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.
Claim 1 is 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.
Claim 1 is 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.
Claim 1 is 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 a number of first indications, in which each first indications indicates a respective first order, in which each first order defines a respective first trade;
querying a plurality of participants regarding the first orders;
after receiving the number of first indications, receiving a second indication of a second order, in which the second order defines a second trade;
constraining a cancellation of the second order for a period of time; querying the plurality of participants regarding the second order; and
allowing the cancellation of the second order after the period of time if an acceptance to enter into the second trade is not identified during the period of time.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations via manual human activity (the current claim does not even require a processor or machine to carry out these steps since it simply recites a “method” without a particular hardware structure). That is, the limitations 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. The claims do not recite any additional elements and so, do not integrate the abstract idea into a practical application. The claim is directed to the abstract idea (Step 2A2-No).
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 absence of additional claim elements to determine whether the claim amounts to significantly more than the abstract ideas renders this Step 2B moot.
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, with or without the alternative analysis above, 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.
For purposes of Compact Prosecution, Examiner will provide an additional alternative 35 USC § 101 analysis for each of the Step 2A-Prong 2 and Step 2B below with the assumption that the aforementioned steps are performed by a processor and/or other generic computer components.
Alternative STEP 2A (PRONG 2):
In the alternative, even if the “method” is implemented using some computer components such as processors and memories (which is not necessarily implied here), such components are recited at a high level of generality, i.e., as a generic computing system performing generic computer functions. These are no more than mere instructions to apply the exception using generic computer components. Accordingly, these components 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).
Alternative STEP 2B:
In the alternative, as discussed with respect to the alternative Step 2A (prong 2) above, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer components. The same analysis applies here in alternative Step 2B, i.e., mere instructions to apply an exception using generic computer components cannot integrate a judicial exception into a practical application at alternative Step 2A or provide an inventive concept in alternative 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, with or without the alternative analysis above, 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.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.
The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting directly or indirectly from an international application filed before November 29, 2000. Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-AIPA 35 U.S.C. 102(e)).
Claim 1 is rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Gilbert et al. (USPN 7,392,217).
Re claim 1: Gilbert teaches a method comprising:
receiving a number of first indications, in which each first indications indicates a respective first order, in which each first order defines a respective first trade;
querying a plurality of participants regarding the first orders;
after receiving the number of first indications, receiving a second indication of a second order, in which the second order defines a second trade;
constraining a cancellation of the second order for a period of time;
querying the plurality of participants regarding the second order; and
allowing the cancellation of the second order after the period of time if an acceptance to enter into the second trade is not identified during the period of time (Col. 4, lines 27- Col. 5, line 55; figs. 5-6, claim 1).
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])
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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/OLABODE AKINTOLA/Primary Examiner, Art Unit 3691