DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
The following is a Final Office Action in response to communications received September 12, 2024. No Claim(s) have been canceled. No Claim(s) have been amended. No new claims have been added. Therefore, claim(s) 1 is pending and addressed below.
Priority
Application No. 18882886 filed 09/12/2024 is a Continuation of 18177811 , filed 03/03/2023, now abandoned 18177811 is a Continuation of 17831566 , filed 06/03/2022, now abandoned 17831566 is a Continuation of 16907855 , filed 06/22/2020, now abandoned 16907855 is a Continuation of 12953818 , filed 11/24/2010 ,now U.S. Patent # 10692142 12953818 is a Continuation of 12687372 , filed 01/14/2010 ,now U.S. Patent # 7873565 12687372 is a Continuation of 11399019 , filed 04/05/2006 ,now U.S. Patent # 7711644
11399019 Claims Priority from Provisional Application 60753095 , filed 12/20/2005
Applicant Name/Assignee: BGC Partners, Inc
Inventor(s): Claus, Matthew; Driscoll, James; Manning, Gregory; Noviello, Joseph
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(s) 1 is rejected under 35 U.S.C. § 101 because the instant application is directed to non-patentable subject matter. Specifically, the claims are directed toward at least one judicial exception without reciting additional elements that amount to significantly more than the judicial exception. The rationale for this determination is in accordance with the guidelines of USPTO, applies to all statutory categories, and is explained in detail below.
In reference to Claim 1:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a System, as in independent Claim 1. Such systems fall under the statutory category of "machine." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. The claimed invention is directed to an abstract idea without significantly more. System claim 1 recites operational process (1) generate composite value based on market data (2) receive composite trading order (3) generate a plurality of trading orders to satisfy composite order. The claimed limitations which under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic system. That is, other than reciting a system processor operable, nothing in the claim precludes the limitations from being reasonably performed using mental processes. The claimed physical structures (processors) are generic computer components and tools to perform the mental processes. The computer components are recited at a high level of generality and merely automates functions that could reasonable be performed using mental concepts, therefore acting as a generic computer to perform the abstract idea.
The steps recite steps that can easily be performed in the human mind as mental processes because the steps of “generate composite value” mimics mental processes of analysis and calculation. The step(s) “receive…trading order” mimics mental process of observation. The step(s) Feeding sequence of data to calculate a score, mimics mental processes of observation. The step(s) generate plurality of trading orders …that satisfy composite trading order” mimics mental process of analysis to determine a result. Therefore, the limitations, mimic human thought processes of observation, evaluation and opinion, and communication of result which, where the data interpretation is perceptible only in the human mind. See In re TLl Commc'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. latric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016)
When considered as a whole the claimed subject matter is directed toward generating composite value based on market data, receive trading orders associated with composite value and generate plurality of orders combined to satisfy the composite trading order. Such concepts can be found in the abstract category of commercial interactions and sales activities. These concepts are enumerated in Section I of the 2019 revised patent subject matter eligibility guidance published in the federal register (84 FR 50) on January 7, 2019) is directed toward abstract category of mental processes and methods of organizing human activity.
STEP 2A Prong 2: The identified judicial exception is not integrated into a practical application because the claims fail to provide indications of patent eligible subject matter that integrate the alleged abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a system comprising a memory to store data and a processors to perform the operations of the claimed invention.
The system processor applied to perform the operations “receive a composite trading order…” which according to MPEP 2106.05(d) II (see also MPEP 2106.05(g)) the courts have recognized the following computer functions are claimed in a merely generic manner (e.g., at a high level of generality) where technology is merely applied to perform the abstract idea or as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
The claim limitations “receive” is recited at a high level of generality without details of technical implementation and thus are insignificant extra solution activity.
The additional element system “processor” is applied to perform the operation “generate a composite value” and “generate a plurality of trading orders …to satisfy composite trading order” lacking technical disclosure which individually is directed toward a trading activity and thus does not provide indications of patent eligible subject matter.
When considered as a combination of parts or as a whole the combination of limitations (1)-(3) is directed toward generate a composite value is that is applied to received trading orders to generate a plurality of trading orders combined to satisfy a composite trading order which is directed toward a transaction process and not the underlying technology.
The claim limitations when considered individually fail to provide any indications of patent eligible subject matter, according to MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h).
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological environment.
The combinations of parts is not directed toward any of the indications of patent eligible subject matter under step 2A prong 2, but instead a trading of orders activity. The claim limitations as a whole, as an ordered combination and the combination of steps not integrate the judicial exception into a practical application as the claim process fails to impose meaningful limits upon the abstract idea. This is because the claimed subject matter fails to provide additional elements or combination or elements that go beyond applying technology as a tool to perform the identified abstract idea. The functions recited by the system in the claims recite the concept of a financial/trading activity. The claim limitations and specification lacks technical disclosure on what the technical problem was and how the claimed limitations provide a technical solution to a technical problem rather than a solution to a problem found in the abstract idea. Taking the claim elements separately, or as a combination, the operation performed by the mobile device processor and communication unit at each step of the process is purely in terms of results desired and devoid of implementation of details. Technology is not integral to the process as the claimed subject matter is so high level that any generic programming could be applied and the functions could be performed by any known means. Furthermore, the claimed functions do not provide an operation that could be considered as sufficient to provide a technological implementation or application of/or improvement to this concept (i.e. integrated into a practical application).
