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 .
DETAILED ACTION
This communication is in response to the application filed on 25 June 2024. Claim 1 is currently pending. The rejections are as stated below.
Double Patenting
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 time wise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory obviousness-type 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); and 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 a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-20 of US Patent No. 10,713,718 B2 and claims 1-20 of US Patent No. 12,051,109 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other. The current invention and US 10,713,718 B2 and US 12,051,109 B2 are all drawn to methods and systems for trading binary options. Although the conflicting claims are not identical, they are not patentably distinct from each other because they are all directed to trading binary options. The claim in the instant application and US 10,713,718 B2 and US 12,051,109 B2 above are significantly similar and the claimed features seem to be identical with various obvious alternate method. The omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375.
For these reasons, the claims of the instant application are not identical to claims 1-20 of US Patent No. 10,713,718 B2 and claims 1-20 of US Patent No. 12,051,109 B2, but they are not patently distinct.
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 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
The instant claims are rejected under 35 USC 101 in view of The Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al. in a unanimous decision, the Supreme Court held that the patent claims in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ("Alice Corp. ") are not patent-eligible under 35 U.S.C. § 101.
Claim 1 recites a series of steps for trading binary options based on relative rates of return.
The claim is directed to a process, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception.
Independent method claim 1, recites the limitations of receiving from a first user a specification of a first index comprising a first portfolio, the specification defining one or more trading products in the first portfolio; determining at least one second index each comprising a respective at least one second portfolio, each at least one second portfolio comprising at least one trading product; determining a period of time defining a start time and an end time; causing to be output to the first user, at a first display associated with the first user, indicia of a first binary option associated with the first index, the at least one second index, and the period of time, the indicia comprising information about the first index, information about the at least one second index, and the end time; before the end time, receiving a request to purchase a quantity of the first binary option, wherein at a time before the end time, the first binary option is defined to settle at a future time to one of two possible values comprising a first final value and a second final value; before the end time, transacting a first trade comprising a purchase and sale of the quantity of the first binary option; determining a first rate of return for the first index by comparing a value of the first index at the end time to a value of the first index at the start time; determining at least one second rate of return for the at least one second index by comparing, for each of the at least one second index, a value of the respective second index at the end time to a value of the respective second index at the start time; determining a final value of the first binary option, in which determining the final value of the first binary option comprises one of: determining that the first binary option has a value equal to the first final value responsive to determining that the first rate of return for the first index is one of (a) higher than and (b) higher than or equal to each of the at least one second rate of return for the at least one second index; and determining that the first binary option has a value equal to the second final value responsive to determining that the first rate of return for the first index is one of (a) less than and (b) less than or equal to each of the at least one second rate of return for the at least one second index.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations via transactional activities/interactions (such as a fundamental economic concept or managing interactions between people), but for the recitation of generic computer components, nothing in the claim precludes the limitations from practically being performed by a method of organizing human activity which includes commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing, or sales activities or behaviors; business relations). These limitations are directed to an abstract idea because they are commercial or legal interactions or sales activities (processing transaction, order routing and marketplace bidding process). If a claim limitation covers commercial or legal interactions but for the recitation of generic computer components, then it falls within the "Certain Methods of Organizing Activity" grouping of abstract ideas. See MPEP § 2106.04(a)(2).
Accordingly, independent claim 1 recites an abstract idea.
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional limitation of at least one processor of at least one computer and an electronic device to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic computer performing a generic computer function of processing data (see Applicant’s specification ¶¶ 0009-0013). This generic computer limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.04(d). The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a server (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the server at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept. See MPEP 2106.05(f).
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
Accordingly, claim 1 is rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
GENZER et al. (US 20170076370 A1) discloses a trading system that “creates a free market for trading binary options, where binary options can be purchased and sold. The system provides an easy, friendly interface to both parties, and is based on a web system which does not require downloading the software to the client's computer, and allows the communication of transactions of all the financial assets known to this date: Shares, Indexes, Commodities, Currencies, Future contracts etc.”.
Montanaro et al. (US 20050165669 A1) discloses “systems and methods for trading fixed return options on secondary markets such as stock exchanges. A financial system of the invention includes both an electronic order delivery and execution system and/or an on-floor trading auction, configured to provide an exchange-traded environment. The financial system also includes at least one fixed return option or binary option traded through an exchange's order delivery and execution system or on-floor trading auction …”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached on (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691
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