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 .
Examiner’s Comment
Claim 1 presented for examination. Applicant filed amendment on 11/13/2025 amending the claim 1 and adding new claims 2-12. Therefore, the claims 1-12 are pending.
After careful consideration of applicant’s amendments and arguments, new ground of rejections of claims necessitated by applicant amendment has been established in the instant application as set forth in detail below. Applicant's arguments with respect to claims have been considered but are moot in view of the new ground(s) of rejection.
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 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).
1. Claim 1 is rejected on the ground of non-statutory double patenting over claims 1-18 of U. S. Patent No.8,712,903, since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
“receiving an indication of a composition of a fund, in which the composition includes a plurality of financial instruments that are owned by the fund; receiving a plurality of orders, in which each order defines a side of a trade for a financial instrument; for each order, determining if a respective financial instrument of a respective trade is part of the composition of the fund; and for each order, if it is determined that the respective financial instrument of the respective trade is part of the composition of the fund, transmitting a respective first query asking if a respective offer to enter into a respective trade that fulfills at least a portion of each of the order and a respective matching order that matches the order is accepted by an operator of the fund .”
2. Claim 1 does not recite limitations of “receiving, by an electronic marketplace in which the composition includes a plurality of financial instruments targets respective percentages of the composition that the fund targets for ownership in each financial instrument; determining, by the marketplace, a change in price that includes an increase or decrease in the price of the financial instrument; determining, by the marketplace, that an operator of the fund is likely to be interested in an opposite side of the trade for the financial instrument based on the increase or decrease in price of the financial instrument and; and determining that a matching order to the order is stored in an order management system associated with the fund that makes up part of a dark pool of liquidity; facilitating an execution of the trade, by the marketplace, without a negotiation about a price of the trade and a quantity of financial instruments in response to the determination that the offer is accepted” as recited in the specified parent patent U.S. Patent No. 8,712,903.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ____ (2014).
In the instant case, Claims 1-12 are directed to determining matching order respective financial instrument of the respective trade is part of the composition of the fund. These claims are analyzed to see if claim is a statutory category of invention, recites judicial exception and the claims are further analyzed to see if the claims are integrated into practical application if the judicial exception is recited and the claims provides an inventive as per 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) and October 2019 Update: Subject Matter Eligibility as set forth below:
Analysis:
Step 1: Statutory Category? This part of the eligibility analysis evaluates whether the claim falls within any statutory category. MPEP 106.03.
Claim 1 is directed to a process i.e., a series of method steps or acts, of matching order which is a statutory categories of invention (Step 1: YES)
Claim 7 is directed to a non-transitory computer readable storage media, which is a manufacture. The claim, thus a statutory category of invention (Step 1: YES).
Step 2A - Prong 1: Judicial Exception Recited? This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04(II) and the October 2019 Update, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim. There are no nature- based product limitations in this claim, and thus the markedly different characteristics analysis is not performed. However, the claim still must be reviewed to determine if it recites any other type of judicial exception.
Claims 1 and 7 are then analyzed to determine whether it is directed to a judicial exception. The claim recite plurality of steps of “receiving an indication of a composition of a fund, receiving a plurality of orders and approximating an interest for a respective financial instrument of a respective trade by the fund based at least in part on the composition.”
The limitations of “receiving an indication of a composition of a fund, receiving a plurality of orders and approximating an interest for a respective financial instrument”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind similar to Mortgage Grader, Inc., v. First Choice Loan Servcs., with computer implemented method and system for anonymous shopping loan packages but for the recitation of generic computer components. Nothing in the claim element precludes the step from practically being performed in the mind and thus fall within the “mental processes” grouping of abstract idea set forth in the 2019 PEG. 2019 PEG Section I, 84 Fed. Reg. at 52. Claim fails to recite processor that execute recited steps and even if processor is recited, the steps of “receiving an indication of composition and plurality of orders and determining respective financial instrument composition” in the context of this claim encompasses the user manually performing the recite steps. The recitation of a processor in this claim does not negate the mental nature of these limitations because the claim here merely uses the processor as a tool to perform the otherwise mental processes. See October Update at Section I(C)(ii). Thus, the above limitations of recite concepts that fall into the “mental process” grouping of abstract ideas. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas (YES).
