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 .
RCE Acknowledgement
Applicant’s Request for Continued Examination (RCE) dated 04/23/2026 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114, and the Applicant's RCE submission filed on 23 APRIL 2026 has been entered.
Status of Claims
Claims 1-20 are pending in this instant application per RCE remarks and claims listing filed by Applicant on 23 APRIL 2026, wherein all three independent Claims 1, 12 and 20 have been amended in the RCE. Claims 1, 12 and 20 are independent claims reciting method, non-transitory machine-readable media and system claims. Claims 2-11 and 13-19 and none are respective dependent claims.
This Office Action is a non-final rejection based on the RCE remarks and claims listing filed by the Applicant on 04/23/2026 for its original application of 06/28/2024 that is titled: “Distributed Credit Control with Centralized Allocation”.
Accordingly, amended Claims 1-20 are now being rejected herein.
Claim Rejections - 35 USC §112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In particular, independent Claims 1, 12 and 20, recite the amended limitations, “a message transit time latency” and “a selected update frequency” as part of the newly added amended step in all three independent claims as new limitations:
(a) recited as “determining, by the processor and based on a message transit time latency of the distributed network, a selected update frequency for at least one of the plurality of product groups;” in Claim 1; and
(b) recited as “determine, based on a message transit time latency of the distributed network, a selected update frequency for at least one of the plurality of product groups;” in Claim 12; and
(c) recited as “means for determining, based on a message transit time latency of the distributed network, a selected update frequency for at least one of the plurality of product groups;” in Claim 20;
wherein at least 2 newly added amended limitations of “a message transit time latency” and “a selected update frequency” in all three independent claims above as described in (a) and (b) and (c) are considered new matter. Applicant’s Specification does not support these 2 newly added amended claim limitations; and Examiner notes that “a message transit time latency” is taught as word “latency” in paras [0011], [0018], [0022] (twice), and as phrase “transit time” in para [0022] (though not adjacent with “latency”), and word “messages” is recited only once in para [0029]; and further, Examiner notes that “a selected update frequency” is taught as phrase “update frequency” four times in para [0074], and word “selected” is recited only once in para [0028].
Claims 2-11 and 13-19 are also rejected based on their dependency from independent Claims 1 and 12 respectively.
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 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.
Claims 1-20 of the instant application (18/757767) are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U.S. Patent No. 12,056,769 (parent application no. 17/887840) as well as unpatentable over Claims 1-17 of U.S. Patent No. 11,449936 (grand-parent application no. 16/445129), as shown in Comparison Table of Claim 1 of all 3 applications, as an exemplary analysis, for all three applications that are copied below.
18/757767
17/887840
16445129
1. (Original)
A computer implemented method for controlling use of a resource pool in connection with electronic trading in a plurality of product groups via a set of match engines disposed in a distributed network, in which each product group of the plurality of product groups is assigned to a respective match engine of the set of match engines, the method comprising:
providing, by the processor, first allocation data indicative of plurality of first allocations including, for each of the plurality of product groups, a first allocation to a respective resource controller of a set of resource controllers disposed in the distributed network, the respective resource controller being disposed at a respective match engine of the set of match engines to which a respective product group of the plurality of product groups is assigned;
determining, by the processor and based on a selected update frequency for at least one of the plurality of product groups, to adjust the allocations to the controllers after providing the first allocation data; adjusting, by the processor, the first plurality of allocations based on trading activity since determining the first plurality of allocations; and
providing, by the processor, for each allocation of the plurality of allocations, second allocation data indicative of the plurality of adjusted allocations, wherein the second allocation data configures the respective resource controller such that, in connection with an incoming order in the respective product group at the respective match engine, the use of the resource pool is limited, in accordance with the second allocation data provided to the respective resource controller at the respective match engine, to a respective allocation of the second plurality of allocations for the respective product group.
