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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/11/2026 has been entered.
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 1-23 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.
Claims 1, 12, and 23 recite the limitation “the received electronic order messages” in line 8. There is insufficient antecedent basis for this limitation in the claim.
Claims 1, 12, and 23 recite the limitation “an electronic order message” in line 32. The claims fail to particularly point out and distinctly claim how the “electronic order message” is any different than previously recited “electronic order messages.” For examination purposes, examiner interprets “electronic order message” as part of the same electronic order messages previously recited.
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 1-23 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 system, 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:
Claims 1, 12, and 23 recites a computer implemented method comprising: receiving, by a processor during a period of time of a set of periods of time, from one or more of a plurality of parties trading on the electronic trading system, electronic order messages for trading any of a plurality of instruments; storing, by the processor prior to submission to the electronic trading system, the received electronic order message in a memory coupled with the processor, each received electronic order message being collectively stored together with other stored electronic order messages for trading the same instrument previously received during the period of time from the same party, the received electronic order messages from different parties for different instruments being collectively stored separately, and preventing submission thereof to the electronic trading system until an end of the period of time; and upon the end of the period of time, enabling, by the processor, each of the stored received electronic order messages received during the period of time, together with any stored received electronic order messages received during a prior period of time enabled for submission but which have not yet been submitted to the electronic trading system, for submission to the electronic trading system for matching thereby, regardless of whether or not all of the stored received electronic order messages received during a prior period of time have been submitted to the electronic trading system; and submitting, by the processor, each of the stored received electronic order messages enabled therefore to the electronic trading system, by selecting in turn one party after another, for each instrument of the plurality of instruments for which there are stored received electronic order messages made available for submission and for each party from which those stored received electronic order messages were received, one of the stored received electronic order messages received from that party and transmitting the selected electronic order message to the electronic trading system from the memory, until all of the stored received electronic order messages that have been enabled for submission have been transmitted to the electronic trading system, such that submission of an electronic order message from one party during a time period will not be delayed by more than one electronic order message received during a prior time period from each other party which are still awaiting submission. The claims recites abstract limitations such as “receiving.. electronic order messages from one or more parties,” “storing…messages in a memory,” “preventing submission..until an end of a period,” “enabling…stored messages received during a time period with stored messages received during a period of time enabled for submission but have not been submitted…regardless of whether or not all of the stored messages received during a priod period of time have been submitted,” “submitting stored messages, by selecting in turn one party after another, one of the stored messages received,” and “transmitting the message to the electronic trading system, until all of the messages that have been enabled for submission have been transmitted…, such that submission of an message from one party during a time period will not be delayed by more than one…message received during a prior time period from each other party which are still awaiting submission.” These limitations recite how trading should work, and not how a computer works better. These limitations, as drafted, under its broadest reasonable interpretation, covers performance via certain methods of organizing human activity, but for the recitation of generic computer components. Under human activity, the limitations are fundamental economic practice. More specifically, under fundamental economic practice, the claims recite trading. The claims are also commercial interactions, such as business relations, as well as managing interactions between people, such as following instructions. 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 processor, latency leveling processor, memory, computer, non-transitory computer readable medium, executable instructions, electronic trading system, electronic order messages, and a system. The additional elements of a processor, latency leveling processor, memory, computer, non-transitory computer readable medium, executable instructions, electronic trading system, electronic order messages, and a system, are just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)). 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. 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 (processor, latency leveling processor, memory, computer, non-transitory computer readable medium, executable instructions, electronic trading system, electronic order messages, and a system) in the claims 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 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 wherein each of the set of periods of time commences upon the end of another of the set of consecutive periods of time. These limitations are also part of the abstract idea identified in claim 1, and are similarly rejected under the same rationale as claim 1, supra.