Step 2A - Prong 2: Integrated into a Practical Application? This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. 2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55.
Besides the abstract idea as described in Prong 1, the claim recites the additional elements of the computing device performing “selectively transmitting a respective first query asking if a respective offer to enter into a respective trade that fulfills at least a portion of each of the plurality of orders and a respective matching order that matches the order is accepted by an operator of the fund”
An evaluation of whether limitations are insignificant extra-solution activity is then performed. Note that because the Step 2A Prong 2 analysis excludes consideration of whether a limitation is well-understood, routine, conventional activity (2019 PEG Section III(A)(2), 84 Fed. Reg. at 55), this evaluation does not take into account whether or not limitation (a) is well-known. See October 2019 Update at Section III.D. When so evaluated, this additional element represents mere communication between parties for matching order based query sent. The claim failed recite hardware/processor that execute the process steps. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the computer does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014). Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception (Step 2A: NO).
Step 2B: Claim provides an Inventive concept? This part of the eligibility analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. MPEP 2106.05.
As explained with respect to Step 2A Prong 2, there are two additional elements.
The claim failed to recite a computing device, which is configured to perform all the limitations recited. As explained previously, the computing device even if recited, is at best the equivalent of merely adding the words “apply it” to the judicial exception. Mere instructions to apply an exception cannot provide an inventive concept. The additional element is limitation of “selectively transmitting, by the at least one processor, a respective first query asking if a respective offer to enter into a respective trade that fulfills at least a portion of each of the plurality of orders and a respective matching order that matches the order is accepted by an operator of the fund”, which as explained previously is extra-solution activity, which for purposes of Step 2A Prong Two was considered insignificant. Under the 2019 PEG, however, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. 2019 PEG Section III(B), 84 Fed. Reg. at 56. At Step 2B, the evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well-known. See MPEP 2106.05(g). Here, transmitting a respective first query fulfills at least a portion of each of the order and a respective matching order that is recited at a high level of generality, and, as disclosed in the specification, is also well-known. This limitation therefore remains insignificant extra-solution activity even upon reconsideration. Thus, limitation (a) does not amount to significantly more. Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which do not provide an inventive concept (Step 2B: NO). The claim is not eligible.
Therefore, the additional element only recite generic components and steps are well-understood routine and conventional. Claims as recited do not provide any particular asserted inventive technology for performing those functions and therefore the claims are held patent ineligible (see Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible. (NO).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102 (a) (1) as being anticipated by McCabe et al., U.S. Pub No. 2003/0018570 (reference A in attached PTO-892).
As per claim 1, McCabe et al. teach a method comprising:
receiving, by at least one processor, an indication of a composition of a fund, in which the composition includes a plurality of financial instruments that are owned by the fund (see Fig. 1, Column 202: S&P500 SPDR member Stocks: AFL UN….YNR UN (500 Stocks); Column 210: 54 NASDAQ-only Member Stocks of SPDR: AMAT UQ ……..YHOO UQ (54 Stocks): paragraph [0009, 0020]; where S&P 500 based Standard &Poor’s Depository Receipts (SPDRs) comprises 500 stocks of NYSE (UN) and NASDAQ based SPDR composed of 54 stocks that are traded in NASDAQ);
receiving, by the at least one processor, a plurality of orders, in which each order defines a side of a trade for a financial instrument (see paragraph [0010, 0030]; where SPDR specialist buy and sell trade orders with counterparties offsetting the risk associated with volatility of share price of a particular stock in underlying basket equities composition of SPDRs for a benefit of his or firm’s own portfolio).;
for each order, approximating an interest for a respective financial instrument of a respective trade by the fund based at least in part on the composition of the fund, by the at least one processor (see Fig. 2, column 210: paragraph [0021-0022, 0028-0030]; where child portfolio SPDRX composing 54 stock and receives approximate interest/offer to buy or sell from investor to broker, dealer or specialist based on composition of the stocks in the portfolio and the specialist/dealer/broker match approximate interest with other/counterparties);
for each order, based at least in part on the approximated interest for the respective financial instrument of the respective trade, selectively transmitting, by the at least one processor, a respective first query asking if a respective offer to enter into a respective trade that fulfills at least a portion of each of the plurality of orders and a respective matching order that matches the order is accepted by an operator of the fund (see paragraph [0020, 0028-0030]; where SPDR expedite buy and sell of underlying stock by cushioning prices based on matching the orders for the order placed by the investor and ultimately confirmed being executed).
