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 .
DETAILED ACTION
This Final office action is in response to the application filed on June 16, 2025 and the response filed on August 26, 2026.
Drawings
The drawings, amended figures 10 and 12, were received on August 26, 2026. These drawings are accepted.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “adaptive user interface”, “first user interface display”, “second user interface display”, “the second user interface display overlapping with and obscuring at least a portion of the first user interface display”, “the obscured portion of the first user interface display being unobscured thereby”, “displaying the subset of the set of available instruments at least in part in the portion of the first user interface display previously obscured by the second user interface display” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The amendments to specification paragraphs [0067] and [0069] were received on August 26, 2026. These are accepted.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “adaptive user interface”, “first user interface display”, “second user interface display”, “the second user interface display overlapping with and obscuring at least a portion of the first user interface display”, “the obscured portion of the first user interface display being unobscured thereby”, “displaying the subset of the set of available instruments at least in part in the portion of the first user interface display previously obscured by the second user interface display.”
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claim limitations “means for presenting,” “means for removing,” “means for receiving,” and “means for displaying” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The phrase, “means for” is absent from the specification and means is only generally linked without specifically setting forth any structure in paragraph [0182], “It should be appreciated that the types of computer devices deployed by traders and the methods and media by which they communicate with the exchange computer system 100 is implementation dependent and may vary and that not all of the depicted computer devices and/or means/media of communication may be used and that other computer devices and/or means/media of communications, now available or later developed may be used.” Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-20 are directed to a system, method, or product which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent method Claim 1 as the claim that represents the claimed invention for analysis and is similar to independent product Claim 11 and system Claim 20. Claim 1 recites the limitations of presenting a first user interface display of the adaptive user interface, the first user interface display including a request input field for designation of a selected product; presenting, automatically based on user interaction with the first user interface display, a second user interface display of the adaptive user interface, the second user interface display overlapping with and obscuring at least a portion of the first user interface display including at least a field dependent on designation of a selected strategy type, the second user interface display allowing designation of the selected strategy type from among a plurality of available strategy types for designation of the selected strategy type; removing the second user interface display after designation of the selected strategy type, the obscured portion of the first user interface display being unobscured thereby; receiving, from a strategy generator of an exchange computing system and based on the designation of a selected product and the selected strategy type via the first and second user interface displays, a subset of the set of available instruments being consistent with the selected strategy type; and displaying the subset of the set of available instruments at least in part in the portion of the first user interface display previously obscured by the second user interface display.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity. Developing and displaying a trading strategy recites a fundamental economic practice. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The exchange computer system in Claims 1, 11, and 20 is just applying generic computer components to the recited abstract limitations. The an adaptive user interface, first and second user interface display, and strategy generator in Claims 1, 11, and 20 appears to be just software. Claims 11 and 20 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
This judicial exception is not integrated into a practical application. In particular, the claims only recite exchange computer system in Claims 1, 11, and 20 and an adaptive user interface, first and second user interface display, and strategy generator in Claims 1, 11, and 20. The computer hardware is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. 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. Therefore, claims 1, 11, and 20 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See Applicant’s specification para. [0032, 0136, 0189-0191] about implementation using general purpose or special purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Even assuming there was a technical problem, the claims, as written, fail to recite the details of how a technical solution to the technical problem was accomplished. If there was a technical problem (e.g., existing technology was incapable of performing the claimed functions) then the claims should recite the details of the technical solution (e.g., how existing technology was improved to overcome this inability). However, the claims, as written, provide no such details and merely recite that the claimed functions (i.e., the outcome) are being performed. 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. Thus claims 1, 11, and 20 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 2-10 and 12-19 further define the abstract idea that is present in their respective independent claims 1, 11, and 20 and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above. Claims 2-4 and 12-14 further detail the strategy type; Claims 5-10 and 15-19 further detail the subset of available instruments without adding significantly more. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the claims 2-10 and 12-19 are directed to an abstract idea. Thus, the claims 1-20 are not patent-eligible.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,367,526. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter recited within the claim limitations are obvious variants of which are encompassed by the patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim1-21 of U.S. Patent No. 11,443,377. Although the claims at issue are not identical, they are not patentably distinct from each other because they could have been presented with the claims of the patent.
Response to Arguments
Applicant's arguments filed August 26, 2026 have been fully considered but they are not persuasive.
Applicant’s arguments regarding the 35 USC 112(b) rejection of record (Remarks, pages 9-10) are acknowledged, however they are not persuasive. Specifically, the claim limitations “means for presenting,” “means for removing,” “means for receiving,” and “means for displaying” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Applicant’s arguments that paragraphs [0271, 0273, 0283. 0288, & 0289] as well as Figures 6 and 7 provide support for, “various example structures” is not commensurate with the scope of the specification. The phrase, “means for” is absent from the specification and means is only generally linked without specifically setting forth any structure in paragraph [0182]. Therefore, while various structure is recited throughout the specification, there fails to be any recitations linking what applicant regards as the structure supporting the “means for” language of the instant claim.
Applicant’s arguments regarding the 35 USC 101 rejection of record, (Remarks, pages 10-21) are acknowledged, however they are not persuasive.
Applicant's arguments try to establish eligibility through Office Examples (Remarks, pages 10-11, 16-19), are not persuasive. Specifically, the Office Examples are meant to be for training purposes and do not have the force of legal precedent. Regarding example 23 specifically, the graphical user interface in question managed the interaction between a computer system and a user through graphical elements such as windows on a display. The inventor improved upon previous GUIs by dynamically relocating obscured textual information of an underlying window to become automatically viewable to a user. Thus the claim was determined to be necessarily rooted in computer technology to overcome a problem specifically arising in graphical user interfaces. The current claims do not purport to have a technological solution to a technological problem but rather 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.