The integration of elements do not improve upon technology or improve upon computer functionality or capability in how computers carry out one of their basic functions. The integration of elements do not provide a process that allows computers to perform functions that previously could not be performed. The integration of elements do not provide a process which applies a relationship to apply a new way of using an application. The limitations do not recite a specific use machine or the transformation of an article to a different state or thing. The limitations do not provide other meaningful limits beyond generally linking the use of the abstract idea to a particular technological environment. The resource claimed performing the steps is merely a “field of use” application of technology. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments apply what generic computer functionality in the related arts. The steps are still a combination made to perform a financial activity and does not provide any of the determined indications of patent eligibility set forth in the 2019 USPTO 101 guidance. The additional steps only add to those abstract ideas using generic functions, and the claims do not show improved ways of, for example, an particular technical function for performing the abstract idea that imposes meaningful limits upon the abstract idea. Moreover, Examiner was not able to identify any specific technological processes that goes beyond merely confining the abstract idea in a particular technological environment, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim provides no technical details regarding how the operations performed by the “resource”. Instead, similar to the claims at issue in Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017), “the claim language . . . provides only a result-oriented solution with insufficient detail for how a computer accomplishes it. Our law demands more.” Intellectual Ventures, 850 F.3d at 1342 (citing Elec. Power Grp. LLC v. Alstom, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)). The claim is directed to an abstract idea
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea include a system comprising a memory to store data and a processors to perform functions “generate…value”, “receive…orders” and “generate …trading orders” some of the most basic functions of system processors. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional
Limitations which merely provide a technical environment in which to implement an abstract idea as referenced in Alice are not enough to qualify as “significantly more”, rather the technology is merely applied (or an equivalent) with an abstract idea. This is the instant case with the current claimed system as the system processor as claimed is not "truly drawn to a specific" system, but rather is directed toward the a field of use for performing a trading activity. Simply reciting the use of a processor to perform a trading activity while no more than a generic high level functions that are well understood activities known to the industry. As a result, none of the hardware recited by the system claims offers a meaningful limitation beyond generally linking the use of the method to a particular technological environment, that is, implementation via computers. .. . The claim limitations do not recite that system processor performs more than a high level generic function .... None of the limitations recite technological implementation details for any of these steps, but instead recite only results desired to be achieved by any and all possible means. .. .
When the claims are taken as a whole, as an ordered combination, the combination of steps does not add “significantly more” by virtue of considering the steps as a whole, as an ordered combination. This is because as a combination the recited operations do not provide significantly more than a trading activity. As to the operations claimed, all of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011). Absent a possible narrower construction of the terms “generate…value”, “receive…trading order” and “generate…plurality of orders' ... are functions can be achieved by any general purpose computer without special programming. None of these activities are used in some unconventional manner nor do any produce some unexpected result.
As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. Invest Pic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Applicant’s claimed functions add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis modification-transmission is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited as an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. The analysis concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception.
According to 2106.05 well-understood and routine processes to perform the abstract idea is not sufficient to transform the claim into patent eligibility. As evidence the examiner provides:
[0027] Although clients 14 are described herein as being used by traders 24, it should be
understood that the term "trader" is meant to broadly apply to any user of trading system 10,
whether that user is an agent acting on behalf of a principal, a principal, an individual, a legal
entity (such as a corporation), or any machine or mechanism that is capable of placing and/or
responding to trading orders 20 in system 10.
[0035] Although FIG. 1 illustrates memory 34 as internal to trading platform 12, it
should be understood that memory 34 may be internal or external to components of system 10,
depending on particular implementations. Also, memory 34 illustrated in FIG. 1 may be separate
or integral to other memory devices to achieve any suitable arrangement of memory devices for
use in system 10.
[0036] Processor 32 may be communicatively coupled to memory 34. Processor 32 is
generally operable to process market data 40 from market centers 18 to determine the liquidity
associated with trading products in market centers 18. Processor 32 is further operable to
generate composite value 48 and to process composite trading orders 42. Processor 32 comprises any suitable combination of hardware and software implemented in one or more modules to
provide the described function or operation. Processor 32 may execute program instructions
stored in memory 34 and comprise processing components to execute the program instructions.
[0037] It should be noted that the internal structure of trading platform 12, and the
interfaces, processors, and memory devices associated therewith, are malleable and can be
readily changed, modified, rearranged, or reconfigured in order to achieve its intended
operations. It should be further understood that the internal structure of system 10, and the clients
14, market centers 18, trading platform 12, processors, and memory devices associated
therewith, are malleable and can be changed, modified, or reconfigured in order to achieve the
intended operations of system 10.
The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is generic components and functions in the related arts. The "incidental use" of a system processor does not allow the claim to meet the Alice 2A or 2B requirements. The claim is not patent eligible has not met its burden.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claim(s) 1 is/are rejected under pre-AIA 35 U.S.C. 102(a) as being anticipated by US Pub No. 2005/0234807 A1 by Toffey (Toffey)
In reference to Claim 1:
Toffey teaches:
A system for processing a composite trading order ((Toffey) in at least para 0012-0014), the system comprising:
a memory operable to store market data received from one or more market centers ((Toffey) in at least para 0026, para 0056, para 0070, para 0072); and
a processor operable ((Toffey) in at least para 0070, para 0186) to:
generate a composite value based at least in part on the market data ((Toffey) in at least para 0048-0049, para 0103, para 0216);
receive a composite trading order associated with at least a portion of the composite value ((Toffey) in at least FIG. 3 ref # 3a-c; para 0025, para 0049, para 0092, para 0215, para 0121); and
generate a plurality of constituent trading orders that, when filled, combine to satisfy the composite trading order ((Toffey) in at least FIG. 3-4; para 0092, para 0095).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO 9526005 A1 by Belzbert; WO 02077776 A2 by Vande, US Patent No. 7,624,062 by Kelly et al; WO 2004088460 A2 by Toffey
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY M GREGG whose telephone number is (571)270-5050. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARY M GREGG/ Examiner, Art Unit 3695