DETAILED ACTION
This office action is in response to Applicant’s communication of 8/4/2025. Claims 1-22 are pending and have been examined. The rejections and objections are stated below.
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 .
Drawings
FIGs 7C and 7D are objected to:
Drawings lack lines, numbers and letters that are durable, clean, black, sufficiently dense and dark and uniformly thick and well-defined and therefore fail to comply with 37 CFR 1.84l.
Drawings have excessive shading and reduce legibility and therefore fail to comply with 37 CFR 1.84m.
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.
35 USC § 112(f) Notification
Claim 22 recites the limitations “means for receiving”, “means for determining”, “means for attempting”, “means for rearranging”, “means for identifying” and “means for allocating” which have been interpreted under 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph, because it uses a non-structural term “means for” coupled with the functional language of receiving, determining, attempting, rearranging, identifying and allocating without reciting sufficient structure to achieve the function. Furthermore, the non-structural term is not preceded by a structural modifier.
Since these claim limitations invoke 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph, claim 22 has been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification appears to show no definitive structure for the 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph limitation “means for”. If applicant wishes to provide further explanation, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph, or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. § 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011). (FP 7.34.21)
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 double patenting rejection is appropriate where the claims at issue 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321 (b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim Rejections - Double Patenting (Obviousness-type)
Claims 1-22 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-24 of US Patent No 11,532,043 (‘043 hereinafter). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘043 Patent recite all the limitations of claims 1-22 of the instant application.
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, 3-12 and 14-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims do fall within at least one of the four categories of patent eligible subject matter because claims 1 and 22 are directed to a system and claim 12 is directed to a process; Step 1-yes.
Under Step 2A, prong 1, representative claim 12 recites a series of steps for matching trade requests with previously received but unsatisfied requests based on a function of time and allocating said matches to the unsatisfied requests, which is a fundamental economic practice, trading, and commercial or legal interaction, sales activities and thus grouped as “Certain Methods of Organizing Human Activity”. The claim as a whole and the limitations in combination recite this abstract idea. Specifically, the limitations of representative claim 12, stripped of all additional elements and in bold below, recite the abstract idea as follows:
12. A computer implemented method comprising:
receiving, by a match engine processor of an electronic trading system characterized by an available processing resource capacity, incoming orders for a transaction of a quantity of a financial instrument at an order price based on an occurrence of an event that affects a processing resource capacity of the match engine processor;
determining, by the match engine processor, an elapse of time; and
attempting, by the match engine processor, to match the incoming orders with a plurality of previously received but unsatisfied orders stored in a memory coupled with the match engine processor, wherein each of the plurality of previously received but unsatisfied orders is characterized by a time of receipt at which each previously received but unsatisfied order was received by the electronic trading system, wherein attempting to match the incoming orders further comprises:
rearranging, by the match engine processor, based on a magnitude of the elapse of time, of the plurality of previously received but unsatisfied orders into at least one non-overlapping subset thereof, each comprising at least one of the plurality of previously received but unsatisfied orders, as a function of the time of receipt thereof;
identifying, by the match engine processor, one or more suitable orders of the previously received but unsatisfied orders to which to allocate the quantity of each of the received incoming orders; and
allocating, by the match engine processor, the quantity of each of the received incoming orders to at least one of the identified suitable previously received but unsatisfied orders according to a first allocation algorithm and subsequently thereto, allocate the quantity allocated to each subset of previously received but unsatisfied orders for further allocation among the identified suitable previously received but unsatisfied orders thereof according to a second allocation algorithm different from the first allocation algorithm.
The claimed limitations, identified above, recite a process that, under its broadest reasonable interpretation, covers performance of a fundamental economic practice and commercial or legal interaction, but for the recitation of generic computer components. That is, other than the mere nominal recitation of “a match engine processor of an electronic trading system” and “memory” in claims 1 and 12 and “an electronic trading system” in claim 22, there is nothing in the claim element which takes the steps out of the methods of organizing human activity abstract idea grouping. Thus, claims 1, 12 and 22 recite an abstract idea.
