading command concerning the item is communicated to a first user, thereby causing an order of the specific trader to be executed against the second order before any executing of any order of the specific trader against the first order.
Claim 1 of the instant application and claims 2 of '886, '078, ‘208; and claim 1 of ‘903, each contain similar limitations, with the instant language of claim 1 being a variation of the claim language of claims 2 of '886, '078, ‘208; and claim 1 of ‘903, with each receiving orders, prioritizing/optimizing the execution of a particular order (the 2nd order) by determining the order’s fill rate and response time and comparing them with other order’s fill rate and response time.
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.
Claims 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-12 are directed to a system, method, or product, which are/is one of the statutory categories of invention. (Step 1: YES).
The examiner has identified independent method claim 5 as the claim that represents the claimed invention for analysis and is similar to independent system claim 1 and product claim 9. Claim 5 recites the limitations of optimizing allocation of trade orders for the desired fill rate and response time
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity. Receiving 1st order; 1st order is associated with 1st fill rate and 1st response time; where 1st fill rate is based on a total quantity of the item routed to a provider of the 1st order that was filled by the provider compared to a total quantity of the item routed to the provider of the 1st order that was not filled by the provider of the first order; receiving 2nd order associated with 2nd fill rate and 2nd response time; ordering 2nd order ahead of 1st order based on (a) 1st fill rate and 1st response time associated with the 1st order; and (b) 2nd fill rate and 2nd response time of the 2nd order; communicate a trading command to a second user before communicating it to a first user; and executing 2nd order before the 1st order – specifically, the claim recites:
“receive a first order for an item, the first order associated with a first fill rate and a first response time… wherein the first fill rate is based at least in part on a total quantity of the item routed to a provider of the first order that was filled by the provider of the first order compared to a total quantity of the item routed to the provider of the first order that was not filled by the provider of the first order; after receiving the first order, receive a second order for the item associated with a second fill rate and a second response time; order, in an order book of the specific trader, the second order ahead of the first order based at least in part on the first fill rate and first response time associated with the first order and the second fill rate and second response time of the second order; responsive to ordering the second order ahead of the first order in the order book, communicate a trading command to a second user before any trading command concerning the item is communicated to a first user, thereby causing an order of the specific trader to be executed against the second order before any executing of any order of the specific trader against the first order”, recites a fundamental economic practice, directed to mitigating risk.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice or commercial or legal interactions, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The “an apparatus”, “at least one processor”, “a workstation”, “at least one memory”, “at least one processor”, and “a communication network”, in claim 1; and the additional technical element of “a non-transitory computer-readable medium” in claim 9, are just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. Claims 5 and 9 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of: a computer such as an apparatus, at least one processor, a workstation, and at least one processor; a communication device such as a communication network; a storage unit such as at least one memory and a non-transitory computer-readable medium; The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts 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 and are at a high level of generality. Therefore, claims 1, 5, and 9 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)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they 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 apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claims 1, 5, and 9 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims further define the abstract idea that is present in their respective independent claims 1, 5, and 9 and thus correspond to Certain Methods of Organizing Human Activity, and hence are abstract for the reasons presented above.
Dependent claim 2 discloses the limitation of wherein the instructions when executed by the at least one processor direct the at least one processor to assign a given item to at least one port of a plurality of ports on the communication network, which further narrows the abstract idea. Note that the technical elements “at least one processor”, “at least one port of a plurality of ports”, and “the communication network”, are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 3 discloses the limitation of wherein the trading command is communicated via a first port of the plurality of ports to the second user, which further narrows the abstract idea. Note that the technical element “a first port of the plurality of ports” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 4 discloses the limitation of wherein the second order has a price equal to the price of the first order, which further narrows the abstract idea.
Dependent claim 6 discloses the limitation of assigning a given item to at least one port of a plurality of ports on the communication network, which further narrows the abstract idea. Note that the technical elements “at least one port of a plurality of ports” and “the communication network” are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 7 discloses the limitation of wherein the trading command is communicated via a first port of the plurality of ports to the second user, which further narrows the abstract idea. Note that the technical element “a first port of the plurality of ports” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 8 discloses the limitation of wherein the second order has a price equal to the price of the first order, which further narrows the abstract idea.
Dependent claim 10 discloses the limitation of wherein the plurality of operations comprises assigning a given item to at least one port of a plurality of ports on the communication network, which further narrows the abstract idea. Note that the technical elements “at least one port of a plurality of ports” and “the communication network” are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 11 discloses the limitation of wherein the trading command is communicated via a first port of the plurality of ports to the second user, which further narrows the abstract idea. Note that the technical element “a first port of the plurality of ports” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 12 discloses the limitation of wherein the second order has a price equal to the price of the first order, which further narrows the abstract idea.
Thus, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea. Thus, the claims 1-12 are not patent-eligible.
Response to Arguments
Applicant's arguments filed 1/30/26 have been fully considered but they are not persuasive.
In response to applicant's argument that:
“35 U.S.C. 101… claim 1 (see also claims 5 and 9) is amended to recite… receive a first order for an item, the first order associated with a first fill rate and a first response time over a communication network, wherein the first fill rate is based at least in part on a total quantity of the item routed to a provider of the first order that was filled by the provider of the first order compared to a total quantity of the item routed to the provider of the first order that was not filled by the provider of the first order… The Office Action… does not take into consideration the foregoing amendment,”
the examiner respectfully disagrees. In comparison to the prior version, the added elements (see underlined) and deleted elements (if any, struck out with a line) are essentially: “the first order associated with a first fill rate and a first response time over a communication network, wherein the first fill rate is based at least in part on a total quantity of the item routed to a provider of the first order that was filled by the provider of the first order compared to a total quantity of the item routed to the provider of the first order that was not filled by the provider of the first order (emphasis original’s)”;
These changes are not sufficient to overcome the 35 U.S.C. § 101 rejections because, for 101 analysis purpose, this is just adding a definition of how fill rates are quantitatively-considered/calculated, which is an abstract idea. There is nothing technical about it.
In response to applicant's argument that:
“claims 1-12 are integrated into a practical application because they provide an improvement in the functioning of a computer… For example, claims 1, 5, and 9 facilitate communication over a communication network between a processor receiving orders and a first and second computer that provide the orders by ordering tasks based on likelihood of success. Claims 1, 5, and 9 recite "a first order for an item, the first order associated with a first fill rate and a first response time over a communication network." The likelihood of successful completion is then determined ("wherein the first fill rate is based at least in part on a total quantity of the item routed to a provider of the first order that was filled by the provider of the first order compared to a total quantity of the item routed to the provider of the first order that was not filled by the provider of the first order."). The execution sequence is then ordered based on the likelihood of successful completion ("order, in an order book of the specific trader, the second order ahead of the first order based at least in part on the first fill rate and first response time associated with the first order and the second fill rate and second response time of the second order")… Applicant respectfully submits that claims 1, 5, and 9 improve the functioning of a computer by presenting additional criteria, likelihood of successful completion, for determining the execution sequence (emphasis original’s)”;
the examiner respectfully disagrees. The emphasized language in the above quote are either procedural (e.g., give the order to those with preferred fill rate) or definitional (e.g., fill rates are based in part of the order filled versus part of order not filled). These are business ideas or business process; they are abstract by nature.
Conclusion
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/MARK H GAW/Examiner, Art Unit 3693