Applicant's arguments try to establish eligibility through Office Examples (Remarks, pages 10-11, 16-19), are not persuasive. Specifically, the Office Examples are meant to be for training purposes and do not have the force of legal precedent. Further, Example 37 is directed towards relocation of icons on a graphical user interface based on user usage. Specifically, Claim 2 of Example 37 is found to be statutory under Step 2A – Prong 1 because, “The claim does not recite any of the judicial exceptions enumerated in the 2019 PEG. For instance, the claim does not recite a mental process because the claim, under its broadest reasonable interpretation, does not cover performance in the mind but for the recitation of generic computer components. For example, the “determining step” now requires action by a processor that cannot be practically applied in the mind. In particular, the claimed step of determining the amount of use of each icon by tracking how much memory has been allocated to each application associated with each icon over a predetermined period of time is not practically performed in the human mind, at least because it requires a processor accessing computer memory indicative of application usage. Further, the claim does not recite any method of organizing human activity, such as a fundamental economic concept or managing interactions between people. Finally, the claim does not recite a mathematical relationship, formula, or calculation. Thus, the claim is eligible because it does not recite a judicial exception.” However, the current claims do not perform any steps of tracking the amount of memory allocated towards each clearinghouse process nor do they record the amount of processor power used to perform each element of the claim. Therefore, Example 37 does not apply.
Applicant’s arguments that the claims are not abstract since they recite specific a detailed explanation of how selected strategy is specified citing Finjan, Inc. (Remarks, pages 12-13), are acknowledged, however they are not found persuasive. In Finjan, Inc. the Court found that the claimed invention was an improvement to computer technology, notably, behavior-based virus scans "can analyze a downloadable's code and determine whether it performs potentially dangerous or unwanted operations—such as renaming or deleting files." Thus, these scans can detect previously unknown viruses as well as infected code that has been purposely obfuscated or scrambled to avoid traditional virus scan technology. The Court compared claim 1 favorably to those of Enfish LLC v. Microsoft Corp., in that the claim recites a method that "enables a computer security system to do things it could not do before." Therefore, the Court found that the claim is "directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large." The current case is different since it is not improving the computer system to perform things that it could not previously do before, e.g. improving the computer as a tool, but rather improving the abstract idea to use the computer as tools.
Applicant’s arguments that the claims are analogous to those found statutory in Enfish and TLI Communications, (Remarks, pages 12-14), are not found persuasive. In Enfish, the court found that the inventive concept was a new type of data structure called self-referential table to improve the storing and retrieving data in memory. The court described this as an improvement in the functioning of a computer. However, the current claims do not purport to creating or improving any data structure or a computer. Hence, Enfish does not apply.
Applicant’s arguments that the claims are not abstract since they recite a particular manner of effecting the recovery of refundable taxes and specific improvements over prior method of handling refundable tax recovery citing Core Wireless Licensing (Remarks, pages 14-15), are not persuasive. Specifically, in Core Wireless the court found that, “Although the generic idea of summarizing information certainly existed prior to the invention, these claims are directed to a particular manner of summarizing and presenting information in electronic devices. … These limitations disclose a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer. Like the improved systems claimed in Enfish, Thales, Visual Memory, and Finjan, these claims recite a specific improvement over prior systems, resulting in an improved user interface for electronic devices.” However the present case is different: 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. Elec. Power, 2016 WL4073318, at *4.
Applicant’s arguments that the claims are analogous to those found statutory in Bascom, (Remarks, pages 15-16), are not found persuasive. In Bascom, the court held that the inventive concept consisted of installing a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. However, the current claims to do not perform any such filtering action (or its equivalent) that is location specific and user specific. Further, the claims fail to set forth a specific combination of elements in specific locations but rather disclose known components functioning in their known capacity in their known locations. Hence, Bascom does not apply here.
Applicant’s arguments that the examiner has not met the burden of proof in accordance with the Berkheimer memo (Remarks, pages 18-21), are acknowledged. However, the Berkheimer memo sets forth that an examiner’s burden is met with, “A citation to an express statement in the prosecution or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional elements(s). A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 USC 112(a)” (Berkheimer Memo, page 3). To this end paragraphs [0032, 0136, 0189-0191] have been cited in the 35 USC 101 rejection, and therefore the examiner’s burden of proof has been met. Additionally, applicant sets forth in those paragraphs that generic components and “computer system 200 can include a set of instructions that can be executed to cause the computer system 200 to perform any one or more of the methods or computer based functions disclosed herein. The computer system 200 may operate as a standalone device or may be connected, e.g., using a network, to other computer systems or peripheral devices. Any of the components discussed herein, such as processor 202, may be a computer system 200 or a component in the computer system 200.” (paragraph [0189]) and, “while a single computer system 200 is illustrated, the term “system” shall also be taken to include any collection of systems or sub-systems that individually or jointly execute a set, or multiple sets, of instructions to perform one or more computer functions” (paragraph [0190]). Therefore, the claims are not found to include significantly more and the rejection is maintained.
Conclusion
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 LINDSAY M MAGUIRE whose telephone number is (571)272-6039. The examiner can normally be reached Monday to Friday 8:30 to 5:00.
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Lindsay Maguire
9/4/26
/LINDSAY M MAGUIRE/Primary Examiner, Art Unit 3619