1. (Currently Amended)
A computer implemented method for controlling use of a credit pool in connection with electronic trading in a plurality of product groups via a set of match engines disposed in a distributed network, in which each product group of the plurality of product groups is assigned to a respective match engine of the set of match engines, the method comprising:
obtaining, by a processor, credit data indicative of current utilization of the credit pool;
determining, by the processor based on the credit data, a plurality of allocations of the credit pool across the plurality of product groups, such that each allocation of the plurality of allocations is directed to a respective product group of the plurality of product groups;
providing, by the processor, for each allocation of the plurality of allocations, allocation data indicative of the allocation to a respective credit controller of a set of credit controllers disposed in the distributed network, the respective credit controller being disposed at a respective match engine of the set of match engines to which a respective product group of the plurality of product groups is assigned;
determining, by the processor and based on a selected update frequency for at least one of the plurality of product groups, to adjust the plurality of allocations;
adjusting, by the processor, the plurality of allocations based on trading activity since determining the plurality of allocations;
adjusting, by the processor and based on the trading activity since determining the plurality of allocations, the selected update frequency for the at least one of the plurality of product groups;
providing, by the processor, for each allocation of the plurality of allocations, further allocation data indicative of the plurality of adjusted allocations, wherein the further allocation data configures the respective credit controller such that, in connection with an incoming order in the respective product group at the respective match engine, the use of the credit pool is limited, in accordance with the further allocation data provided to the respective credit controller at the respective match engine, to a respective allocation of the plurality of allocations for the respective product group.
1. (Currently Amended)
A computer implemented method for controlling use of a credit pool in connection with electronic trading in a plurality of product groups via a set of match engines disposed in a distributed network, in which each product group of the plurality of product groups is assigned to a respective match engine of the set of match engines, the method comprising:
obtaining, by a processor, credit data indicative of current utilization of the credit pool, the processor being a non-distributed component of an exchange computing system and being in communication with the set of match engines via the distributed network;
determining, by the processor based on the credit data, a plurality of allocations of the credit pool across the plurality of product groups, such that each allocation of the plurality of allocations is directed to a respective product group of the plurality of product groups;
providing, by the processor, for each allocation of the plurality of allocations, allocation data indicative of the allocation to a respective credit controller of a set of credit controllers, the set of credit controllers being disposed in the distributed network to decentralize credit control across the set of match engines such that each credit controller is disposed at a respective match engine of the set of match engines to which a respective product group of the plurality of product groups is assigned;
providing, by the set of credit controllers, credit monitoring such that, in connection with an incoming order in the respective product group at the respective match engine, the use of the credit pool is limited, in accordance with the allocation data provided to the respective credit controller at the respective match engine, to a respective allocation of the plurality of allocations for the respective product group;
determining, by the processor, if the electronic trading in the product group associated with a respective allocation of the plurality of allocations moves to another match engine of the set of match engines and, if yes, providing, by the processor, the allocation data for the respective allocation to a further credit controller of the set of credit controllers;
adjusting, by the processor, the plurality of allocations based on trading activity since determining the plurality of allocations; and
providing, by the processor, for each allocation of the plurality of allocations, further allocation data indicative of the plurality of adjusted allocations.
Although the claims at issue are not identical, they are not patentably distinct from each other, because all three applications describe similar limitations as shown in the attached exemplary comparison table above.
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.
(NOTE: Latest ‘amendments to the claims’ filed by the Applicant in the RCE on 04/23/2026 are shown as bold and underlined additions, and all deletions may not be shown, or may not be underlined when stricken through. Underlined amendments to the claims that are shown below are from previously submitted claim amendments by the Applicant.)
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more, wherein Claims 1, 12 and 20 are independent method, non-transitory machine-readable media and system claims respectively.
Exemplary Analysis.
Claim 1: Ineligible.
The claim recites a series of steps. The claim is directed to a method reciting a series of steps, which is a statutory category of invention (Step 1 -- YES).
The claim is analyzed to determine whether it is directed to a judicial exception. The claim recites the limitations of: controlling use of a resource pool in connection with electronic trading in a plurality of product groups; providing first allocation data indicative of plurality of first allocations including, for each of the plurality of product groups, a first allocation; adjusting the first plurality of allocations based on trading activity since determining the first plurality of allocations; providing for each allocation of the plurality of allocations, second allocation data indicative of the plurality of adjusted allocations, wherein the second allocation data configures such that, in connection with an incoming order in the respective product group, the use of the resource pool is limited, in accordance with the second allocation data provided to a respective allocation of the second plurality of allocations for the respective product group. In other words, the claim describes a method for controlling use of a resource pool in connection with electronic trading in a plurality of product groups via a set of match engines (per Abstract). These limitations, as drafted, are steps of a method that, under its broadest reasonable interpretation, covers performance of the limitations via a certain method of organizing human activity such as fundamental economic principles or practices (based on at least ‘electronic trading’ limitations), and/or commercial interactions (based on at least ‘plurality of product groups’ and ‘use of resource pool’), and/or managing personal behavior or interactions (based on at least ‘plurality of allocations’), but for the recitation of generic computer components such as the processor/s, match engine/s and resource controller/s. These limitations fall under the “certain methods of organizing human activity” group (Step 2A1 -- YES).
