DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
Instant application is CON of US12165205-B2, US-11694259-B2, and US-11055774-B2. Claims 22 and 24-41 are presented for examination. Applicant filed a response to non-final Office action on 04/13/2026 amending independent claims 22, 32, and 37; and canceling dependent claims 23. In light of Applicant’s amendments, Examiner has withdrawn the previous § 101 rejection. Examiner has, however, maintained the previous double patenting rejection and established new § 101 rejection for claims 22-41 in the instant Office action. Since Examiner has maintained the previous double patenting rejection and the new § 101 rejection is necessitated by Applicant’s amendments, the instant rejection of claims 22 and 24-41 is FINAL rejection of the claims.
Examiner's Remarks
Double Patenting
Applicant is stating in page 9 of Applicant’s Remarks:
The Applicant respectfully requests that the double patenting rejection be held in abeyance until all of the pending claims are deemed allowable.
In light of Applicant’s statement, Examiner has maintained the previous double patenting rejection for instant claims 22 and 24-41.
Patent Eligibility under § 101
Applicant is arguing in page 9 of Applicant’s Remarks:
[T]o expedite prosecution, the Applicant has amended the pending claims to more clearly recite that they are directed to statutory subject matter. In particular, the Applicant respectfully submits that any allegedly recited abstract idea is clearly integrated into a practical application when the claims are considered as a whole. As stated in MPEP 2106.04(d)(1) (emphasis added):
[F]irst the specification should be evaluated to determine if the disclosure provides sufficient details such that one of or recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art .... Second, if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification....
The Applicant respectfully submits that the Specification at, for example, paragraphs [0016]-[0018] identifies technical problems of existing systems addressed by, and the improvements provided by, the claimed embodiments. Further, the Applicant respectfully submits that the particular techniques providing these technical improvements identified in the Specification are clearly recited in the pending claims.
Examiner respectfully disagrees. Applicant’s claim limitations are recited in high level of abstraction lacking details and specifics as to how a technological solution to a problem of technology is carried out. As such, instant claims 22 and 24-41 are not eligible to be patented under § 101.
Prior Art under § 102 and § 103
Closest prior art reference – Waelbroeck (US 8,156,036 B1) discloses generally:
The trading method involves selecting with processing system one or more first trading algorithms from available stored algorithms for execution of trading order. The processing system execution of trading order is commenced via one or more first trading algorithms. The quality of execution is evaluated with processing system during execution of trading order via one or more first trading algorithms. The execution of trading order to one or more second trading algorithms is switched with the processing system if evaluated quality of execution compares unfavorably to threshold of acceptability.
Waelbroeck, however, does not teach – alone or in combination with other references – the following limitations found in independent claims 22, 32, and 37, as an ordered combination of steps with other claim limitations:
receiving, by the computing device, a command to launch the second trading algorithm;
generating, by the computing device, in response to receiving the second data, a second unique identifier based on the second data associated with the second trading algorithm;
comparing, by the computing device, in response to generating the second unique identifier, the first unique identifier with the second unique identifier;
executing, by the computing device, in response to the comparing, when comparing the first unique identifier with the second unique identifier indicates a match, the second trading algorithm; and
rejecting, by the computing device, in response to the comparing, when comparing the first unique identifier with the second unique identifier does not indicate a match, the command to launch the second trading algorithm.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory 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 non-statutory 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 22 and 24-41 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-8 of US12165205-B2, over claims 1-8 of US-11694259-B2, and over claims 1-8 of US-11055774-B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are obvious over the reference 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.
Claims 22 and 24-41 are rejected under 35 USC § 101 because they are directed to non-statutory subject matter. The rationale for this finding is explained below.
The Supreme Court in Mayo laid out a framework for determining whether an applicant is seeking to patent a judicial exception itself or a patent-eligible application of the judicial exception. See Alice Corp., 134 S. Ct. at 2355,110 USPQ2d at 1981 (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961). This framework, which is referred to as the Mayo test or the Alice/Mayo test (“the test”), is described in detail in Manual of Patent Examining Procedure (”MPEP”) (see MPEP § 2106(III) for further guidance). The step 1 of the test: It need to be determined whether the claims are directed to a patent eligible (i.e., statutory) subject matter under 35 USC § 101. Step 2A of the test: If the claims are found to be directed to a statutory subject matter, the next step is to determine whether the claims are directed to a judicial exception i.e., law of nature, natural phenomenon, and abstract idea (Prong 1). If the claims are found to be directed to an abstract idea, it needs to be determined whether the claims recite additional elements that integrate the judicial exception into a practical application (Prong 2). Step 2B of the test: If the claims are directed to a judicial exception, the next and final step is to determine whether the claims recite additional elements that amount to significantly more than the judicial exception.