Claim 3 recites wherein the electronic order messages for trading a particular instrument of the plurality of instruments received from the same party are stored together in an order of receipt therefrom in the memory. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of the memory 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. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 4 recites wherein the submitting further comprises selecting, for each of the plurality of instruments having stored received electronic order messages therefore enabled for submission, in turn from each party, a stored received electronic order message for the instrument enabled for submission, wherein when there are no stored received electronic order messages for that instrument received prior to commencement of the period of time waiting to be submitted to the electronic trading system, selecting, at random, a stored received electronic order message for the instrument enabled for submission, and selecting in turn from each party thereafter. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of the electronic order message and electronic trading system 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. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 5 recites wherein the stored received electronic order message for one party is selected for transmission randomly from among all of the stored received electronic order message for the one party. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of electronic order message 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. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 6 recites wherein the stored received electronic order message for one party is selected for transmission based on order of receipt from among all of the stored received electronic order message for the one party. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of electronic order message 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. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 7 recites wherein each party of the plurality of parties is coupled with the electronic trading system via an electronic communications network characterized by a latency different from a latency characterizing the electronic communications network which couples another party of the plurality of parties with the electronic trading system, the difference resulting in an electronic order message of one party and another electronic order message of another party, both responsive to the same event, being received by the electronic trading system at different times within the same duration of the first plurality of durations. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of electronic trading system, electronic communications network and electronic order message 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. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 8 recites wherein the memory comprises a plurality of queues, the storing further comprising selecting one of the plurality of queues into which to store the received electronic order message. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of memory and electronic order message 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. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 9 recites wherein the selecting comprises selecting an empty queue of the plurality of queues when the received electronic order messages is the first electronic order message for the first instrument received from a party of the plurality of parties during the duration. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of electronic order message and first electronic order message 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. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 10 recites wherein the electronic order messages received from the same party are further stored together in the same queue in the memory. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of electronic order message and memory 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. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 11 recites wherein the duration of each period of time of the set of periods of time is random. 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 13 recites wherein each of the set of periods of time commences upon the end of another of the set of consecutive periods of time. These limitations are also part of the abstract idea identified in claim 12, and is similarly rejected under the same rationale as claim 12, supra.
Claim 14 recites wherein the electronic order messages for trading a particular instrument of the plurality of instruments received from the same party are stored together in an order of receipt therefrom in the memory. These limitations are also part of the abstract idea identified in claim 12, and the additional elements of the memory 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 12 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 12, supra.
Claim 15 recites select, for each of the plurality of instruments having stored received electronic order messages therefore enabled for submission, in turn from each party, a stored received electronic order message for the instrument made available for submission, wherein when there are no stored received electronic order messages for that instrument received prior to commencement of the period of time waiting to be submitted to the electronic trading system, selecting, at random, a stored received electronic order message for the instrument enabled for submission, and selecting in turn from each party thereafter. These limitations are also part of the abstract idea identified in claim 12, and the additional elements of the electronic order messages, and electronic trading system 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 12 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 12, supra.
Claim 16 recites wherein the stored received electronic order message for one party is selected for transmission randomly from among all of the stored received electronic order message for the one party. These limitations are also part of the abstract idea identified in claim 12, and the additional elements of the electronic order message 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 12 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 12, supra.
Claim 17 recites wherein the stored received electronic order message for one party is selected for transmission based on order of receipt from among all of the stored received electronic order message for the one party. These limitations are also part of the abstract idea identified in claim 12, and the additional elements of the electronic order message 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 12 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 12, supra.
Claim 18 recites wherein each party of the plurality of parties is coupled with the electronic trading system via an electronic communications network characterized by a latency different from a latency characterizing the electronic communications network which couples another party of the plurality of parties with the electronic trading system, the difference resulting in an electronic order message of one party and another electronic order message of another party, both responsive to the same event, being received by the electronic trading system at different times within the same duration of the first plurality of durations. These limitations are also part of the abstract idea identified in claim 12, and the additional elements of the electronic trading system, electronic order message, and electronic communications network 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 12 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 12, supra.
Claim 19 recites select one of the plurality of queues into which to store the received electronic order message. These limitations are also part of the abstract idea identified in claim 12, and the additional elements of the electronic order message 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 12 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 12, supra.
Claim 20 recites select an empty queue of the plurality of queues when the received electronic order messages is the first electronic order message for the first instrument received from a party of the plurality of parties during the duration. These limitations are also part of the abstract idea identified in claim 12, and the additional elements of the electronic order message and first electronic order message 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 12 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 12, supra.
Claim 21 recites wherein the electronic order messages received from the same party are further stored together in the same queue in the memory. These limitations are also part of the abstract idea identified in claim 12, and the additional elements of the memory and electronic order message 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 12 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 12, supra.
