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 .
Claim Objections
Claim 2 is objected to because of the following informalities: “a storage element,” which appears should be written “the storage element.” Appropriate correction is required.
Claims 12, 13 and 15 are objected to because of the following informalities: “the trading marketplace,” which appears should be written “the digital trading marketplace.” Appropriate correction is required.
Claim 13 is objected to because of the following informalities: “information firm order information,” which appears should be written “the digital trading marketplace.” Appropriate correction is required.
Claims 1, 7, 9, 11 and 18 are objected to because of the following informalities: “a firm order,” which appears in the claim, and should be written “the firm order.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the storage element" in line 6. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03) Claim 1 recites a process, which is a statutory category of invention (Step 1: YES). Claim 7 and 9 recites an apparatus, which is a statutory category of invention (Step 1: YES).
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a)). Yes.
The claims are analyzed to determine whether it is directed to a judicial exception. The following claims identify the limitations that recite additional elements in bold and the abstract idea without bold. Underlined claim limitations denote newly added claim limitations:
Claim 1, 7 and 9 recite a method, implemented by a computing device, comprising receiving an indication of an interest submitted by a first subscriber or authorized user for display on a user interface, wherein the indication of interest includes an interest in a private security, receiving a request to convert the indication of interest into a firm order from the first subscriber or authorized user, the firm order having an economic fee associated therewith, generating a request for authorization information from the first subscriber or authorized user indicating that the first subscriber or authorized user is authorized to convert the indication of interest into a firm order, if the first subscriber or authorized user is authorized to submit the firm order, receiving authorization information from the first subscriber or authorized user, said authorization information being stored in the storage element, converting the indication of interest into the firm order, placing the firm order into a digital trading marketplace, receiving a request from the second subscriber or authorized user to proceed with a transaction involving the firm order, and matching the second subscriber or authorized user to the firm order submitted by the first subscriber or authorized user to form a trade, and once matched the economic fee is due and payable by one of the first subscriber or authorized user or the second subscriber or authorized user independent of completion of the trade. These limitations, as drafted, under its broadest reasonable interpretation, covers performance of the limitations in the mind or via manual human activity, but for the recitation of generic computer components. Under human activity, more specifically, the limitations are fundamental economic practice (such as trading), as well as commercial interaction (business relations) and managing interactions between people. Accordingly, the claim recites an abstract idea. The mere recitation of generic computer components in the claims do not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: Yes. The claims recite an abstract idea).
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d)). No.
The above judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of computing device, storage element, digital trading marketplace, non-transitory storage medium, instructions, processor, and user interface. The additional elements of a computing device, storage element, digital trading marketplace, non-transitory storage medium, instructions, processor, are just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)). The additional elements of user interface are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of Graphical User Interfaces (MPEP 2106.05(h)). The computer components are recited at such a high-level of generality (i.e. as a generic computer components) such that it amounts to no more than mere instructions to apply the exception using generic computer components, and the claims fail to recite technological detail as to how the step of the judicial exception is accomplished. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. (Step 2A-Prong 2: NO. The judicial exception is not integrated into a practical application).
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05). No.
The claims are next analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements of (computing device, storage element, digital trading marketplace, non-transitory storage medium, instructions, processor, and user interface) in the claims amount to no more than mere instructions to apply the exception using a generic computer component and generally linking the use of GUI’s to judicial exception. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component and generally linking the use of GUI’s to judicial exception cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claims do not amount to significantly more than the recited abstract idea (Step 2B: NO; The claims do not provide significantly more, and are not patent eligible).
Claim 2 recites receiving information associated with the indication of interest from the first subscriber or authorized user and stored in a storage element for review by a second subscriber or authorized user on the user interface. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of storage element are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of user interface are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of graphical user interface (MPEP 2106.05(h)). Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 3 recites wherein the receiving the indication of interest comprises receiving trade information including a company name, a number of shares to be traded, a price per share, a magnitude of the economic fee, and an indicator that the indication of interest is a bid or an offer. These limitations are also part of the abstract idea identified in claim 1, and is similarly rejected under the same rationale as claim 1, supra.
Claim 4 recites receiving a request to submit the indication of interest with the trade information associated therewith. These limitations are also part of the abstract idea identified in claim 1, and is similarly rejected under the same rationale as claim 1, supra.
