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 .
Status of Application
This is a non-final action is in response to U.S. Patent Application 19/348,196, filed on October 2, 2025 which is a continuation of U.S. Patent Application 19/056,089, filed on February 18, 2025, now U.S. Patent 12,462,302, which is a continuation of U.S. Patent Application 18/926,609, filed on October 25, 2024, now U.S. Patent 12,260,459, which is a continuation of U.S. Patent Application 18/620,115, filed on March 28, 2023, now U.S. Patent 12,165,207, which is a continuation of U.S. Patent Application 18/200,277, filed on May 22, 2023, now U.S. Patent 11,978,120, which is a continuation of U.S. Patent Application 17/406,347, filed on August 19, 2021, now U.S. Patent 11,704,735, which claims priority to U.S. Provisional Application 63/068,034, filed on August 20, 2020. Claims 1-22 are pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted by the Applicant on October 2, 2025 is in compliance with the provisions of 37 CFR 1.97 and has been considered by the examiner.
Double Patenting Rejection
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 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 non-statutory 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-22 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-21 of U.S. Patent 12,462,302. Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 1 from the instant application, which recites a system, and claim 1 of the ‘302 patent, which recites a method, each recite a computer platform comprising at least one processor and non-transitory memory and configured to communicate with one or more entity systems via one or more computer networks; parse one or more data elements of a plurality of electronic messages associated with the one or more entity systems to determine one or more destinations of the plurality of electronic messages; verify that the detected message includes one or more predefined characteristics to form a verified auction order, the one or more predefined characteristics comprising at least one entity characteristic indicated in the detected message; route, continually and in real time, the plurality of electronic messages to the one or more destinations, including routing the verified auction order to an order book storage structure prior to an electronic auction; determine, at a scheduled auction time, whether sell order information in the verified auction order meets at least one predetermined auction condition based on an auction price; and permit the verified auction order to participate in the electronic auction when the sell order information meets the at least one predetermined auction condition.
The difference between the two inventions is that the detect step in Claim 1 of the instant application recites: detect, via the one or more data elements, that a message of the plurality of electronic messages includes an auction order of a predetermined sell order type associated with an entity having securities not previously registered for transactions with the computer platform. Claim 1 of the ‘459 patent recites: detecting, by the computer platform, via the one or more data elements, that a message of the plurality of electronic messages includes: a) a request for participation in an electronic auction and b) an order of a predetermined sell order type associated with an entity having securities not previously registered for transactions with the computer platform. The difference in the recited language is not patently significant in that each element involves detecting an electronic auction order of a predetermined sell order type associated with an entity having securities not previously registered for transactions with the computer platform. The inventions are not patently distinct.
Claims 1-21 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-21 of U.S. Patent 12,260,459. Although the claims at issue are not identical, they are not patentably distinct from each. Claim 1 from the instant application and claim 1 of the ‘459 patent each teach a system comprising: a computer platform comprising at least one processor and non-transitory memory, the computer platform configured to communicate with one or more entity systems via one or more computer networks, the computer platform configured to: parse one or more data elements of a plurality of electronic messages associated with the one or more entity systems to determine one or more destinations of the plurality of electronic messages; verify that the detected message includes one or more predefined characteristics to form a verified auction order, the one or more predefined characteristics comprising at least one entity characteristic indicated in the detected message; route, continually and in real time, the plurality of electronic messages to the one or more destinations, including routing the verified auction order to an order book storage structure prior to an electronic auction; determine, at a scheduled auction time, whether sell order information in the verified auction order meets at least one predetermined auction condition based on an auction price; and permit the verified auction order to participate in the electronic auction when the sell order information meets the at least one predetermined auction condition.
The difference between the two inventions is that the detect step in Claim 1 of the instant application recites: detect, via the one or more data elements, that a message of the plurality of electronic messages includes an auction order of a predetermined sell order type associated with an entity having securities not previously registered for transactions with the computer platform. Claim 1 of the ‘459 patent recites: detect, via the one or more data elements, that a message of the plurality of electronic messages includes: a) a request for participation in an electronic auction and b) an order of a predetermined sell order type associated with an entity having securities not previously registered for transactions with the computer platform. The difference in the recited language is not patently significant in that each element involves detecting an electronic auction order of a predetermined sell order type associated with an entity having securities not previously registered for transactions with the computer platform. The inventions are not patently distinct.
Patent Eligibility
Insofar as the claims of parent Application 19/056,089, (now U.S. Patent 12,462,302), were deemed to integrate the identified abstract idea into a practical application by reciting meaningful limitations that as an ordered combination that were more than mere instructions to apply the abstract idea using a computer and were more than generally linking the use of the abstract idea to a particular technological environment or field of use and thus found to be patent eligible under 35 USC § 101, the claims of the instant application recite nearly identical elements and are also deemed to be patent eligible.
No Prior Art Rejection
A search of the prior art has not identified any references that taken as a whole or in combination anticipate or render obvious the claimed subject matter of Claims 1-22. Therefore, there are no prior art rejections provided for Claims 1-22.
The closest prior art of record US 9,747,643 B1, Givot, discloses a system and method for operating an on-demand auction for a Financial Instrument are provided in which a request is made for a Trading Center to conduct an on-demand auction for a Financial Instrument. If requirements are met, the Trading Center transitions from an Open Trading State (OTS) to a SNAP Auction State (SAS), excludes from the auction any order which explicitly requests exclusion, includes in the auction any remaining Resting Orders, includes in the auction certain new orders which arrive before the auction ends, activates and includes currently dormant orders, takes a snapshot of displayed buying/selling interest and attempts to include in the auction any available buying/selling interest in other Trading Centers which must be satisfied, computes the auction price, sends external Satisfaction Orders, attempts to match all responses to Satisfaction Orders and all internal orders included in the auction, and transitions back from the SAS to the OTS.
The closest prior art of record US 2011/0016033 A1, Wenger et al., discloses a system and method for the gathering of and manipulation of shareholder data, including information on individual shareholders and related custodians of shares, and comparing the shareholder/custodian data to a set of rules and/or a set of marketing analysis data to identify securities compliance issues and/or evaluate a securities marketing plan.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE PROIOS whose telephone number is (571)272-4573. The examiner can normally be reached M-F 8-5.
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, Bennett M 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.
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.
/GEORGE N. PROIOS/Examiner, Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694