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional elements of: a set of match engines disposed in a distributed network; a processor; a respective resource controller of a set of resource controllers disposed in the distributed network; by the processor etc. These additional elements perform extra-solution activities, such as --- assigning, as in which each product group of the plurality of product groups is assigned to a respective match engine of the set of match engines; providing, as in the respective resource controller being disposed at a respective match engine of the set of match engines to which a respective product group of the plurality of product groups is assigned; and determining, based on a selected update frequency for at least one of the plurality of product groups, to adjust the allocations to the controllers after providing the first allocation data. The additional elements of match engine/s, a distributed network, the processor and the resource controller/s, etc. in these steps are recited at a high level of generality, i.e., as generic processors performing generic computer functions of processing data (including using product groups, that are providing and receiving data/information over a network). These generic processors are no more than mere instructions to apply the exception using generic computer/s and/or computer components. 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. Thus, the claim is directed to the abstract idea (Step 2A2 -- NO).
Next, the claim is analyzed to determine if there are additional elements in this claim 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 with respect to Step 2A2 above, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer/s and/or computer component/s. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer and/or components over a network cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Because the additional elements described above were considered to be extra-solution activities in Step 2A, they are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine and conventional in the field. The disclosure does not provide any indication that the devices (controllers and/or processors) are anything other than generic processors and the Symantec, TLI, and OIP Techs. court decisions (MPEP 2106.05 (d) (II)) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Also, Specification of the instant application discloses, in paras [0013]/[0014]/[0015] and [0020], that the credit controller/s and the processor/s recited therein are not a novelty ---
{“[0013] The disclosed systems and methods prevent slippage by decentralizing, or distributing, credit control functionality across the set of match engines. A credit controller is disposed at each match engine. In some cases, the credit controller is disposed within the match engine. In those and other cases, the credit controllers of the disclosed systems are configured to provide in-line credit control. …………………………………………………………………………
[0014] Slippage is also prevented because each credit controller is effectively allocated only a portion of the total credit available. As described herein, credit is allocated on a product group basis. The respective match engine responsible for a particular product group is provided with allocation data indicative of the allocation for that product group. The allocation data is provided before the order arrives, i.e., a pre-allocation of credit available for that product group. As a result, when an incoming order for that product group arrives at the match engine, the use of the credit pool is limited to the respective allocation for the product group to which the order is directed. ……………………………………………………………………………………………………………
[0015] The disclosed systems include a processor to determine the allocations. The processor may be centralized despite the distributed nature of the credit controllers. The processor may thus be configured for cross-venue credit control and accordingly considered part of a cross-venue risk management module or system. For instance, the processor may be part of an exchange computer system at which risk and other management functionality is provided. The processor may monitor a number of trading activity and market data parameters to determine the allocations.”} …………………………………………………………………………………………………………………
[0020] These and other aspects of the electronic trading environment present technical challenges and other problems that are addressed by the disclosed embodiments. For instance, the technical problem of slippage in credit control exclusively arises from the computerized and distributed nature of electronic trading. Because different products are traded in different venues, combinations of trades may exceed the total credit available when a purely centralized credit monitoring system is used. In contrast, slippage is prevented via the decentralization of the credit control functionality for product group-based allocation and other aspects of the disclosed systems and methods. The decentralized nature of the disclosed systems and methods is thus a technical solution to electronic trading slippage in credit control.”} ---
and indicate that the concept/s described by extra-solution additional elements is conventional. Accordingly, a conclusion that the aforementioned extra-solution elements are well-understood, routine and conventional activity is supported under Berkheimer options 2 and 3, respectively.
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 elements 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 (Step 2B -- NO), and the claim is not patent eligible.
