DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the first inventor to file provisions of the AIA .
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 claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 8,321,323. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 8,560,431. Although the claims at issue are not identical, they are not patentably distinct from each other.
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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Analysis
Claim 1: Ineligible.
STEP 1:
The claim recites a process, as such, is a statutory category of invention (Step 1: YES). See MPEP 2106.03.
STEP 2A (PRONG 1):
The claim is analyzed to determine whether it is directed to a judicial exception. The claim recites
receiving, by a marketplace system, a number of first indications submitted by a plurality of participants, in which each of the first indications indicates a respective first order defining a respective first trade;
querying the plurality of participants regarding the first orders;
after receiving the number of first indications, receiving a second indication of a second order defining a second trade;
constraining a cancellation of the second order for a period of time;
determining, by the marketplace system, whether an order that matches the second order exists among a plurality of firm orders stored in an order database of the marketplace system;
when a match is not found in the order database or only partially fulfills a given first order, querying a plurality of order management systems associated with respective participants regarding the second order;
allowing the cancellation of the second order only after the period of time in response to an acceptance to enter into the second trade is not identified during the period of time; and
suppressing from evidence at least one of: (a) whether a given order management system was queried regarding the second order; (b) whether the acceptance to enter the second trade was not identified in an associated order management system; and (c) whether a trader associated with a given order management system rejected the offer.
Examiner submits that the foregoing bolded limitation(s) can be performed by organizing human activity or via mental process. Therefore, the claim limitations fall under the abstract idea category of “certain methods of organizing human activity” group in the form of fundamental economic practice and “mental processes” in the form of observation, evaluation, judgement or opinion. (Step 2A1-Yes). See MPEP 2106.04(a)-(c).
STEP 2A (PRONG 2):
Next, the claim is analyzed to determine if it is integrated into a practical application. Examiner submits that the foregoing italicized limitation(s) constitute the additional elements.
The claim recites additional elements of processors (order management systems including database). The processors and database in the steps are recited at a high level of generality, i.e., as generic processors and database performing generic computer functions. These elements are no more than mere instructions to apply the exception using generic computer components (see MPEP 2106.05(f)).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea (Step 2A2-No). See MPEP 2106.04(II)(A)(2) and MPEP 2106.04(d)(2)
STEP 2B:
Next, the claim is 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 in the claim amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component 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 claim does not amount to significantly more than the recited abstract idea (Step 2B: NO). The claim is not patent eligible. See MPEP 2106.05
Claims 7 and 14 recite corresponding system and computer-readable medium equivalents of claim 1. These claims are similarly rejected under the same rationale as claim 1, supra.
Claims 2 and 8 recite automatically executing a matching order when the order that matches the second order exits in the order database of the marketplace system.
This limitation further narrows the abstract idea, but is nonetheless part of the abstract idea identified in claim 1. The additional elements, as similarly analyzed in claim 1 above, do not integrate the abstract idea into a practical application. The claimed invention as a whole also does not amount to significantly more than the abstract idea. The claims are similarly rejected under the same rationale as claim 1, supra.
Claims 3 and 9 recite offering a related trade via other marketplaces when no match is found.
This limitation further narrows the abstract idea, but is nonetheless part of the abstract idea identified in claim 1. The additional elements, as similarly analyzed in claim 1 above, do not integrate the abstract idea into a practical application. The claimed invention as a whole also does not amount to significantly more than the abstract idea. The claims are similarly rejected under the same rationale as claim 1, supra.
Claims 4-5 and 10-11 recite denying and queuing any received cancellation request during a cancellation period; wherein the cancellation period is determined according to at least one of: a fixed time duration and a randomly selected duration within a configured range.
These limitations further narrow the abstract idea, but are nonetheless part of the abstract idea identified in claim 1. The additional elements, as similarly analyzed in claim 1 above, do not integrate the abstract idea into a practical application. The claimed invention as a whole also does not amount to significantly more than the abstract idea. The claims are similarly rejected under the same rationale as claim 1, supra.
Claims 6 and 12 recite storing, in a behavior database, information related to a history of trading behavior for the plurality of participants, and adjusting a behavioral rating associated with the plurality of participants based at least in part on the stored information.
These limitations further narrow the abstract idea, but are nonetheless part of the abstract idea identified in claim 1. The additional elements, as similarly analyzed in claim 1 above, do not integrate the abstract idea into a practical application. The claimed invention as a whole also does not amount to significantly more than the abstract idea. The claims are similarly rejected under the same rationale as claim 1, supra.
Additional 101 rejection for Claim 14:
Claim 14 recites “computer-readable storage medium” which does not exclude transitory “computer-readable storage medium.” The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim includes both transitory and non-transitory “computer-readable storage medium.” Transitory “computer-readable storage medium” including signal per se is directed to non-statutory subject matter.
Examiner notes that the Spec. at 0098 gives various examples of what computer-readable storage medium refers to, but did not expressly exclude transitory medium.
Amending the claim to recite “non-transitory computer-readable storage medium” will overcome this rejection.
Response to Arguments
Applicant's arguments filed 6/25/2026 have been fully considered but they are not persuasive.
A response double patenting rejection is held in abeyance until all other issues in the application are resolved.
The 102 rejection has been withdrawn.
Applicant argues that claimed invention is not directed to an abstract idea (judicial exception) because the invention provides a specific sequence of network steps to manage orders and located liquidity while preventing fraud. Applicant further argues that claim integrates the abstract idea into a practical application.
Examiner respectfully disagrees. Examiner herein adopts in its entirety, the PTAB reasoning in Appeal #2023-002772, in Patent Application serial No. 16/828,693; decided on 10/16/2024. Most of the issues raised were addressed in this decision.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The prior art of record teaches a variety of methods for constraining cancelation of orders. Frasier et al., US 2008/0077523, for example teaches constraining cancelation of all order for an aging period ([0101]).
Waelbroeck US 20110178914 teaches that orders that are matched cannot be canceled in [0077]. However, Lutnick et al., US 2005/0055305 (herein Lutnick) teaches, perhaps the closest form conditional constraining of cancelation to the present claim.
Lutnick describes a guarantee state wherein "the non-priority contraparties to the aggressor's order - i.e., the contraparties that are listed in the book at worse prices (or later times, or both worse prices and later times) than the touch price may be prevented from canceling their respective orders [...]." ([0044])
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 OLABODE AKINTOLA whose telephone number is (571)272-3629. The examiner can normally be reached on Mon-Fri 8:30a-6:00p.
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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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/OLABODE AKINTOLA/Primary Examiner, Art Unit 3691
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