Claim 5 recites generating information associated with the company for display on the user interface including a number of indications of interest associated with the company, a number of firm orders associated with the company, and bid offer information associated with the company. These limitations are also part of the abstract idea identified in claim 1, and is similarly rejected under the same rationale as claim 1, supra.
Claim 6 recites wherein the bid and offer information comprises share price information offered on one or more shares of the company or share price information bid on one or more shares of the company. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of user interface are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of graphical user interface (MPEP 2106.05(h)). Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 8 recites wherein the processor is further configured to receive information associated with the indication of interest from the first subscriber or authorized user and stored in a storage element for review by a second subscriber or authorized user on the user interface. These limitations are also part of the abstract idea identified in claim 7, and the additional elements of the processor and the storage element are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 7 analysis above. These limitations are also part of the abstract idea identified in claim 7, and the additional elements of user interface are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of graphical user interface (MPEP 2106.05(h)). Therefore, this claim is similarly rejected under the same rationale as claim 7, supra.
Claim 10 recites wherein the processor is further programmed to: receive information associated with the indication of interest from the first subscriber or authorized user and stored in a storage element for review by a second subscriber or authorized user on the user interface. These limitations are also part of the abstract idea identified in claim 9, and the additional elements of the processor and the storage element are addressed in the Steps 2A2 and B as just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 9 analysis above. These limitations are also part of the abstract idea identified in claim 9, and the additional elements of user interface are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of graphical user interface (MPEP 2106.05(h)). Therefore, this claim is similarly rejected under the same rationale as claim 7, supra.
Claims 11 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03) Claim 11 recites a process, which is a statutory category of invention (Step 1: YES).
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a)). Yes.
The claims are analyzed to determine whether it is directed to a judicial exception. The following claims identify the limitations that recite additional elements in bold and the abstract idea without bold. Underlined claim limitations denote newly added claim limitations:
Claim 11 recites a method, implemented by a computing device, comprising transmitting a first user interface to obtain information from a first subscriber or authorized user for an indication of interest in a company, wherein the indication of interest includes an interest in a private security, receiving from the first subscriber or authorized user the information about the indication of interest in the company, the information about the indication of interest in the company being stored in a storage element, receiving information associated with the indication of interest from the first subscriber or authorized user and stored in a storage element for review by a second subscriber or authorized user on the user interface, transmitting to the first subscriber or authorized user a second user interface to obtain instructions to convert the indication of interest into a firm order, the firm order having an economic fee associated therewith, receiving from the first subscriber or authorized user a request to convert the indication of interest into a firm order, transmitting a third user interface to obtain authorization information authorizing the first subscriber or authorized user to convert the indication of interest into the firm order, if the first subscriber or authorized user is authorized to submit the firm order, receiving the authorization information from the first subscriber or authorized user, the authorization agreement being stored in the storage element, converting the indication of interest into the firm order, placing the firm order into an on-line trading marketplace, receiving a request from a second subscriber or authorized user to proceed with a transaction involving the firm order, and matching the second subscriber or authorized user to the firm order submitted by the first subscriber or authorized user to form a trade, and once matched the economic fee is due and payable by one of the first subscriber or authorized user or the second subscriber or authorized user independent of completion of the trade. These limitations, as drafted, under its broadest reasonable interpretation, covers performance of the limitations in the mind or via manual human activity, but for the recitation of generic computer components. Under human activity, more specifically, the limitations are fundamental economic practice (such as trading), as well as commercial interaction (business relations) and managing interactions between people. Accordingly, the claim recites an abstract idea. The mere recitation of generic computer components in the claims do not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: Yes. The claims recite an abstract idea).
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d)). No.
The above judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of computing device, storage element, online-trading marketplace, user interface, first user interface, second user interface, and third user interface. The additional elements of a computing device, storage element, online-trading marketplace, are just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)). The additional elements of user interface, first user interface, second user interface, and third user interface are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of Graphical User Interfaces (MPEP 2106.05(h)). The computer components are recited at such a high-level of generality (i.e. as a generic computer components) such that it amounts to no more than mere instructions to apply the exception using generic computer components, and the claims fail to recite technological detail as to how the step of the judicial exception is accomplished. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. (Step 2A-Prong 2: NO. The judicial exception is not integrated into a practical application).