As per claim 2, McCabe et al. trach the claim 1 as described above. McCabe et al. further teach the method, wherein
selectively transmitting the respective first query comprises querying an order management system associated with the fund (see paragraph [0024, 0028 and 0030]; where investor query or place buy/sell order for SPDR/SPDRX underlying stocks and SPDR buy and sell underlying stock cushioning its price).
As per claim 7, McCabe et al. teach non-transitory computer readable medium storing a plurality of instructions executable by at least one processor, wherein execution of the plurality of instructions by the at least one processor causes performance of a plurality of operations (see paragraph [0028]) comprising steps described in the claim 1 above.
As per claims 8, McCabe teach claim 7 as described above. Claim 8 is rejected under same rational as the claim 2 above.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
Claims 3-6 and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over McCabe et al., U.S. Pub No. 2003/0018570 (reference A in attached PTO-892) in view of Turner, WO 2006/055622 (reference N in attached PTO-892) further in view of Van Lier, U.S. Pub No. 2005/0149422 (reference G in attached PTO-892).
As per claims 3-4, McCabe et al. trach the claim 1 as described above. McCabe et al. further teach the method, wherein
approximating the interest is based at least in part on price for the respective financial instrument (see paragraph [0034]; where right to buy or sell specified financial instrument is based on specified price).
McCabe et al. do not teach approximating the interest is based at least in part on change in price for the respective financial instrument; and approximating the interest is based at least in part on determining an increased interest if the respective trade includes a sale of the financial instrument and the change in price is an increase in price.
Turner and Van Lier teach approximating the interest is based at least in part on change in price for the respective financial instrument and approximating the interest is based at least in part on determining an increased interest if the respective trade includes a sale of the financial instrument and the change in price is an increase in price (Turner: Fig. 1, Steps 103 -> Step 104: page 21, 4th paragraph; Van Lier: abstract, paragraph [0022-0023, 0090and 0099]).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to allow approximating the interest is based at least in part on change in price for the respective financial instrument and approximating the interest is based at least in part on determining an increased interest if the respective trade includes a sale of the financial instrument and the change in price is an increase in price to McCabe et al. because Turner and Van Lier teaches including above features would enable to provide preserving capital and capital gain based on predetermined level of capital appreciation (Turner: page 2, first two paragraph; page 14, 3rd paragraph) and optimize the return of the investment portfolio. (Van Lier, abstract).
As per claim 5, McCabe et al. trach the claim 1 as described above. McCabe et al. further teach the method, wherein
approximating the interest is based at least in part on determining an increased interest if the respective trade includes a buy of the financial instrument (see paragraph [0033]; where buyer is willing to buy financial instrument at a specific price)
McCabe et al. do not teach the respective trade includes a buy of the financial instrument and the change in price is a decrease in price.
Van Lier teaches the respective trade includes a buy of the financial instrument and the change in price is a decrease in price (see abstract, paragraph [0022-0023])
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to allow the respective trade includes a buy of the financial instrument and the change in price is a decrease in price to McCabe et al. because Van Lier teaches including above features would enable to optimize the return of the investment portfolio (Van Lier, abstract).