Step 1 of the Test:
When considering subject matter eligibility under 35 USC § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. Here, the claimed invention of claims 22 and 24-31 is a series of steps, which is method (i.e., a process) and, thus, one of the statutory categories of invention. Further, the claimed invention of claims 32-36 is a tangible non-transitory computer readable medium, which is also one of the statutory categories of invention. Still further, the claimed invention of claims 37-41 is a system, which is also one of the statutory categories of invention.
Conclusion of Step 1 Analysis: Therefore, claims 22 and 24-41 are statutory under 35 USC § 101 in view of step 1 of the test.
Step 2A of the Test:
Prong 1: Claims 22 and 24-41, however, recite an abstract idea of authorization of a trading strategy algorithm. The creation of authorization of a trading strategy algorithm, as recited in the independent claims 22, 32, and 37, belongs to certain methods of organizing human activity (i.e., fundamental economic principles or practices including mitigating risk) that are found by the courts to be abstract ideas. The limitations in independent claims 22, 32, and 37, which set forth or describe the recited abstract idea, are found in the following steps:
“receiving a command to launch the second trading algorithm” (claims 22, 32, and 37);
“generating, in response to receiving the second data, a second unique identifier based on the second data associated with the second trading algorithm” (claims 22, 32, and 37);
“comparing, in response to generating the second unique identifier, the first unique identifier with the second unique identifier” (claims 22, 32, and 37);
“executing, in response to the comparing, when comparing the first unique identifier with the second unique identifier indicates a match, the second trading algorithm” (claims 22, 32, and 37); and
“rejecting, in response to the comparing, when comparing the first unique identifier with the second unique identifier does not indicate a match, the command to launch the second trading algorithm” (claims 22, 32, and 37).
Prong 2: In addition to abstract steps recited above in Prong 1, independent claims 22, 32, and 37, recite additional elements:
“a computing device” (claims 22 and 37); and
“a tangible, non-transitory computer readable medium including instructions that, when executed, cause at least one processor to perform a set of operations” (claim 32).
These additional elements are recited at a high level of generality (e.g., as a generic processor performing a generic computer functions) such that they amount to no more than mere instructions to apply the exception using a generic computer components. Further, the following limitations recite insignificant extra solution activity (for example, data gathering):
“receiving a first unique identifier based on first data associated with a first trading algorithm, wherein the first unique identifier indicates that the first trading algorithm has been authorized, wherein the first data associated with the first trading algorithm includes one of a definition for the first trading algorithm or program code for the first trading algorithm” (claims 22, 32, and 37); and
“receiving second data associated with a second trading algorithm, wherein the second data associated with the second trading algorithm includes one of a definition for the second trading algorithm or program code for the second trading algorithm” (claims 22, 32, and 37).
These additional limitations do not integrate the abstract idea into a practical application because they do not impose a meaningful limit on the judicial exception. The additional elements/limitations of independent claims 22, 32, and 37, here do not render improvements to the functioning of a computer or to any other technology or technical field (see MPEP § 2106.05(a)), nor do they integrate the abstract idea into a practical application under MPEP § 2106.05(b) (particular machine); MPEP § 2106.05(c) (particular transformations); or MPEP § 2106.05(e) (other meaningful limitations).
Conclusion of Step 2A Analysis: The limitations in independent claims 22, 32, and 37, which set forth or describe the recited abstract idea are not patent eligible either alone or in combination. The additional elements/limitations in independent claims 22, 32, and 37, are not patent eligible either alone or in combination. Further, the combination of these additional elements/limitations and the limitations which set forth or describe the recited abstract idea is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements/limitations and the limitations which set forth or describe the recited abstract idea do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, independent claims 22, 32, and 37, are non-statutory under 35 USC § 101 in view of step 2A of the test.
Step 2B of the Test: The additional elements of independent claims 22, 32, and 37, (see under Step 2A – Prong 2) are described by Applicant’s Specification in following terms:
[0028] The example client device 112 of FIG. 1 may be a computing device having a processor and memory. The client device 112 may include one or more electronic computing platforms such as a hand-held device, laptop, desktop computer, workstation with a single or multi-core processor, server with multiple processors, and/or cluster of computers. While depicted as a single device in FIG. 1, the client device 112 may include a trading terminal in communication with the server device 122 and/or a server other than the server device 122. The trading terminal may provide a trading screen to a user and may communicate commands to the server for further processing of the user's inputs (for example, commands for placing orders) through the trading screen.
[0033] In some examples, the trading algorithm design application 116 may be stored to a portable computer-readable storage medium (for example, a compact disc), and the client device 112 may be configured to execute the trading algorithm design application 116 from the portable storage medium. In some examples, the trading algorithm design application 116 may reside on the server device 122 or a different server device and be moved or loaded to the client device 112 (for example, by downloading the trading algorithm design application 116 from a file or application device). These examples are illustrative, not limiting, and the example client device 112 of FIG. 1 may be configured in various other ways to execute the example trading algorithm design application 116.