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05). No.
The claims are next analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements of (computing device, storage element, online-trading marketplace, user interface, first user interface, second user interface, and third user interface) in the claims amount to no more than mere instructions to apply the exception using a generic computer component and generally linking the use of GUI’s to judicial exception. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component and generally linking the use of GUI’s to judicial exception cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claims do not amount to significantly more than the recited abstract idea (Step 2B: NO; The claims do not provide significantly more, and are not patent eligible).
Claims 12-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03) Claim 12 recites a process, which is a statutory category of invention (Step 1: YES).
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a)). Yes.
The claims are analyzed to determine whether it is directed to a judicial exception. The following claims identify the limitations that recite additional elements in bold and the abstract idea without bold. Underlined claim limitations denote newly added claim limitations:
Claim 12 recites in a digital trading marketplace for trading interests in a company, a computer-implemented method of trading the interests, the method comprising generating a window element having along one side a drop down menu list element having a plurality of menu items associated therewith, a plurality of window tab elements disposed in a row along a top portion of the window element, a button element disposed along the top portion of the window, the button element allowing a user to input an indication of interest in a selected company, and a left pane element and right pane element, wherein the right and left pane elements form part of the window, the left pane element displaying on a display element messages associated with selected users of the trading marketplace, and the left pane element displaying on a display information associated with each of the plurality of window tab elements. These limitations, as drafted, under its broadest reasonable interpretation, covers performance of the limitations in the mind or via manual human activity, but for the recitation of generic computer components. Under human activity, more specifically, the limitations are fundamental economic practice (such as trading), as well as commercial interaction (business relations) and managing interactions between people. Accordingly, the claim recites an abstract idea. The mere recitation of generic computer components in the claims do not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: Yes. The claims recite an abstract idea).
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d)). No.
The above judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of digital trading marketplace, computer, window element, drop down meu list elements, plurality of window tab element, button element, top potion of the window, left pane element, right pane element, and part of the window. The additional elements of a digital trading marketplace, computer, are just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)). The additional elements of window element, drop down meu list elements, plurality of window tab element, button element, top potion of the window, left pane element, right pane element, and part of the window are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of Graphical User Interfaces (MPEP 2106.05(h)). The computer components are recited at such a high-level of generality (i.e. as a generic computer components) such that it amounts to no more than mere instructions to apply the exception using generic computer components, and the claims fail to recite technological detail as to how the step of the judicial exception is accomplished. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. (Step 2A-Prong 2: NO. The judicial exception is not integrated into a practical application).
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05). No.
The claims are next analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements of (digital trading marketplace, computer, window element, drop down meu list elements, plurality of window tab element, button element, top potion of the window, left pane element, right pane element, and part of the window) in the claims amount to no more than mere instructions to apply the exception using a generic computer component and generally linking the use of GUI’s to judicial exception. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component and generally linking the use of GUI’s to judicial exception cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claims do not amount to significantly more than the recited abstract idea (Step 2B: NO; The claims do not provide significantly more, and are not patent eligible).
Claim 13 recites wherein the plurality of menu items of the drop down menu list element comprises a first menu item element for displaying on a display when selected interests in companies to be traded in the digital trading marketplace, a second menu item element for displaying on the display information associated with a plurality of companies, and a third menu 53ZANW-001 CN item element for displaying on the display information firm order information for use by personnel of the trading marketplace. These limitations are also part of the abstract idea identified in claim 12, and the additional elements of plurality of menu items of the drop down menu list, first menu item element, display, digital trading marketplace, second menu item element, and third menu item element are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of GUIs (MPEP 2106.05(h)). Therefore, this claim is similarly rejected under the same rationale as claim 12, supra.
Claim 14 recites wherein the first menu list element includes a trading menu item element, the second meu item element includes a historical menu item element, and a third menu item element includes a staff menu item element. This limitation is also part of the abstract idea identified in claim 12, and is similarly rejected under the same rationale as claim 12, supra. These limitations are also part of the abstract idea identified in claim 12, and the additional elements of plurality of menu items of the drop down menu list, first menu item element, display, digital trading marketplace, second menu item element, and third menu item element are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of GUIs (MPEP 2106.05(h)). Therefore, this claim is similarly rejected under the same rationale as claim 12, supra.