As per claim 6, McCabe et al. trach the claim 1 as described above. McCabe et al. further teach the method, wherein
approximating the interest for the respective financial instrument is based at least in part on a change in price for the respective financial instrument for relative to a change in a least one other financial instrument among the plurality of financial instruments (McCabe et al.: paragraph [0033-0035]; where equity investment include derivatives including options and futures which approximate interest in financial instrument based change in price of other financial instruments).
Van Lier also teaches approximating the interest for the respective financial instrument is based at least in part on a change in price for the respective financial instrument for relative to a change in a least one other financial instrument among the plurality of financial instruments (see abstract).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to allow approximating the interest for the respective financial instrument is based at least in part on a change in price for the respective financial instrument for relative to a change in a least one other financial instrument among the plurality of financial instruments to McCabe et al. because Van Lier teaches Turner including above features would enable to the number of shares in in possible stock combination in the portfolio increase gradually and increase in their values thereby optimize the return of the investment portfolio (Van Lier, abstract).
As per claims 9-12, McCabe teach claim 7 as described above. Claim 9-12 is rejected under same rational as the claim 3-6 above.
Response to Arguments
New ground of rejections of claims necessitated by applicant amendment after careful consideration of applicant’s amendments and arguments, has been established in the instant application as described above. Applicant's arguments with respect to claims have been considered but are moot in view of the new ground(s) of rejection.
With respect to applicant rejection under U.S.C. 101, Applicant's arguments with respect to claims have been fully considered but they are not found to be persuasive. For subject matter eligibility, the examiner’s met by burden clearly articulating the reasons why the claimed invention is not eligible by providing a reasoned rationale with examples from Interim Eligibility Guidelines identifying the judicial exception recited in the claim and why it is considered an exception, and examined the additional elements in the independent and dependent claims and explained why they do not amount to significantly more than the exception. The analysis as described in Steps 2A and 2B of Eligibility Guidance above is sufficient as it incorporates “significantly more” consideration in step 2B even if claim includes an abstract idea.
The claims as recited is simply a process in which computer are invoked merely as a tool for implementing abstract ideas rather than specific asserted improvement in computer capabilities such as the self-reliant table for computer database in the Enfish or remote filtering tool at a specific location customizable filtering features specific to each end user" in BASCOM or "effect an improvement in technology or technical field" in McRO. The automating conventional activities using generic technology does not amount to an inventive concept (See Alice, 134 S. Ct. at 2358) as these simply describes "automation of a mathematical formula/relationship through use of generic-computer computer function (see OIP Technologies, Inc. v. Amazon.com, 788, F.3d at 1363).
It is to be noted that the court rejected abstract idea of "filtering content in the Internet" in BASCOM, which is similar to “selectively transmitting, by the at least one processor, a respective first query asking if a respective offer to enter into a respective trade that fulfills at least a portion of each of the plurality of orders and a respective matching order that matches the order is accepted by an operator of the fund” in the claims in the instant application. It is only the significantly more steps that enabled of "installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end” as described in step two analysis of Mayo of the court decision made the claims in BASCOM patent eligible. An inventive concept that transforms the abstract idea into a patent-eligible invention must be significantly more than the abstract idea itself, and cannot be simply an instruction to implement or apply the abstract idea on a computer.
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.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosures. The following are pertinent to current invention, though not relied upon:
Alsberg et al. (U.S. Patent No. 7,349,879) teach market cleaning and providing offer proving conditions for acceptance.
Gastineau et al. (U.S. Patent No. 7,689,501) teach managing multiple investment funds and accounts using common investment process.
Goldenburg et al. (U. S. Patent No. 8,195,558) teach electronic inquiry list for financial products,
Lutnick et al. (U.S. Pub No. 2009/0132409) teach trading system products and processes providing additional pools of liquidity.
Zangari et al. (U.S. Patent No. 7,937,311) teach investment fund transaction and adjustment of portfolio to the transactions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BIJENDRA K SHRESTHA whose telephone number is (571)270-1374. The examiner can normally be reached 8:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached at (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,
/BIJENDRA K SHRESTHA/Primary Examiner, Art Unit 3691 February 19, 2026