Claim 22 recites wherein the duration of each period of time of the set of periods of time is random. These limitations are also part of the abstract idea identified in claim 12, and is similarly rejected under the same rationale as claim 12, supra.
Allowable Subject Matter
Claims 7 and 18 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 101; set forth in this Office action. The following is a statement of reasons for the indication of allowable subject matter: Claim 7 and 18 recite “wherein each party of the plurality of parties is coupled with the electronic trading system via an electronic communications network characterized by a latency different from a latency characterizing the electronic communications network which couples another party of the plurality of parties with the electronic trading system, the difference resulting in an electronic order message of one party and another electronic order message of another party, both responsive to the same event, being received by the electronic trading system at different times within the same duration of the first plurality of durations,” and is not found in the prior art. However, the claims still do not overcome the 101.
Response to Arguments
Applicant's arguments filed 9/11/2026 have been fully considered but they are not persuasive.
Applicant argues that the currently recited claims are not abstract (Applicant arguments, pgs. 10-13; 18-21). Examiner disagrees. The claims recites abstract limitations such as “receiving.. electronic order messages from one or more parties,” “storing…messages in a memory,” “preventing submission..until an end of a period,” “enabling…stored messages received during a time period with stored messages received during a period of time enabled for submission but have not been submitted…regardless of whether or not all of the stored messages received during a priod period of time have been submitted,” “submitting stored messages, by selecting in turn one party after another, one of the stored messages received,” and “transmitting the message to the electronic trading system, until all of the messages that have been enabled for submission have been transmitted…, such that submission of an message from one party during a time period will not be delayed by more than one…message received during a prior time period from each other party which are still awaiting submission.” These limitations recite how trading should work, and not how a computer works better. These limitations, as drafted, under its broadest reasonable interpretation, covers performance via certain methods of organizing human activity, but for the recitation of generic computer components. Under human activity, the limitations are fundamental economic practice. More specifically, under fundamental economic practice, the claims recite trading. The claims are also commercial interactions, such as business relations, as well as managing interactions between people, such as following instructions. 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.
Applicant also argues that the currently recited claim limitations are a practical application (Pgs. 13-15; 21-23). Examiner disagrees. The focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. The claims here are not directed to a specific improvement to computer functionality. Rather, they are directed to the use of conventional or generic technology in a well-known environment, without any claim that the invention reflects an inventive solution to any computer specific problem. More specifically, the claims are limited to a business solution to a technical problem, not a technical solution to a technical problem.
In Enfish, the court evaluated the patent eligibility of claims related to a self-referential database. Id. The court concluded the claims were not directed to an abstract idea, but rather an improvement to computer functionality. In contrast, the current claims are not directed to an improvement to computer functionality and instead merely recite the computer elements at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component.
Similarly, in DDR Holdings LLC v. Hotels.com, LP, the claims were found eligible as they reflected improvements to the functioning of a computer, i.e. a modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage. In contrast, the current claims do not contain limitations reflective of an improvement to computer functionality and instead merely recite the computer elements at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component.
In Finjan, the claims to a “behavior-based virus scan” were found to provide greater computer security and were thus directed to a patent-eligible improvement in computer functionality. In contrast, the current claims do not contain limitations reflective of an improvement to computer functionality and instead merely recite the computer elements at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component.
Applicant's argument that the rejection lacks Berkheimer evidence is not persuasive (Applicant arguments pgs. 15-17; 23-26). Such evidence is only required to support a conclusion that an additional element is well-understood, routine, conventional activity. Here, the rejection does not assert well-understood, routine, conventional activity and instead identifies the additional elements drawn to the database as adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. MPEP 2106.05(f). Because the evaluation in Step 2B is not a weighing test, it is not important how the elements are characterized or how many considerations apply from the list of considerations set forth in MPEP 2106.05. It is important to evaluate the significance of the additional elements relative to the invention, and to keep in mind the ultimate question of whether the additional elements encompass an inventive concept.
Further, unlike Annakov, where the claims recited a complex series of interoperating steps that specifically controlled and coordinated hardware elements in a technical system, the present claims merely receive, store and sequentially transmit generic electronic order messages using a conventional processor and memory. They contain no hardware-control interactions, no specialized device orchestration, and no technological improvement beyond applying an abstract order-allocation scheme on ordinary computing components.
Conclusion
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/BRANDON M DUCK/Examiner, Art Unit 3693