Claim 15 recites wherein the plurality of window tab elements comprise a first tab element for displaying trading activity associated with the trading marketplace. These limitations are also part of the abstract idea identified in claim 12, and the additional elements of plurality of menu items of the drop down menu list, first menu item element, display, digital trading marketplace, second menu item element, and third menu item element are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of GUIs (MPEP 2106.05(h)). Therefore, this claim is similarly rejected under the same rationale as claim 12, supra.
Claim 16 recites when the button element is selected, generating a user interface element for display in the window to allow a subscriber or authorized user to submit trading information associated with the selected company. These limitations are also part of the abstract idea identified in claim 12, and the additional elements of plurality of menu items of the drop down menu list, first menu item element, display, digital trading marketplace, second menu item element, and third menu item element are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of GUIs (MPEP 2106.05(h)). Therefore, this claim is similarly rejected under the same rationale as claim 12, supra.
Claim 17 recites selecting one of the plurality of menu items of the drop down menu list element, and when selected, generating in the right pane element a plurality of second tab elements disposed in a row. These limitations are also part of the abstract idea identified in claim 12, and the additional elements of plurality of menu items of the drop down menu list, first menu item element, display, digital trading marketplace, second menu item element, and third menu item element are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of GUIs (MPEP 2106.05(h)). Therefore, this claim is similarly rejected under the same rationale as claim 12, supra..
Claims 18 rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03) Claim 18 recites a process, which is a statutory category of invention (Step 1: YES).
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a)). Yes.
The claims are analyzed to determine whether it is directed to a judicial exception. The following claims identify the limitations that recite additional elements in bold and the abstract idea without bold. Underlined claim limitations denote newly added claim limitations:
Claim 12 recites a method, comprising receiving an indication of an interest submitted by a first subscriber or authorized user for display on a user interface, wherein the indication of interest includes an interest in a private security, receiving a request to convert the indication of interest into a firm order from the first subscriber or authorized user, the firm order having an economic fee associated therewith, requesting authorization information from the first subscriber or authorized user indicating that the first subscriber or authorized user is authorized to convert the indication of interest into a firm order, if the first subscriber or authorized user is authorized to submit the firm order, receiving authorization information from the first subscriber or authorized user, said authorization information being stored in the storage element, converting the indication of interest into the firm order, receiving a request from the second subscriber or authorized user to proceed with a transaction involving the firm order, and matching the second subscriber or authorized user to the firm order submitted by the first subscriber or authorized user to form a trade, and once matched the economic fee is due and payable by one of the first subscriber or authorized user or the second subscriber or authorized user independent of completion of the trade. These limitations, as drafted, under its broadest reasonable interpretation, covers performance of the limitations in the mind or via manual human activity, but for the recitation of generic computer components. Under human activity, more specifically, the limitations are fundamental economic practice (such as trading), as well as commercial interaction (business relations) and managing interactions between people. Accordingly, the claim recites an abstract idea. The mere recitation of generic computer components in the claims do not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: Yes. The claims recite an abstract idea).
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d)). No.
The above judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of storage element and user interface. The additional elements of a storage element, are just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)). The additional elements of the user interface are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technology of Graphical User Interfaces (MPEP 2106.05(h)). The computer components are recited at such a high-level of generality (i.e. as a generic computer components) such that it amounts to no more than mere instructions to apply the exception using generic computer components, and the claims fail to recite technological detail as to how the step of the judicial exception is accomplished. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. (Step 2A-Prong 2: NO. The judicial exception is not integrated into a practical application).
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05). No.
The claims are next analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements of (storage element and user interface) in the claims amount to no more than mere instructions to apply the exception using a generic computer component and generally linking the use of GUI’s to judicial exception. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component and generally linking the use of GUI’s to judicial exception cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claims do not amount to significantly more than the recited abstract idea (Step 2B: NO; The claims do not provide significantly more, and are not patent eligible).
Claim Rejections - 35 USC § 103
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 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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 nonobviousness.
