DETAILED ACTION
This Office action is in reply to application no. 19/209,916, filed 16 May 2025. Claim 1 is pending and is considered below.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,453,130. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are broader, but otherwise patentably indistinct, from the corresponding claim of the reference patent. The reference patent is directed to a system while the present claim is directed to an apparatus, but each is simply labeling of a computer with no inherent distinction between them. Each includes a data bus, and that it is called a “physical data bus” in the reference patent is to no avail here, because any data bus, to be useful, requires physical components, whether these are claimed or not; again, this makes the present claim broader by comparison.
The claim of the reference patent requires two processors where the present claim does not, making the present claim broader in that respect. The process performed is identical except that certain details are lacking in the present claim compared to that of the reference patent.
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 non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because it includes embodiments directed entirely to software per se. The claim does not explicitly include any hardware, and the specification allows, ¶ 62, for a “software only” implementation. This is not within any statutory category because software per se is a list of instructions, which is neither a process, machine, composition of matter nor a manufacture.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) two data gathering steps (receiving an indication of an order and receiving an indication of an occurrence of an event), making two determinations regarding a trade, each in no particular manner, executing a trade in no particular manner, and sending information to someone or something.
First, managing trades is a fundamental business practice, one of the “certain methods of organizing human activity” deemed abstract. Second, in the absence of computers, the process can be performed mentally and with paper records.
A human trader, before there was such a thing as a computer, regularly received information about desired trades, managed them with buy and sell orders, could tell e.g. by overhearing conversations or by reading a newspaper of events possibly relevant to the trade, and could make paper adjustments as necessary. None of this presents any practical difficulty, and none requires any technology beyond the use of paper records.
This judicial exception is not integrated into a practical application because aside from the bare inclusion of a generic computer, discussed below, nothing is done beyond what was set forth above, which does not go beyond generally linking the abstract idea to the technological environment of generic, networked computers. See MPEP § 2106.05(h).
As the claim only manipulates data pertaining to a financial transaction, it does not improve the “functioning of a computer” or of “any other technology or technical field”. See MPEP § 2106.05(a). It does not apply the abstract idea “with, or by use of a particular machine”, MPEP § 2106.05(b), as the below-cited Guidance is clear that a generic computer is not the particular machine envisioned.
It does not effect a “transformation or reduction of a particular article to a different state or thing”, MPEP § 2106.05(c). First, such data, being intangible, are not a particular article at all. Second, the claimed manipulation is neither transformative nor reductive; as the courts have pointed out, in the end, data are still data.
It does not apply the abstract idea “in some other meaningful way beyond generally linking [it] to a particular technological environment”, MPEP § 2106.05(e), as the lack of technical and algorithmic detail in the claim is so as not to go beyond such a general linkage.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional claim limitations, considered individually and as an ordered combination, are insufficient to elevate an otherwise-ineligible claim.
The claim includes named software subcomponents; the specification allows for, but does not require, processors, computer programs and the like, but is explicit, ¶ 59, that nothing more than “general purpose computers” are required. Even if present in the claims, they encompass a generic computer, which only performs generic computer functions of nondescriptly manipulating data and sharing data with persons and/or other devices. Generic computers performing generic computer functions, without an inventive concept, do not amount to significantly more than the abstract idea.
The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. The claim limitations when considered in ordered combination – at most, a generic computer performing a chronological sequence of abstract steps – do nothing more than when they are analyzed individually.
The claim is not patent eligible. For further guidance please see MPEP § 2106.03 – 2106.07(c) (formerly referred to as the “2019 Revised Patent Subject Matter Eligibility Guidance”, 84 Fed. Reg. 50, 55 (7 January 2019, revised October 2019)).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Wilson et al. (U.S. Publication No. 2008/0270318) in view of Abramowicz (U.S. Publication No. 2008/0288326).
In-line citations are to Wilson.
With regard to Claim 1:
Wilson teaches: An apparatus comprising:
a matching engine, in which the matching engine is configured to:
receive indications of orders, in which each order defines a respective side of a trade for a financial instrument, [Sheet 6, Fig. 5; information about a trade is received; 0037; bids are stored in a priority queue to execute buy and sell orders of a share for which the bid and offer have been matched and approved]
add each of the orders to a respective one of a queue… for the financial instrument, [id.]
determine that at least a first order in the queue… and a second order… in the queue… match, [id.] and
execute a trade that fulfill the first order and the second order; [id.]
an event engine configured to:
receive an indication of an occurrence of an event, [Sheet 6, Fig. 5; it receives share-purchase information and determines whether all IPO shares have been sold]
determine that an adjustment to an order is conditioned on the occurrence, in which the order defines a side of a trade for the financial instrument; [id.; upon making the determination, shares are traded “according to market”, and if not, shares continue to be offered per the IPO] and
in response to the determination, transmit an indication to adjust the order to the matching engine through a data bus; [0037; transaction details are transmitted] and
the data bus, in which the data bus is configured to allow communication of the indication to add the order from the event engine to the matching engine. [0063; the elements are coupled via a data bus; such a bus allows for communication of any data without regard to its interpretation, as would have been known to those of ordinary skill in the art at the relevant time]
Wilson does not explicitly teach a queue of buy orders and a queue of sell orders, but it is known in the art. Abramowicz teaches a commercial transaction system [title] that can manage information about trades. [0118] It provides for trades making use of a “bid que” of “offers to purchase” and an “ask queue” of “offers to sell”, arranged in order of attractiveness. [0119] Abramowicz and Wilson are analogous art as each is directed to electronic means for managing buy and sell orders using queues.
It would have been obvious to one of ordinary skill in the art at the time of the invention to combine the teaching of Abramowicz with that of Wilson in order to present a most attractive option first, as taught by Abramowicz; further, it is simply a substitution of one known part for another with predictable results, simply storing buy and sell orders in separate queues as taught by Abramowicz rather than a single queue as taught by Wilson; the substitution produces no new and unexpected result.
Referring to software subcomponents by name, such as “matching engine” and “event engine”, is considered mere labeling and given no patentable weight. The content of information that is merely transmitted or displayed and then not further processed, such as “an indication to adjust the order to the matching engine”, consist entirely of nonfunctional printed matter which is considered but given no patentable weight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached at (303) 297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT C ANDERSON/Primary Examiner, Art Unit 3694
