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 .
Priority
Acknowledgement is made this application is CON of application 18/512,232 filed on 11/17/2023 (PAT 12,373,889) which claims benefit of provisional application 63/384,310 filed on 11/18/2022.
Examiner Comments
Claims 1-20 for examination on 07/25/2025. Examiner discussed further amendment to the claims to place instant application into condition of allowance on 07/02/2026 and an interview summary of which is attached herewith.
Double Patenting
The non-statutory 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 non-statutory obviousness-type 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); and 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 a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
1. Claims 1-20 of instant application are rejected on the ground of non-statutory double patenting over claims 1-20 of U. S. Patent No. 12,373,889 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent ‘889 and the application are claiming common subject matter of claims 1,9 and 14 of instant application and claims 1, 9 and 15 of patent ‘908, as follows:
“a tracking module configured to calculate a delta of a rate of exchange between two assets recorded within an order book; a matrix module configured to generate a first graphical user interface (GUI) comprising a first plurality of assets and configured to display the delta of a rate of exchange between two assets of the first plurality of assets; a block module configured to generate one or more blocks, each block representative of an asset of the first plurality of assets; and a trade module configured to receive, from a user, a single trade request between a first asset and a second asset; wherein the trade module is configured to calculate a plurality of trade routes between the first asset and the second asset through one or more "medium" assets; wherein the trade module is configured to determine a trade route resulting in a greatest number of second assets; and wherein each block of the one or more blocks is configured to merge with another block to form a parent block, wherein a value of the parent block is calculated based upon a value and origination time of each block within the parent block, wherein each block within the parent block is independently tracked after the parent block is formed”.
The instant application do not recite limitation of patent ‘889 as” an exchange module configured to retrieve, through one or more application programming interfaces (API), holdings information associated with a user from one of a brokerage, an exchange, or a brokerage and an exchange; and wherein the trade module is configured to request a trade between the first asset and the one or more “medium” assets and also between the one or more “medium” assets and the second asset in order to execute the single trade request using the trade route resulting in the greatest number of second assets.”
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.
3. 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “tracking module configure to; matrix module configured to; block module configured to and trade module configured to in independent claims 1 and 9 and dependent claims 6, 8 and 12. The specification supports that these modules are executed by one or more processors (see Fig.1, specification: paragraph [0047]).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
1. 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.
2. Claims 1-13 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 pre-AIA the applicant regards as the invention.
3. Claims 1-13 are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 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 pre-AIA the applicant regards as the invention.
Claim limitation “…tracking module configure to…; matrix module configured to…; block module configured to…. and trade module configured to…..” in independent claims 1 and 9 and dependent claims 6, 8 and 12.” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description did 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 (see Fig.1, specification: paragraph [0047]). Simply reciting “software or module” without providing some details about the means to accomplish the function is not enough. See Aristocrat Techs. Austl. Pty v. Int’l Game Tech., __ F.3d __, 2008.
Examiner Note: Applicant can obviate the pending rejection adding claim language “executed by the processor” after each module recited in the system claims.
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.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ____ (2014).
In the instant case, Claims 1-20 are directed to system and method for to generating a first graphical user interface (GUI) comprising a first plurality of assets and configured to display the delta of a rate of exchange between two assets of the first plurality of assets and value of the parent block representing the is calculated based upon a value and origination time of each block within the parent block, wherein each block within the parent block is independently tracked after the parent block is formed. The claims 1-20 are analyzed to see if claims are statutory category of invention, recites judicial exception and the claims are further analyzed to see if the claims are integrated into practical application if the judicial exception is recited and the claims provides an inventive as per 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) and October 2019 Update: Subject Matter Eligibility as set forth below:
Analysis:
Step 1: Statutory Category? This part of the eligibility analysis evaluates whether the claim falls within any statutory category. MPEP 106.03.
Claims 1 and 9 is system comprising at least a memory device and a processor, for tracking and trading assets. The claimed system is therefore directed to a statutory category, i.e., a machine (a combination of device) (Step 1: NO).
Claim 14 is directed to a process i.e., a series of method steps or acts, of tracking and trading which is a statutory categories of invention (Step 1: YES)
Step 2A - Prong 1: Judicial Exception Recited? This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04(II) and the October 2019 Update, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim. There are no nature- based product limitations in this claim, and thus the markedly different characteristics analysis is not performed. However, the claim still must be reviewed to determine if it recites any other type of judicial exception.