Claims 1, 2, 7-11, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Fitzherbert (US 20030014353), in view of Foley US 20100174654.
Regarding claims 1, 7, 9 and 18, Fitzherbert discloses a method, implemented by a computing device, comprising
receiving an indication of an interest submitted by a first subscriber or authorized user for display on a user interface (Website 15, Para. 13, “The exchange facilitates world trade through more efficient information exchange as to all available users and/or providers of LC's to complete trade payments under trade contracts and similar documents”),
wherein the indication of interest includes an interest in a private security (Para. 14, discussing a “bid” for a transaction),
receiving a request to convert the indication of interest into an [order] from the first subscriber or authorized user (Para. 14, 15, 53, 56, and 67),
the firm order having an economic fee associated therewith (Claim 4, fee transaction; Para. 15, bank transaction fee; Para. 30, fee recordation; Para. 54, Fee charge),
generating a request for authorization information from the first subscriber or authorized user indicating that the first subscriber or authorized user is authorized to convert the indication of interest into a [order] (Para. 27, Authorized user; Para. 44-45, Blue and red lines confirming authorization, Para. 56, and 67),
if the first subscriber or authorized user is authorized to submit the [order], receiving authorization information from the first subscriber or authorized user, said authorization information being stored in the storage element (Para. 27, when authorized, necessary computer parts are downloaded; Para. 51, IDT is stored and Para. 65),
converting the indication of interest into the [order] (Para. 56, confirming order through “green” status, and Para. 67, confirming bank quote commitment),
placing the firm order into a digital trading marketplace (Para. 67, automatic notification when criteria from banks is reached),
receiving a request from the second subscriber or authorized user to proceed with a transaction involving the [order] (Para. 56, Bank B can make a request with three different possible banks (A, B, C), and Para. 65, proceeds when exporter bank has agreed),
and matching the second subscriber or authorized user to the [order] submitted by the first subscriber or authorized user to form a trade (Para. 63, Bid acceptance; Para. 65, proceed when bank agrees),
and once matched the economic fee is due and payable by one of the first subscriber or authorized user or the second subscriber or authorized user independent of completion of the trade (Para. 62, “The bid from bank A is selected and this is indicated by the choice in message box 72 and also by the notification path extending from fee recordation portions 60, across the page divide to a fee paid transaction box 76 of Bank A computer system 16 a. Fee box 76 records a predetermined fee, usually in point, against the issuing bank A as a percentage of the LC and are paid to the transaction manager for the services of using website 15. The fees paid by importer 10 to Bank A for issuing an LC is based on the bid price and are paid outside of the present system”; Para. 72, “Fee box 62 records a predetermined fee, usually in point, against the confirming bank x as a percentage of the LC and are paid to the transaction manager for the services of using website 15. The fees paid by the exporter to Bank x for confirming an LC is based on a percentage of the LC and are paid outside of the present system”).
Fitzherbert fails to disclose a firm order trading system. However, Foley discloses an electronic trading system with anonymous negotiation and indicators of interest for firm orders in a trading context (Fig. 1, with user station 14 and 16, gateway 18, Para. 59, participant enters firm negotiation order in step 80 of Fig. 4; with the possibility of counter offers as “firm offers,” Para. 63).
It would have been obvious to one of ordinary skill in the art, before the effective date of filing, to have modified Fitzherbert with the firm order trading system of Foley. Doing so ensures that orders are locked in with a binding instruction for a buy or sell for a security at a set price that can be executed immediately without further confirmation, creating greater efficiency and accuracy in the trading system.
Regarding claim 2, 8, and 10, modified Fitzherbert discloses receiving information associated with the indication of interest from the first subscriber or authorized user and stored in a storage element for review by a second subscriber or authorized user on the user interface (Para. 14, Receiving bids between importer and exporter, Para. 50, Sale commitment is posted between exporter and importer, and Para. 66, “The process in STEP 4 begins at exporter computer system 12 where the exporter reviews the accepted LC and assembles its request to be posted on website 15”).
Regarding clam 7 and 9, modified Fitzherbert discloses all of the above, including a non-transitory storage medium storing instructions that cause a processor, as well as a storage element (Para. 27 & 30).