Under step 2A, prong 2, this judicial exception is not integrated into a practical application. In particular, the claim only recites using generic, commercially available, off-the-shelf computing devices, i.e. processors suitably programmed with memory communicating over a generic network, to perform the steps of receiving, determining, attempting, rearranging, identifying and allocating. The computer components are recited at a high-level of generality (i.e., as generic processors with memory suitably programmed communicating information over a generic network, see at least Figure 4 and paragraphs [0008] and [0047-0055] of the specification) such that it amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea, see MPEP 2106.05(f). Claims 1, 12 and 22 are directed to an abstract idea.
Under step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using generic computer processors with memory suitably programmed communicating over a generic network to perform the limitation steps amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea, see MPEP 2106.05(f) Mere instructions to apply an exception using generic computer components interacting in a conventional manner cannot provide an inventive concept. Claims 1, 12 and 22 are not patent eligible.
Applicant has leveraged generic computing elements to perform the abstract idea of matching trade requests with previously received but unsatisfied requests based on a function of time and allocating said matches to the unsatisfied requests without significantly more.
Dependent claims 3-10 and 14-21 when analyzed as a whole and in an ordered combination are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. The additional recited limitations in the dependent claims only refine the abstract idea. Each of these dependent claims further refine the abstract and are applied vis a generic additional computing element of an electronic trading system. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
The claims merely amount to the application or instructions to apply the abstract idea (i.e. a series of steps for matching trade requests with previously received but unsatisfied requests based on a function of time and allocating said matches to the unsatisfied requests) on one or more computers, and are considered to amount to nothing more than requiring a generic computer system (e.g. processors suitably programmed and communicating over a network) to merely carry out the abstract idea itself. As such, the claims, when considered as a whole, are nothing more than the instruction to implement the abstract idea (i.e. a series of steps for matching trade requests with previously received but unsatisfied requests based on a function of time and allocating said matches to the unsatisfied requests) in a particular, albeit well-understood, routine and conventional technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself or integrate the judicial exception into a practical application.
Allowable Subject Matter
Claims 2 and 13 are 35 USC 101 eligible and thus if rewritten in independent form including all of the limitations of the base claim and any intervening claims the instant claims would also be 35 USC 101 eligible.
Claims 1-22 are allowable over any combination of prior art.
The closest prior art of record discloses the following:
Czupek et al. (US 2008/0243576 Al): “A method of allocating a quantity of an incoming order for a product develops a value that indicates a portion of the incoming order this is to be allocated using a FIFO algorithm and allocates a first portion of the incoming order to standing orders using the FIFO algorithm. The method further allocates a second portion of the incoming order to standing orders using a pro-rata algorithm, wherein the step of allocating the second portion leaves a remaining quantity of the incoming order.”
Triplett (US 7,454,382 B1): “A user can submit an order to buy or sell a tradeable object, only the order does not get sent to the matching engine. Instead, the order is placed in temporary storage and it is displayed to the user in the form of a virtual order icon. The virtual order icon indicates that an order request is waiting for an event to occur before it is automatically released to the matching engine.”
Warsaw et al. (US 2010/0138334 Al): “The present invention involves providing a computer based platform for allowing a user to establish a target trading book; evaluating the user’s unmatched exchange trades to determine an actual trading book at a point in time; determining a differential between the target trading book and the actual trading book; and identifying at least one exchange trade action to transition from the actual trading book to the target trading book, wherein the exchange trade action is based on preserving at least one unmatched order with the oldest possible entry time stamp.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure are listed on the enclosed PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J BRIDGES whose telephone number is (571)270-5451. The examiner can normally be reached 7:00am-3:30pm M-F EDT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mike Anderson can be reached on 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER BRIDGES/Primary Examiner, Art Unit 3693
Prosecution Insights