This is a description of general-purpose computer. Thus, individually, the additional elements of independent claims 22, 32, and 37, are well-understood, routine, and conventional elements that amount to no more than implementing the abstract idea with a computerized system. Further, the additional limitations of “receiving” data amount to no more than mere instructions to apply the exception using generic computer components. For the same reason these additional limitations are not sufficient to provide an inventive concept. The additional limitations of “receiving” data were considered as insignificant extra-solution activity in Step 2A - Prong 2. Re-evaluating here in Step 2B, they are also determined to be well-understood, routine, and conventional activity in the field. Similarly to OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network), and 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), the additional limitations of independent claims 22, 32, and 37, “receive” information over a network in a merely generic manner. The courts have recognized “receiving” data functions as well-understood, routine and conventional when claimed in a merely generic manner. Therefore, the additional limitations of independent claims 22, 32, and 37, are well-understood, routine, and conventional. Further, taken as combination, the additional elements/limitations add nothing more than what is present when the additional elements/limitations are considered individually. There is no indication that the combination provides any effect regarding the functioning of the computer or any improvement to another technology.
Conclusion of Step 2B Analysis: Therefore, independent claims 22, 32, and 37, are non-statutory under 35 USC § 101 in view of step 2B of the test.
Dependent Claims: Dependent claims 24-31 depend on independent claim 22; dependent claims 33-36 depend on independent claim 32; and dependent claims 38-41 depend on independent claim 37. The elements in dependent claims 24-31, 33-36, and 38-41, which set forth or describe the abstract idea, are:
“the first unique identifier is received from one of a client device or a risk manager device” (claim 24: further narrowing the recited abstract idea);
“the first unique identifier is associated with a first user; the second unique identifier is associated with a second user; and comparing the first unique identifier with the second unique identifier includes comparing the first user with the second user” (claims 25, 33, and 38: further narrowing the recited abstract idea);
“comparing the first unique identifier with the second unique identifier indicates a match when the first unique identifier and the second unique identifier are one of identical, substantially identical, or have a common prefix” (claims 26, 34, and 39: further narrowing the recited abstract idea);
“the first data associated with the first trading algorithm includes a first variable parameter having a first value; the second data associated with the second trading algorithm includes a second variable parameter having a second value; the first value and the second value are different; and comparing the first unique identifier with the second unique identifier indicates a match when the first unique identifier and the second unique identifier are one of identical, substantially identical, or have a common prefix” (claims 27, 35, and 40: further narrowing the recited abstract idea);
“the first unique identifier and the second data associated with the second trading algorithm are received together” (claim 28: further narrowing the recited abstract idea);
“the command to launch the second trading algorithm includes the second data associated with the second trading algorithm” (claim 29: further narrowing the recited abstract idea);
“the command to launch the second trading algorithm is received after comparing the first unique identifier with the second unique identifier” (claims 30, 36, and 41: further narrowing the recited abstract idea); and
“the computing device is one of an algorithm server or a client device” (claim 31: further narrowing the recited abstract idea).
Conclusion of Dependent Claims Analysis: Dependent claims 24-31, 33-36, and 38-41, do not correct the deficiencies of independent claims 22, 32, and 37, and they are, thus, rejected on the same basis.
Conclusion of the 35 USC § 101 Analysis: Therefore, claims 22 and 24-41 are rejected as directed to an abstract idea without “significantly more” under 35 USC § 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Driscoll (US 8,571,964 B2) discloses: “Methods and corresponding system are provided herewith that, in at least one embodiment, include the act or acts of determining a first instance in which a first request is received by an exchange; determining a second instance in which a second request is received by the exchange, in which the second request defines a request to cancel the first request; determining a third instance in which a third request is received by the exchange, in which the third request corresponds to the first request; calculating a first difference between the second instance and the third instances; storing the first difference to a data storage, in which the data storage comprises a plurality of differences; and analyzing the plurality of differences to generate comparative information.”
Tarighat (US 2012/0259762 A1) discloses: “[A] graphical trading algorithm platform configured to construct algorithms for execution in a cloud computing environment and related methods. In one embodiment, an exemplary method includes displaying a plurality of drag and droppable widgets within a computer generated graphical environment, each icon associated with a component of an event algorithm; processing a plurality of the widgets in a predetermined order when such widgets are arranged in a sequence corresponding to steps in the event algorithm; monitoring data feeds relating to an event of interest, wherein the event of interest is selected from the group comprising of stock changes, news events, market events, and regulatory events; and executing the action within a time period P when conditions defined by the event algorithm are satisfied.”
Chakrabarty, Bidisha, et al. "Trade classification algorithms for electronic communications network trades." Journal of Banking & Finance 31.12 (2007): 3806-3821.
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRPI H. KANERVO whose telephone number is 571-272-9818. The examiner can normally be reached on Monday – Friday, 10 am – 6 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Abhishek Vyas can be reached on 571-270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VIRPI H KANERVO/Primary Examiner, Art Unit 3691
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