Regarding claims 11 and 18, Fitzherbert discloses a method, implemented by a computing device, comprising:
transmitting a first user interface to obtain information from a first subscriber or authorized user for an indication of interest in a company (Para. 14, 27, and 30; Website 15, Para. 13, “The exchange facilitates world trade through more efficient information exchange as to all available users and/or providers of LC's to complete trade payments under trade contracts and similar documents”),
wherein the indication of interest includes an interest in a private security (Para. 14, discussing a “bid” for a transaction),
receiving from the first subscriber or authorized user the information about the indication of interest in the company, the information about the indication of interest in the company being stored in a storage element (Para. 14, 28-30; Receiving a request from a bidding user),
receiving information associated with the indication of interest from the first subscriber or authorized user and stored in a storage element for review by a second subscriber or authorized user on the user interface (Para. 14, 49, 50, and 66; Exporter and importer conclude sales; Banks access website; Importer then selects bid; Para. 27, when authorized, necessary computer parts are downloaded; Para. 51, IDT is stored and Para. 65),),
transmitting to the first subscriber or authorized user a second user interface to obtain instructions to convert the indication of interest into a [order] (Para. 14, 15, 53, 56, and 67; Transmitting the bids to the importer’ Path of Step 2, indicated by green lines; With encrypted quote commitment sent),
the firm order having an economic fee associated therewith (Para. 30, 56 and 72; Market bid is an economic fee; Economic fee 62),
receiving from the first subscriber or authorized user a request to convert the indication of interest into a [order] ((Para. 56, confirming order through “green” status, and Para. 67, confirming bank quote commitment),
transmitting a third user interface to obtain authorization information authorizing the first subscriber or authorized user to convert the indication of interest into the [order] (Para. 14, 53; 54, Receiving bids from banks at website; 56, Banks make bid at website, and Para. 67),
if the first subscriber or authorized user is authorized to submit the [order], receiving the authorization information from the first subscriber or authorized user, the authorization agreement being stored in the storage element (Para. 27, when authorized, necessary computer parts are downloaded; Para. 51, IDT is stored and Para. 65),
converting the indication of interest into the [order] (Para. 56, confirming order through “green” status, and Para. 67, confirming bank quote commitment),
placing the firm order into an on-line trading marketplace (Para. 67, automatic notification when criteria from banks is reached),
receiving a request from a second subscriber or authorized user to proceed with a transaction involving the firm order (Para. 56, Bank B can make a request with three different possible banks (A, B, C), and Para. 65, proceeds when exporter bank has agreed), and
matching the second subscriber or authorized user to the firm order submitted by the first subscriber or authorized user to form a trade (Para. 63, Bid acceptance; Para. 65, proceed when bank agrees),
and once matched the economic fee is due and payable by one of the first subscriber or authorized user or the second subscriber or authorized user independent of completion of the trade (Para. 62, “The bid from bank A is selected and this is indicated by the choice in message box 72 and also by the notification path extending from fee recordation portions 60, across the page divide to a fee paid transaction box 76 of Bank A computer system 16 a. Fee box 76 records a predetermined fee, usually in point, against the issuing bank A as a percentage of the LC and are paid to the transaction manager for the services of using website 15. The fees paid by importer 10 to Bank A for issuing an LC is based on the bid price and are paid outside of the present system”; Para. 72, “Fee box 62 records a predetermined fee, usually in point, against the confirming bank x as a percentage of the LC and are paid to the transaction manager for the services of using website 15. The fees paid by the exporter to Bank x for confirming an LC is based on a percentage of the LC and are paid outside of the present system”).
Fitzherbert fails to disclose a firm order trading system. However, Foley discloses an electronic trading system with anonymous negotiation and indicators of interest for firm orders in a trading context (Fig. 1, with user station 14 and 16, gateway 18, Para. 59, participant enters firm negotiation order in step 80 of Fig. 4; with the possibility of counter offers as “firm offers,” Para. 63).
It would have been obvious to one of ordinary skill in the art, before the effective date of filing, to have modified Fitzherbert with the firm order trading system of Foley. Doing so ensures that orders are locked in with a binding instruction for a buy or sell for a security at a set price that can be executed immediately without further confirmation, creating greater efficiency and accuracy in the trading system.
