DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claims 5 and 9 are duplicate claims.
Claims 14 and 18 are duplicate claims.
Applicant is advised that should claims 5 and 14 be found allowable, claims 9 and 18 will be objected to under 37 CFR 1.75 respectively, as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,236,482. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,023,971. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-84 of U.S. Patent No. 8,768,819. 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 1-19 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 series of acts. The claim is directed to at least a process, which 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, from a first server operated on behalf of a first trader, a communication including a first trade order and one or more selection criteria including a counterparty to whom the first trader is interested in transmitting the first trade order, the first trade order including at least one of a specified instrument, a specified quantity, and a specified price;
determining that a database of trade orders does not contain a second trade order matching the first trade order;
identifying a plurality of second traders satisfying the one or more selection criteria and trading history;
sending, to a plurality of second servers, each second server operated on behalf of one or more of the plurality of second traders, a query including at least one of the specified instrument, the specified quantity, and the specified price;
receiving, from one of the plurality of second servers operated on behalf of a one of the plurality of second traders, a positive response to the query and prioritize the positive response according to a predetermined order; and
facilitating execution of a trade between the first trader and the one of the plurality of second traders for the specified instrument at the specified price.
Examiner submits that the foregoing bolded limitation(s) constitute fundamental economic practice. Therefore, the bolded claim limitations fall under the abstract idea category of “certain methods of organizing human activity” group in the form of fundamental economic practice. (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 (including servers/user devices, database, memories). The processors in the steps are recited at a high level of generality, i.e., as generic processors 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. See MPEP 2106.05(d))
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 10 and 19 recite corresponding apparatus and non-transitory machine-readable medium equivalents of claim 1. These claims are similarly rejected under the same rationale as claim 1, supra.
Claims 2-4, 11-13 recite wherein the first server or at least one of the plurality of second servers is in communication with an order management system; wherein, if a first positive response received is sufficient to complete the trade, the first server executes the trade; wherein, if the first positive response received is not sufficient to complete the trade, the first server proceeds to a second positive response to execute the trade;
These limitations further narrow the abstract idea, but are nonetheless part of the abstract idea identified in claim 1. The additional elements are similarly as discussed in the claim 1 analysis, above. Finally, 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. The claims are similarly rejected under the same rationale as claim 1, supra.
Claims 5, 9, 14 and 18 recite wherein transmitting the query further comprises: formatting the query in a format readable by an order management 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 claim is similarly rejected under the same rationale as claim 1, supra.
Claims 6 and 15 recite wherein facilitating execution of the trade comprises transmitting trade parameters to a clearinghouse system such that the trade is executed in absence of further negotiation between the first trader and at least one of the plurality of second traders.
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 claim is similarly rejected under the same rationale as claim 1, supra.
Claims 7 and 16 recite generating a key associated with the query, the key indicating that a response from a particular second server is desired; and transmitting the key in association with the query, wherein the key indicates to at least one second server whether a response from that second server would be honored and prevents from sending a positive response when the key indicates that the at least one second server is not an intended recipient.
This limitation further narrows the abstract idea, but is nonetheless part of the abstract idea identified in claim 1. The key as recited herein is simply an equivalent of sending an invitation to only those persons or entities from which attendance is desired, or sending out a broadcast invitation with restriction based on a rule for qualified responses (e.g. being over 55 years old to qualify for some perks). The additional element, 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 claim is similarly rejected under the same rationale as claim 1, supra.
Claims 8 and 17 recite wherein the trading history for each second trader includes a positive response rate to previous queries, and wherein identifying the plurality of second traders comprises selecting only those second traders whose positive response rate satisfies a minimum threshold defined by the one or more selection criteria.
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 claim is similarly rejected under the same rationale as claim 1, supra.
Response to Arguments
Applicant's arguments filed 6/25/2026 have been fully considered but they are not persuasive.
Applicant argues that claim limitations address a technical problem in an electronic trading field as a standing order may not find a contra-side through conventional centralized order mechanism, as such does not recite an abstract idea. In particular, Applicant asserts that the claimed invention provides a specific sequence of network steps to locate liquidity and manage order distribution.
Examiner respectfully disagrees. As analyzed in the rejection above, the claimed limitations fall under the abstract idea category of “certain methods of organizing human activity” group in the form of fundamental economic practice. The solution provided in the claimed invention is an abstract solution to an abstract process. These additional elements are not a technological solution to a technological problem, or a solution to a problem introduced by the technology itself.
Applicant’s citation of DDR Holdings LLC (DDR) is non-persuasive because the claims at issue in DDR are readily distinguishable over the instant claims. In the case of DDR "E-Commerce Outsourcing System/Generating a Composite Web Page", the claims were directed to automatically generating and transmitting a web page in response to activation of a link using data identified with a source web page having certain visually perceptible elements. The Federal Circuit decided that although the patent claims at issue there involved conventional computers and the Internet, the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after “clicking” on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. “[T]he claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” In contrast, the instant claims provide a generically computer-implemented solution to a business-related or economic problem in a network environment, and are thus incomparable to the claims at issue in DDR.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Schlifstein et al. (USPAP 2007/0038548) teaches receiving, from a first server operated on behalf of a first trader, a communication including a first trade order and one or more selection criteria, the first trade order including at least one of a specified instrument, a specified quantity, and a specified price (abstract, [0002]-[0004], [0006]-[0007], [0021],[0038], figs. 1-4);
determining that a database of trade orders does not contain a second trade order matching the first trade order (abstract, [0032], [0045], figs. 3-4); identifying a plurality of second traders satisfying the selection criteria ([0066]).
Waelbroeck et al. (USPAP 2004/0034591) teaches sending, to a plurality of second servers, each second server operated on behalf of one or more of the plurality of second traders, a query including at least one of the specified instrument, the specified quantity, and the specified price;
receiving, from a one of the plurality of second servers operated on behalf of a one of the plurality of second traders, a positive response to the query; and facilitating execution of a trade between the first trader and the one of the plurality of second traders for the specified instrument at the specified price (abstract, [0006]-[0010], [0074], [0046]-[0047], [0063],[0069], [0071], [0104], figs. 1-6 & 22).
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 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 at 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
Prosecution Insights