The analysis above applies to all statutory categories of the invention including non-transitory machine-readable media Claim 12 and system Claim 20. Furthermore, the limitations of dependent method Claims 2-11 with additional steps and limitations (e.g., determining, by the processor, if the electronic trading in the product group associated with a respective allocation of the second plurality of allocations moves to another match engine of the set of match engines; wherein adjusting the first plurality of allocations is implemented after a predetermined number of orders corresponding to the selected update frequency have been entered via the set of match engines; wherein adjusting the first plurality of allocations is implemented after a predetermined time period corresponding to the selected update frequency has elapsed since the plurality of allocations were determined; wherein the at least one at least one of the plurality of product groups includes a first product group of the plurality of product groups, the first product group has a more dynamic market than a second product group of the plurality of product groups; and the selected update frequency is higher than another update frequency for the second product group; further comprising adjusting, by the processor, the second plurality of allocations upon occurrence of a trigger event; wherein determining the first plurality of allocations comprises implementing, by the processor, a routine to predict a likelihood of future trading in each product group of the plurality of product groups; wherein the routine predicts the likelihood of future trading based on past trading of a market participant associated with the resource pool in each product group of the plurality of product groups; wherein the routine predicts the likelihood of future trading based on historical market data for the electronic trading in each product group of the plurality of product groups; wherein the routine comprises a machine learning routine; wherein the routine comprises a Bayesian probability routine; etc.), do not resolve the issues raised in the independent method Claim 1, and do not resolve the issues raised in the independent method Claim 1. Accordingly, dependent non-transitory machine-readable media Claims 13-19 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Therefore, said Claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's RCE remarks (on pages 8-19) and claim amendments dated 23 APRIL 2026 with respect to the rejection of amended Claims 1-20 have been carefully considered, but they are not persuasive and do not place the claims in in condition for Allowance. Examiner notes that a new rejection under 35 USC 112(a) has been added above. Thus, the rejections of amended Claims 1-20 under 35 USC 101 directed to non-statutory subject matter and Double Patenting have been maintained, and new rejection under 35 USC 112(a) has been added.
In response to the Applicant’s RCE arguments of 04/23/2026 traversing the rejection under 35 USC 101 claiming that In Re: BASCOM applies (under Step 2A) to the instant application, Examiner respectfully disagrees. Examiner further notes that the instant application is not similar to BASCOM, because the claims in BASCOM are focused on a specific asserted filtering of internet content using a computer, even at an off-site location such as at an ISP location (Internet Service Provider location). The claims herein do not simply recite a similar filtering internet content. The current invention is not related to an improvement in technology as in BASCOM, but it rather uses the computer as a tool to apply the abstract idea.
In response to the Applicant’s RCE arguments of 04/23/2026 traversing the rejection under 35 USC 101 claiming that under Step 2A, Applicant argued --- “as well as a mental process that can be performed in the human mind, or by a human using a pen and paper” in the instant application, Examiner respectfully disagrees. Examiner further notes that Examiner has not stated that the instant application can be “performed in the human mind, or by using pen and paper” in the last Final Rejection of 01/23/2026.
In response to the Applicant’s RCE arguments of 04/23/2026 traversing the rejection under 35 USC 101 that the claims don’t recite an abstract idea (citing similarity to Enfish). Further, Examiner notes that in Enfish, the court stated that it was the underlying improvement to the way the computer operates (and not an abstract idea implemented on a computer) that made the claims eligible. In the claims of the present application, the claimed limitations are not incorporating rules to improve a technological process (as in McRo) nor are they improving the functioning a computer (as in Enfish). Examiner notes that the instant claims are not directed to a mechanism as in Enfish. As such, the Examiner contends, that the present claims are more similar to those claims found in FairWarning IP, LLC v. Iatric Systems, Inc. (Fed. Cir. 2016) and Electric Power Group, LLC v. Alstom S.A. (Fed. Cir. 2016).
NOTE: Examiner notes that the previous Responses to Arguments from more than one previous Office Action/s are incorporated herein as described below, some of which may be similar to and repeated as arguments from 10/29/2025, for example but not limited to, prong one and prong two, etc.
In response to the Applicant’s arguments against the rejection under 35 USC 101, Examiner respectfully disagrees. Examiner clarifies that the instant application is an improvement to the abstract idea itself, using technology/ computers to execute an abstract idea is at most an improvement to the abstract idea. The claims generally link the abstract idea and the gathering of information and determining an output based on analyzing the gathered information. The claims apply the abstract idea on the computer system at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claims are directed to an abstract idea.
Applicant argues, in substance that the claims include an inventive concept that is an unconventional and novel combination of known elements. Examiner respectfully disagrees. Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See MPEP § 2106.05(I). Although the second step in the Alice/Mayo framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. Furthermore, tests for whether an element is conventional under Step 2B only applies to the additional elements recited and not to the abstract idea present within the claims. Improvement of technology by virtue of novelty or non-obviousness is not a test of eligibility.