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fitzherbert, in view of Millard (US 20020007335).
Regarding claim 3, Fitzherbert discloses receiving the indication of interest comprising receiving trade information including accompany name (Para. 50), economic fee (Para. 56), 62, and 72), and an indicator that the indication of interest is a bid or an offer (Para. 50), but fails to disclose price per share and number of shares to be traded. However, Millard discloses both the price per share and number of shares to be traded (Para. 59, 172, 182, and 345/350; Fig. 15-16).
It would have been considered obvious to one of ordinary skill in the art, at the effective date of filing, to have modified Fitzherbert with Millard, Doing so allows the user to understand the price per share to be traded, as well as the numbers to be traded, to ensure an effective trade.
Regarding claim 4, modified Fitzherbert discloses receiving a request to submit the indication of interest with the trade information associated therewith (Para. 14 & 27, Importer and Export interest in transaction with sent details between both parties).
Regarding claim 5, modified Fitzherbert generating information associated with the company for display on the user interface (Para. 14, 27, and 30) including a number of indications of interest associated with the company (Millard, Para. 28, 86, 187, and 203), a number of firm orders associated with the company, and bid offer information associated with the company (Millard, Para. 187, 203, 347 and 350; Fig. 15-16).
Regarding claim 6, modified Fitzherbert where the bid and offer information comprises share price information offered on one or more shares of the company or share price information bid on one or more shares of the company (Millard, Para. 59, “All orders on matching and distributed quotation systems are priced in standard increments—all bids and offers (whether expressed as decimals or fractions) must be in predetermined increments (e.g., dollars, eighths of a dollar, or cents). Similarly, “odd-lot” (a quantity of shares that is not an integer multiple of 100) stock transactions are subject to higher broker and exchange fees; Para. 172, “Offers to acquire the security are listed under “Bid,” offers to sell are listed under “Ask.” Both of these are the price per unit (e.g., price per share). Bid and Ask are hyperlinked to a Trading Floor and the details of the particular Bid or Ask. If a Member clicks on their own Bid or Ask offer, indicated on the display in a distinctive typeface such as italics, the offer is displayed in an “Add Listing” page and can be edited”; Fig. 15-16).
Claims 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Millard (US 20020007335), in view of Foley.
Regarding claim 12, Millard discloses in a digital trading marketplace for trading interests in a company, a computer-implemented method of trading the interests (Fig. 1-2; Para. 66, “The preferred system enables the trading of any securities between any number of potential buyers and sellers”), the method comprising
generating a window element having along one side a drop down menu list element having a plurality of menu items associated therewith, a plurality of window tab elements disposed in a row along a top portion of the window element (Fig. 8A with Fig. 10, and Fig. 15; Para. 218, “Records of previous postings that resulted in trading activity are recorded by the System and are available to Members. The records can be accessed by clicking on the “Records” hyperlink on the Issuer page”; Para. 316, “Preferred interfaces are depicted in FIGS. 15-21. FIG. 15 depicts an Activity Board, which acts as the nerve center of the System and as a personalized repository for each Member's trade activity information”),
a button element disposed along the top portion of the window, the button element allowing a user to input an indication of interest in a selected company (Fig. 8A, 10, and 15; Para. 189, Step 986, “If the Member chooses at step 975 to define a new type of security, the Member is must select at step 980 as a template an existing SDF that closely matches the new definition or a generic template. At step 982, the System generates the form to edit the specified template and transmits this form to the Member's workstation. At step 984, the Member can edit the form by adding or deleting elements, changing labels, changing descriptions, and selecting or omitting the data validation rules. When the Member has completed changes to the form for the new security type, he clicks on the “Accept” button (step 986), and the System translates the information from the online form into a new SDF, saves at step 940 the current SDF, executes step 925, and generates the screen of step 930 on the Member workstation, enabling the Member to complete the posting process through steps 930 through 944”), and
a left pane element and right pane element (Fig. 8A and Fig. 15A),
wherein the right and left pane elements form part of the window (Both form part of the window),
and the left pane element displaying on a display information associated with each of the plurality of window tab elements (Fig. 8A, 10, and 15A; Fig. 15A, Displayed information throughout Fig. 15A, from member to indicated bid).
