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
Claims 1-20 are pending and rejected. This action is a non-final office action on the merits.
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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11042933. Although the claims at issue are not identical, they are not patentably distinct from each other because
Claims 1, 8, 10 contain similar language and technical merit as the parent patent. With the exception of 35 USC 101, they would be essentially similar.
Claim Objections
Claims 1, 8 and 15 are objected to because of the following informalities: a corresponding “withholding financial instrument” is claimed and may potentially be unique. However, on parsing the claims language of claims 1, 8 and 15 in view of applicant specification, it’s not clear if the corresponding withholding financial instrument and the “derivative financial instrument” are different instruments, ie is there really a separate derivative financial instrument only to withhold dividends? For the purpose of rejection initially, the accounts are presumed to be the same because it’s not clear. Appropriate correction is required.
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 they are directed to an abstract idea without significantly more.
Claims 1, 8 and 15 are directed to a system, method and tangible computer readable medium respectively. These are all statutory classes of invention. Step 1 yes
The examiner has identified claim 8 as the representative claim for analysis.
The claims limitations under their broadest limitation cover performance of the limitation as certain methods of organizing human activity which thus recites a fundamental economic practice, ie trading concepts.
Claim 8 recites the following abstract elements;
by a … coupled via a … with a market data component, a market data feed transmitted thereby comprising data indicative of changes in value of one or more derivative financial instruments; creating, by the …, substantially simultaneously, a derivative financial instrument having an underlying instrument for which one or more payments are periodically received and a corresponding withholding financial instrument having a short party thereto which is also a long party to the derivative financial instrument and wherein the long party to the withholding financial instrument is an account for holding a variation margin amount, the derivative financial instrument varying in value at least based on receipt of the one or more payments; determining, by the …, periodically, receipt of one or more of the one or more payments, and an amount thereof, via analysis of the market data feed received from the market data component based on changes in the value of the derivative financial instrument, and based thereon: computing, by the …, a value of the withholding financial instrument as an accumulation of the amounts of all of the payments thus far received; determining, by the processor, the variation margin amount for the short party to the withholding financial instrument based on the computed value; and crediting, by the processor, the determined variation margin amount to the long party to the withholding financial instrument, thereby eliminating direct payment by the short party to the long party and reducing a consumption of bandwidth of data collected and transmitted by the market data component.
Here the computing elements include network and processor.
The recitation of generic computing elements to perform trading activities does not necessarily preclude the claims from reciting an abstract idea. Step 2a Prong 1, yest the claims recite an abstract idea. Claims 1, 8 and 15 being similar. The dependent claims 2-7, 9-14, and 16-20 do not further add additional elements.
The judicial exception is not integrated into a practical application. The additional elements of processor and network for example are recited at a high level of generality. These are mere instructions to apply using a generic computing component. There claims 1, 8 and 15 are directed to an abstract idea without a practical application . Step 2A prong 2 NO.
The claims do not include additional elements. Here applicant’s claims allude to a reduction in bandwidth requirements see also 0041 of the specification. Reduction in bandwidth might be a technical improvement but, the applicant merely recites the results and not the process used to reduce bandwidth. If applicant could enumerate a process to reduce bandwidth this might be sufficient.