In response to the Applicant’s arguments of 10/29/2025 stating --- {“The examiner is reminded to consult the specification to determine whether the disclosed invention improves technology or a technical field, and evaluate the claim to ensure it reflects the disclosed improvement. The specification does not need to explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. (emphasis added)”}. Examiner respectfully disagrees, the claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem/internet-centric problem. Limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.” The focus of the claims in the present case is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. The claims here are not directed to a specific improvement to computer functionality. Rather, they are directed to the use of generic technology in a well-known environment, without any claim that the invention reflects an inventive solution to any computer specific problem. Examiner notes that --- “One way to determine integration into a practical application is when the claimed invention improves the functioning of a computer or improves another technology or technical field. To evaluate an improvement to a computer or technical field, the specification must set forth an improvement in technology and the claim itself must reflect the disclosed improvement. See MPEP 2106.04(d)(1) and 2106.05(a).”
In response to the Applicant’s arguments stating --- {“the claims provide for dynamic adjustment to a determined update frequency allowing for changes to the rate at which the allocations are updated in addition to dynamic adjustment to the allocations. Thus, system changes how it adjusts to changing activity conditions in addition to adjusting to those conditions. Conventional trading systems do not have a method for adjusting frequency at which allocations are updated to increase responsivity and efficiency of the trading system in handling changes in the activity conditions. …”}. Examiner notes that none of the claims recite that the adjustment is performed “dynamically”. Further, a claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, Examiner notes that "claiming the improved efficiency inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
Examiner respectfully disagrees with the Applicant’s arguments claiming that In Re: Enfish applies to the instant application, but Examiner notes that the claims of the instant application are unlike the claims in Enfish. The claims in Enfish focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement, a particular logical database technique in how computers could carry out one of their basic functions of storage and retrieval of data (self-referential table). The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computer as tools.
In further response to the Applicant’s arguments against the rejection under 35 USC 101 Step 2A, Prong One that the Claims do not recite an abstract idea”, and Examiner respectfully disagrees. Upon reviewing the specification and the claim as a whole, independent Claim 1 (exemplary) is at least directed to one of the ineligible “certain methods of organizing human activity” that include “fundamental economic principles or practices” (based on at least ‘electronic trading’ limitations) and “commercial or legal interactions” (based on at least ‘plurality of product groups’ and ‘use of resource pool’) as well as “managing personal behavior or relationships” (based on at least ‘plurality of allocations’). Method Claim 1 describes a method for controlling use of a resource pool in connection with electronic trading in a plurality of product groups via a set of match engines (per Abstract). Thus, like the concept of intermediated settlement in Alice, and the concept of hedging in Bilski, the concept of “generating a set of instructions sequences based on certain criteria from a user for image transaction processing” recited in exemplary independent Claim 1 “is a fundamental economic practice long prevalent in our system of commerce.” Thus, it is clear that exemplary independent Claim 1 recites fundamental economic practices and/or commercial transactions that, under the Revised Guidance, fall under the category of abstract ideas related to “certain methods of organizing human activity.” 2019 Revised Guidance, 84 Fed. Reg. at 52. Accordingly, independent Claim 1 recites an abstract idea.
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea --- see MPEP 2106.05(f).
The claims as a whole do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, 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 claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
Examiner submits that under the current 35 USC 101 examining practice, the existence of such novel features would still not cure the deficiencies with respect to the abstract idea. See for example: Ultramercial, Inc. v. Hulu, LLC, 112 USPQ2d 1750, U.S. Court of Appeals Federal Circuit, No. 2010-1544, Decided November 14, 2014, 2014 BL 320546, 772 F.3d 709, Page 1754 last two ¶: “We do not agree with Ultramercial that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete”. Indeed, in this in instant case, the limitations simply narrow or limit the abstract idea without providing anything significantly more than the abstract idea itself.
Dependent claims do not resolve the issues raised in the independent claims. The dependent claims do not add limitations that meaningfully limit the abstract idea. The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. The claims merely amount to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as significantly more than the abstract idea.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
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/S.M./
PSA Examiner, Art Unit 3691
sanjeev.malhotra@uspto.gov
/SANJEEV MALHOTRA/Examiner, Art Unit 3691
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