the left pane element displaying on a display element associated with selected users of the trading marketplace (15A, Several panes located in Fig. 15A; Fig. 15A, displaying a pane for “activity board with “open negotiations””)
Millard discloses a left pane with display on a trading marketplace, but fails to disclose the left pane element displaying on a display message element associated with selected users of the trading marketplace. However, Foley discloses a messages that can be received on the display (Fig. 10, element 128; Para. 59, “To enter the negotiation order, for example, for a negotiation to buy, the system 10 generates a pop-up window 128 or sub-screen, such as shown in FIG. 10, for inputting a negotiation price as well as limits to exposure of the first participant in the negotiations. For example, as shown in FIG. 10, Participant A sends a negotiation message to sell 50,000 shares of a designated security at, for example, $84.25 per share to Participant B and other participants who entered the sale orders in FIG. 9. Through the pop-up window 128 of FIG. 10, the first participant may limit his/her trading exposure to 60,000 shares”).
It would have been obvious to one of ordinary skill in the art, before the effective date of filing, to have modified Millard with the display messages of Foley. Doing so enables the user to receive messages in real-time, and for the user to be better informed of active trades that are interested, increasing efficiency of the trading system.
Regarding claim 13, Millard discloses wherein the plurality of menu items of the drop down menu list element comprises a first menu item element for displaying on a display when selected interests in companies to be traded in the digital trading marketplace (Fig. 8a-c, Several different drop down items with interested companies, such as posting date, notional size, etc. , 10; Fig. 15a-c, Activity Board, Element 1512,
a second menu item element for displaying on the display information associated with a plurality of companies (Fig. 8a-c, Fig. 15a-c; Showing buttons with drop down features such as posting date, notional size, etc),
Millard fails to disclose a third menu item element for displaying on the display information firm order information for use by personnel of the trading marketplace.
It would have been obvious to one of ordinary skill in the art, before the effective date of filing, to have modified Millard with the third menu item since change in size has been held to not hold patentable weight (In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package “of appreciable size and weight requiring handling by a lift truck” were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (“mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” 531 F.2d at 1053, 189 USPQ at 148.). In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device).
Regarding claim 14, modified Millard disclose wherein the first menu list element includes a trading menu item element (Fig. 8a-c, posting and notional value), the second meu item element includes a historical menu item element (Fig. 8a-c, posting and notional value). Modified Millard fails to disclose a third menu item element includes a staff menu item element.
It would have been obvious to one of ordinary skill in the art, before the effective date of filing, to have modified Millard with the third menu item for a staff menu since staff has traditionally manages client terminals at various investment trading desks and the staff can manage the client terminal to better understand users’ trades and help make changes accordingly.
Regarding claim 15, modified Millard discloses where the plurality of window tab elements comprise a first tab element for displaying trading activity associated with the trading marketplace (Fig. 15a-c, tabs 1512 & 1532, 1514, 1520).
Regarding 16, Millard discloses when the button element is selected, generating a user interface element for display in the window to allow a subscriber or authorized user to submit trading information associated with the selected company (Para. 187, deployed information for the member wishing to trade, where the member can enter and edit information; Para, displayed for data entry to the Member, and Para. 216, “the Member is sent a page displaying the offer and input fields for her password to make a final positive confirmation of the offer. The offer is confirmed and written to the System database if the correct password is entered, and the data are again validated. Once confirmed, the offer is immediately visible to other Members who access the specified Market for the offer”).
Regarding claim 17, modified Millard discloses selecting one of the plurality of menu items of the drop down menu list element, and when selected, generating [ ] a plurality of second tab elements disposed in a row (Fig. 16a, Element 1610; Fig. 15a-c, Element 1512, 1532; Fig. 15b, element 1520. Modified Millard fails to disclose generating a second tab elements in the right pan.
It would have been obvious to one of ordinary skill in the art, before the effective date of filing, to have modified Millard with the tab elements in the right pane since it has been held that rearrangements of parts does not hold patentable weight (In reJapikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
Conclusion
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/BRANDON M DUCK/Examiner, Art Unit 3693
/ELIZABETH H ROSEN/Primary Examiner, Art Unit 3693