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
Status of Claims
Claims 1, 15 and 29 are amended.
Response to Arguments
Applicants arguments regarding the 101 rejection of the claims have been considered but are not persuasive.
Applicant argues the claims should be allowed because of the allowance of parent applications citing similar subject matter.
The Office asserts that applications are examined with the examiner’s best information and analysis at the time of examination and that, at this time, the claims are not allowable for the reasons presented in the prior and the present office action.
Applicant argues the claims represent a technical improvement to electronic communications architectures…whereas prior systems operated in real time…the claimed invention defers sending messages until the expiration of the duration. By forwarding the stored electronic messages in an order unrelated to their order of receipt, the invention mitigates latency differences. Forwarding the messages in an order unrelated to their order of receipt is also not well-known or conventional.
The Office asserts that the invention is not a technical improvement because the invention is not novel. Per MPEP 2106.05(a), An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art.
Therefore, because the invention does not improve upon the prior art it is not considered a technical improvement. This concept is one already in use at, for example, the US Post Office. Mail is typically deposited in a post office mailbox and collected at set times by mail carriers. The time between collection times may be considered a duration. The mail is then taken and sorted at a post office facility and then delivered based on various factors but is not delivered based on the order in which the mail is deposited in the mailbox collection receptacle. The prior art of Kara (US 7265853 B1) discloses:
(20) It shall be appreciated that traditional transmission of documents through such systems as a postal authority require the posting of the document by the sender. Posting typically involves placing the mail item is some sort of receptacle, i.e., a mail box, to await its induction into the system during a scheduled collection by a postal agent. Thereafter, the mail item must be handled, sorted, and physically transported a number of times in order to reach a postal office near the intended recipient. Once delivered to this office, the mail item must be again sorted and handled in order to be associated with a particular postal carrier assigned a route including the intended recipient.
This technique is merely being applied to electronic messaging but limiting the abstract idea to a particular field does not make the concept patentable per Flook.
The applicant argues that the claimed components are not generic since a generic computer cannot perform the claimed functions without some modification.
The Office asserts that the term “generic” does not mean that the computer is unmodified, i.e., off the shelf. Every user computer undergoes some modification to make it useful for the user. Adding software modifies a computer but it i in that it can be modified to perform any number of functions without changing its form or basic operation.
The applicant argues the human mind is incapable of collecting messages over a duration and then sending those messages in an order unrelated to the order of collection.
The Office asserts that the applicant does not provide any reasoning for this position and the argument is therefore moot.
The applicant argues the claims are directed toward a solution related to a problem rooted in computer technology, the communication of messages over an electronic communication network.
The Office asserts that the communication of electronic messages over a communication network, by itself, is not a technical problem, i.e., the applicant has failed to state the “problem”.
The applicant argues the claims recite an improvement over traditional transaction processing systems that report market data.
The Office asserts that the claims do not recite the type of data being transmitted. Claim 12, for example, merely states that the message is sent based upon receipt of a market data message…The rest of the claims generally refer to electronic messages.
The applicant argues the claims improve a financial exchange computing system.
The Office asserts the claims do not recite a financial exchange computing system.
The 112 rejections are withdrawn in view of the amendments.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2, 3, 16, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, 15 and 16 of U.S. Patent No. 12,136,125. Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claims are worded differently but their differences are obvious except for the last limitation which recites: transmitting…from the queue in an order not based on the order in which the stored electronic messages were received. The patented claims recite: transmitting…at least a subset thereof…such that at least one of the electronic messages…that was received…after another of the…messages is transmitted prior thereto.
The present claims could refer to a random order of transmission while the
patented claims are broader and could also refer to a first in last out (FILO) system.
Claim 2 of the patented claims narrows claim 1 to storing the messages in a random order and then transmitting them in the order that they were stored. Claim 2 of the present claims is similar to claim 2 of the patented claims and thus narrows claim 1 of the present claims in a similar fashion making claim 2 of the present claims patently indistinguishable from the patented claim 2. A similar analysis applies to claims 3 of the present and patented claims as well as to claims 16 and 17 of the present claims with respect to claims 15 and 16 of the patented claims.
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) 1-32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s):
1. A computer implemented method comprising:
receiving, at an input by a processor via an electronic communications network coupled therewith during each of a plurality of succeeding finite time periods, from one of a plurality of sources, an electronic message transmitted thereby to a destination application, the processor being disposed on the electronic communications network so as to intercept all electronic messages transmitted by any of the plurality of sources to the destination application;
storing, upon receipt of the electronic message by one of a plurality of processing threads executed by the processor, the received electronic message in lieu of transmitting the received message to the destination application, in a queue together with other stored electronic messages previously received during the same one of the plurality of succeeding finite time periods in a memory coupled with the processor, for transmission to the destination application subsequent to the end of the one of the plurality of succeeding finite time periods during which the electronic messages stored in the queue were received;
transmitting, by another of the plurality of processing threads executed by the processor upon a determination that a current finite time period of the plurality of succeeding finite time periods has ended, the stored electronic messages to the destination application from the queue in an order not based on the order in which the stored electronic messages were received.
The underlined elements of the claim represent mental processes that can be performed in the human mind or by a human using pen and paper because the claims recite processes of receiving and sorting and transmitting messages in various orders. Symantec 838 F.3d is instructional. The district court held that “The asserted claims of the ‘142 patent are directed to human-practicable concepts, which could be implemented in, for example, a brick-and-mortar post office”. J.A. 35.
This judicial exception is not integrated into a practical application because the additional elements. The additional elements of a processor, electronic communications network, the identification of the messages as electronic and the destination as an application, and processing threads are all generically recited and perform generic functions such that they do not reflect a practical application. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the explanation.
The dependent claims merely narrow the abstract idea and as a whole and in combination merely comprise the abstract idea with the words “apply it”, or the like.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM E RANKINS whose telephone number is (571)270-3465. The examiner can normally be reached on 9-530 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM E RANKINS/Primary Examiner, Art Unit 3694