Claims 1and 9 are similar and they are then analyzed to determine whether it is directed to a judicial exception. The claim recite plurality of steps of calculate a delta of a rate of exchange between two assets recorded within an order book, generate one or more blocks each block representative of an asset of the first plurality of assets, receive a single trade request between a first asset and a second asset, calculate a plurality of trade routes between the first asset and the second asset through one or more "medium" assets and determine a trade route resulting in a greatest number of second assets.”
The limitations of calculate a delta of a rate of exchange, generate a first graphical user interface (GUI) comprising a first plurality of assets and configured to display the delta of a rate of exchange between two assets of the first plurality of assets, receive a single trade request between a first asset and a second asset, calculate a plurality of trade routes between the first asset and the second asset and determine a trade route resulting in a greatest number of second assets, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind similar to the abstract idea of calculating the excess payment is similar to updating alarm limits using a mathematical formula (Parker v. Flook) but for the recitation of generic computer components. The recitation of a processor in this claim does not negate the mathematical nature of these limitations because the claim here merely uses the processor as a tool to perform the otherwise mental processes. See October Update at Section I(C)(ii). Thus, the above limitations of recite concepts that fall into the “mathematical formula/relationship” grouping of abstract ideas. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “mathematical formula” grouping of abstract ideas (YES).
Step 2A - Prong 2: Integrated into a Practical Application? This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. 2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55.
Besides the abstract idea as described in Prong 1, the claim recites the additional elements of the processor performing “generate a first graphical user interface (GUI) comprising a first plurality of assets and configured to display the delta of a rate of exchange between two assets of the first plurality of assets, receive a single trade request between a first asset and a second asset, calculate a plurality of trade routes between the first asset and the second asset and determine a trade route resulting in a greatest number of second assets.” in a tracking and trading of assets. The order combination elements of the claim is integrated into a practical application by providing improved technological system generating matrix wheels and table/smart matrix in GUI allowing user to see opportunities for unit gain, losses, price movements in specific time period and delta rate of exchanges, changes in profit and losses enabling to make trades that results positive trades increasing unit gain despite market dropping for both assets (see paragraph [0072,0076]) enabling to track movement of child blocks behind the scenes and maintain a full record of blocks that are spilt or merged over time providing information of true history and equivalence accurately when needed in effectively tracking performance metric in making informed trading decisions (see paragraph [0083, 0087]). The claims 1 and 9 are eligible because they do not recite a judicial exception as per 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) and October 2019 Update of Subject Matter Eligibility provided the pending 112(f) rejection as presented above is obviated. Claim 14 would be also eligible if it mirrors other independent claims by adding missing functional limitation of “matrix module” (YES).
Step 2B: Claim provides an Inventive concept? – Not Applicable.
Remarks
As per searched arts, none of McAtamney, Asllan, Lee and Harrison do not teach the claims as recited in the independent claims. The most notable prior art of McAtamney disclosed interactive asset data visualization guide graphically displaying market related information (see abstract). Asllan et al. disclosed generating GUI providing measurement of performance of relative market data visually relevant to particular user (see abstract). The European Patent Publication prior art of Lee disclosed trading digital with cross-currency in single exchange by sharing contract between plurality of exchanges dealing with different currencies with one another providing buy-offer in the market to consumer directly (see abstract). The Non Patent Literature of Harrison teaches leveraging data to maintain visibility in the market enabling to see how market is shifting on day-by-day basis (see pages 1-2). Applicant requested to obviate pending rejections under USC 101 and 112 as described above for further prosecution of the application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosures. The following are pertinent to current invention, though not relied upon:
Burdick et al. (U.S. Pub No. 2017/0140353) teach automatic teller machine inventory and distribution system.
Clark et al. (U.S. Patent No. 6,378,770) teach replenishing automated teller machine .
Ryuichi et al. (Korean Patent Publication No. KR93-0011728) teach reservation transaction processing configuring automatic cash transaction.
Jun (Japanese Patent Publication No. JP2007-219741A)) teach exclusive reservation management.
Kerpel et al. (U.S. Patent No. 10,984,471) teach tracking platform for standardized instruments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BIJENDRA K SHRESTHA whose telephone number is (571)270-1374. The examiner can normally be reached 8:00AM-5:00PM.
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Respectively submitted,
/BIJENDRA K SHRESTHA/Primary Examiner, Art Unit 3691
07/09/2026
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