DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This application is a CON of 17/853,225 06/29/2022 PAT 12340416
17/853,225 is a CON of 14/486,585 09/15/2014 PAT 11410231
14/486,585 is a CON of 12/560,185 09/15/2009 PAT 8868460
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, 2, 4, 8-10, 12, 16, and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-24 of U.S. Patent No. 8,868,460. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims essentially describe the same invention as the parent claims with slightly different wording. The parent claims teach every limitation of the present claims.
Claim 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 11,410,231. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims essentially describe the same invention as the parent claims with slightly different wording. The parent claims teach every limitation of the present claims.
Claim matching between the present claims and parent claims is as follows:
Present Claims
PAT 12,340,416
PAT 11,410,231
PAT 8,868,460
1
1
1
1
2
18
9
1
3
18
18
22
4
4
4
2-6
5
3
3
6
5
5
7
6
6
8
7
7
9
8
8
7
10
9
9
11
11
18
9
11
12
18
18
22
13
12
12
12-16
14
11
11
15
13
13
16
14
14
17
15
15
18
16
16
17
19
9
9
24
20
9
9
11
Prior Art Cited but Not Applied
The closest prior arts the examiner has been able to find is US Patent 7,039,610 to Morano et al. (hereinafter Morano) and PUB. No.: US 2010/0174633 to Milne et al. (hereinafter Milne). While Morano is similar to the instant application in many respects, there are clear patentable distinctions. Morano teaches a computer trading system for futures markets that automatically creates “implied” spread markets from orders already in the system. Traders can enter ordinary futures orders, calendar spread orders, and inter-commodity spread orders. The system looks for combinations of these orders that share a common leg and an offsetting leg. When it finds a valid combination, it generates an implied market that can be traded even though the trader did not enter that exact spread directly. The invention goes beyond simpler prior systems by allowing implied spreads to be built from multiple spread orders, not just from outright futures orders. It also allows the system to create non-tradable “bridge” implied spreads internally. Those bridge spreads are then combined with other real or implied orders to create additional tradable implied markets. The goal is to expose more trading opportunities, improve matching, and increase the chance that real orders will execute. The system treats real and implied markets similarly for matching and priority purposes.
Milne describes software for finding “implied” trading orders in an electronic exchange. In simple terms, the system takes a set of real orders that cannot trade directly with each other, and uses them to calculate other orders that can be inferred from combinations of those real orders. It treats orders as paths in a graph, so an implied order is found by searching for a best path between two nodes. The system also identifies market data for those implied orders, such as price, volume, and whether the order is a buy or sell. When a new order arrives, the system checks whether it can trade with any real or implied order already in the system. If it can trade, the existing resting orders are updated and new implied orders are recalculated from what remains. The application emphasizes doing these calculations quickly by splitting work across multiple threads. It also prioritizes which implied markets to publish by using filters based on trading usefulness, such as bid/ask spread and time since last trade. The spec says this helps exchanges publish the most valuable implied markets first and reduce unnecessary computation.
However, the combination of Morano and Milne fails to teaches “dynamically implementing, by the gatekeeper processor, an additional parallely operating matching engine processor for each generated speculative order which performs at least a portion of calculations involved with determining that the first real order is at least partially satisfied by the generated speculative order to execute a trade therebetween, as if the generated speculative order had been received, and generates one or more outgoing electronic messages indicative thereof; preventing, by the gatekeeper processor, each of the calculations and generated one or more outgoing electronic messages from being utilized to execute a trade until another real order corresponding to one of the one or more speculative orders is received by the gatekeeper processor; and wherein upon receipt, by the gatekeeper processor subsequent to at least the generating of the one of the one or more speculative orders, of data indicative of a second real order corresponding to one of the one or more speculative orders, bypassing the matching engine processor and executing, by the gatekeeper processor, a trade based on the first and second real orders utilizing the previously performed calculations and the previously generated one or more outgoing electronic messages from the additional matching engine processor corresponding to the one of the one or more speculative orders”, as recited in the independent claims.
Therefore, no prior art rejection is cited in this Office Action.
Conclusion
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine M Behncke can be reached at (571) 272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAO FU/Primary Examiner, Art Unit 3695
JULY-2026
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