The dependent claims 2-7, 9-14, and 16-20 do not further add additional elements as mentioned earlier.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) s 1-2, 4-9, 11-16, 18-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Patent to Richard Co (hear after Richard) 8626638.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
As per claims 1, 8 and 15 Richard discloses;
receiving, by a processor coupled via a network with a market data component, a market data feed transmitted thereby comprising data indicative of changes in value of one or more derivative financial instruments;
Richard(col. 8 lines 25-40, publish the data)
creating, by the processor, substantially simultaneously, a derivative financial instrument having an underlying instrument for which one or more payments are periodically received and a corresponding withholding financial instrument having a short party thereto which is also a long party to the derivative financial instrument and wherein the long party to the withholding financial instrument is an account for holding a variation margin amount,
Richard(fig. 4, here “is the withholding financial instrument” a separate financial instrument or the instrument that’s receiving the withhold, the examiner assumes that the withholding financial instrument is the one that receives the withholding)
the derivative financial instrument varying in value at least based on receipt of the one or more payments;
Richard(col. 10 side payments)
determining, by the processor, periodically, receipt of one or more of the one or more payments, and an amount thereof, via analysis of the market data feed received from the market data component based on changes in the value of the derivative financial instrument, and based thereon: computing, by the processor, a value of the withholding financial instrument as an accumulation of the amounts of all of the payments thus far received;
Richard(col. 10)
determining, by the processor, the variation margin amount for the short party to the withholding financial instrument based on the computed value;
and crediting, by the processor, the determined variation margin amount to the long party to the withholding financial instrument,
thereby eliminating direct payment by the short party to the long party and reducing a consumption of bandwidth of data collected and transmitted by the market data component.
Richard(This is more of an intended consequence of the eliminating direct payments, col. 7 indicates that efficiency is one intended desire or objective of the clearing system so efficiency would reduce the consumption of bandwith )
Claims, 8 and 15 are similar to claim 1
As per claims 2, 9 and 16 Richard discloses;
The system of claim 1, wherein the withholding financial instrument expires at a same time that the derivative financial instrument expires. Co (col. 8 lines 30-40)
As per claims 4, 11 and 18 Richard discloses;
the system of claim 1, wherein the computed value comprises a constructive dividend.
Richard(col. 8 lines 10—25 discloses dividend pass through, constructive dividend is a way to settle out dividend holdings for an options or futures that need to be compensated for)
As per claims 5, 12 and 19 Richard discloses; The system of claim 1, wherein the payments are received periodically and at different times.
Col. 10(lines 10-15, different times could be any time, each day for example)
As per claims 6, 13 and 20 Richard discloses;
The system of claim 1, wherein the variation margin amount is a percentage of the accumulated payments for one trading period.
Richard(col. 8 lines 35-45, a period of time, flexible in view of it could be each day col. 7, col. 10 each day)
As per claims 14, and 7 Richard discloses;
the computer implemented method of claim 8, further comprising: determining, daily by the processor, based on a daily settlement price for the withholding financial instrument, the variation margin.
Richard(col. 7 lines 30-35, each day)
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 3, 10 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over
US Patent to Richard Co (hear after Richard) 8626638 in view of US Patent Publication 200901182658 to Lutnick
As per claims 3, 10 and 17 Richard does not explicitly disclose what
Lutnick teaches;
the system of claim 1, wherein the long and short parties are not being identified to each other by the processor.
Lutnick(0061-63 concept of anonymous trading between long and short trading)
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the variation teachings of Richard with the anonymous trading of Lutnick for the motivation of creating generic “computer trading systems”. (0002)
Allowable subject matter but for 35 USC 101 and claim objections above
Here the most relevant of Record is applicant’s own patent 11042933 and US Patent Publication 200901182658 to Lutnick in regards to anonymous (not known to each other) trading found in claims 3, 10 and 17.
The allowable feature as found in claim 1, 8 and 15, is a separate “corresponding withholding financial instrument”. Here in view of objection, it’s not clear if this is a separate derivative withholding account as in just for the dividends or if the derivative account is the derivative itself.
In the words of claim 1,
“creating, by the processor, substantially simultaneously, a derivative financial instrument having an underlying instrument for which one or more payments are periodically received and a corresponding withholding financial instrument having a short party thereto which is also a long party to the derivative financial instrument and wherein the long party to the withholding financial instrument is an account for holding a variation margin amount, “
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure from an IP.com search;
Electronic Financial Markets, IEEE 1999
MVA Transfer Pricing, ARXiV 2015
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCE I EBERSMAN whose telephone number is (571)270-3442. The examiner can normally be reached 8:00 am - 5:00 pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRUCE I EBERSMAN/Primary Examiner, Art Unit 3693
