DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The Applicant filed Amendments on 06/26/2026. Claims 1-12 are pending and are rejected for the reasons set forth below.
Related Application(s) – Prior Art of Record
3. The instant application is division (DIV) of parent application 19/286,283, which is itself a CIP of application 18/927,608 (now USPN 12,393,952), which is itself a CIP of application 18/616,176 (now USPN 12,361,491). In accordance with MPEP §609.02 A.2 and §2001.06(b) (last paragraph), the prior art cited in the above parent application has been considered, and all documents cited or considered ‘of record' in that application are now considered cited or ‘of record' in this application. The prosecution history of the above parent application is relevant in the examination of the instant application.
Double Patenting
4. 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 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.
5. Claims 1-12 of the instant application are rejected on the ground of nonstatutory anticipated-type double patenting as being unpatentable over claims 1-12 of pending allowed application 19/286,283.
Although claims 1-12 of the instant application and claims 1-12 of pending allowed application 19/286,283 are not identical, they are not patentably distinct from each other because claims 1-12 of the instant application are anticipated by 1-12 of pending allowed application 19/286,283.
Claims 1-12 of the instant application and claims 1-12 of pending allowed application 19/286,283 recite an Alternative Trading System (ATS) computer-implemented method and system of processing a transaction between a purchasing entity and a selling entity including settling a transaction utilizing the allocated computing resources.
For independent claims 1 and 7 of the instant application: Independent claims 1 and 7 of pending allowed application 19/286,283 is a narrower version of independent claims 1 and 7 of the instant application with additional allowed claim limitations of “tracking order frequency, timing, aggregate value and user attributes based on a set of factors, wherein the set of factors include: (1) a mid settlement consideration factor and (2) one or more "outside" factors selected from among: a significant regional incident, a significant national incident, a significant global incident, and government regulation affecting an asset value; continually and automatically checking for non-compliance with the mid settlement consideration factor; and while interrupted, subjecting the "live" transaction to the one or more supplemental security actions in view of the set flag, the one or more supplemental security actions handling any transaction irregularities associated with the factor non-compliance; and(1) allowing the flow of the "live" transaction to resume and the "live" transaction to progress towards settlement subsequent to completion of the one or more supplemental security actions or (2) preventing the flow of the "live" transaction and stopping the "live" transaction from settling based on the one or more supplemental security actions.” Therefore, pending allowed application 19/286,283 is in essence a “species” of the generic invention of the instant application independent claims 1 and 7. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
For dependent claims 2 and 8 of the instant application: Dependent claims 2 and 8 of pending allowed application 19/286,283 are the same version of dependent claims 2 and 8 of the instant application.
For dependent claims 3 and 9 of the instant application: Dependent claims 3 and 9 of pending allowed application 19/286,283 are the same version of dependent claims 3 and 9 of the instant application.
For dependent claims 4 and 10 of the instant application: Dependent claims 4 and 10 of pending allowed application 19/286,283 are the same version of dependent claims 4 and 10 of the instant application.
For dependent claims 5 and 11 of the instant application: Dependent claims 5 and 11 of pending allowed application 19/286,283 are the same version of dependent claims 5 and 11 of the instant application.
For dependent claims 6 and 12 of the instant application: Dependent claims 6 and 12 of pending allowed application 19/286,283 are the same version of dependent claims 6 and 12 of the instant application.
Response to Applicant’s Arguments
6. Double Patenting: Applicant submits that the claims could have been examined together and the Restriction Requirement was inappropriate. However, the Restriction Requirement expressly states that the inventions are independent or distinct because they are drawn to subject matter that does not exclusively overlap. The reasoning in Office Action relative to the reasoning in the Restriction Requirement is logically inconsistent for a nonstatutory anticipated-type double patenting rejection.
Accordingly, no terminal disclaimer is filed at this time. Applicant submits that the pending claims are independent or distinct from the claims in U.S. Pat. No. 12,400,267 because support for the amendments to the claims is found throughout the original filed specification, including but not limited to paragraphs [0042], [0043], [0143], [0146],[0150], [0153], [0163]-[0168] and they are drawn to subject matter that does not exclusively overlap as indicated in the Restriction Requirement for U.S. Pat. App. Ser. No. 19/286,283 (See Applicant Arguments/Remarks Pages 1-2).
Examiner respectfully disagrees and maintains the Double Patenting Rejections of amended claims 1-12 because the amended claims 1-12 did not overcome the Double Patenting Rejections. See details of Double Patenting Rejections of amended claims 1-12 in the section above.
7. 35 U.S.C. §101 Rejections: Applicant’s arguments with respect to amended claims 1-12 that are rejected under 35 U.S.C. 101 have been considered and they are persuasive (See Applicant Arguments/Remarks Pages 2-4).
Examiner hereby withdraws the Claim Rejections - 35 USC § 101 of amended claims 1-12 because the amended limitations of “concurrently with processing transaction flows settling transactions and concurrently with automatically, continually, and electronically updating and maintaining the set of security action triggers, reviewing the "live" transaction in response to triggering a security action trigger, including: monitoring flow of the "live" transaction pre-settlement and including live transaction data defining exchange of a fractional interest in an asset between the purchasing entity and the selling entity; matching the live transaction data with the specified transaction data; interrupting and pausing flow of the "live" transaction towards settlement based on the match; and while interrupted, performing the one or more supplemental security actions on the live transaction data in view of the set flag, the one or more supplemental security actions handling any transaction irregularities associated with the identified factor; and subsequent to performing the one or more supplemental security actions on the live transaction data and based on supplemental security action outcomes, automatically, and without user intervention, unpausing flow of the "live" transaction allowing the "live" transaction to resume and the "live" transaction to progress towards settlement including validating the transaction complies with asset ownership conditions defined for the asset by subjecting the transaction to the one or more supplementing security actions; in response to validating asset ownership conditions compliance, auto- allocating ATS resources, including mutable ledger resources, immutable ledger resources, and digital wallet resources, for settlement of the "live" transaction; and settling the "live" transaction in accordance with the live transaction data and utilizing the allocated ATS resources” integrate the abstract idea of processing a transaction between a purchasing entity and a selling entity including settling a transaction utilizing the allocated computing resources into a practical application of an improvement to the functioning of a computer system for determining that pre-settlement transactions comply with ownership conditions to help ensure that resources are allocated to transactions that are more likely to settle [See representative independent claims 1 and 7]. Also, the same reasons of 35 USC § 101 apply to dependent claims (2-6) for dependent from independent claim 1 and dependent claims (8-12) for dependent from independent claim 7.
Relevant Prior Art
8. The prior art made of record and not relied upon are considered pertinent to Applicant’s disclosure. The following references are pertinent for disclosing various features relevant to the claimed invention, but they do not disclose all the claimed features, as explained below.
9. The best prior art of record, Wilson, JR. et al. (U.S. Pub. No. 2017/0103385), hereinafter, “Wilson, JR.”, and Creighton, IV (U.S. Pub. No. 2016/0321751), hereinafter, “Creighton, IV”, alone or in combination, neither discloses nor fairly suggests the instant application claim limitations of "concurrently with processing transaction flows settling transactions and concurrently with automatically, continually, and electronically updating and maintaining the set of security action triggers, reviewing the "live" transaction in response to triggering a security action trigger, including: monitoring flow of the "live" transaction pre-settlement and including live transaction data defining exchange of a fractional interest in an asset between the purchasing entity and the selling entity; matching the live transaction data with the specified transaction data; interrupting and pausing flow of the "live" transaction towards settlement based on the match; and while interrupted, performing the one or more supplemental security actions on the live transaction data in view of the set flag, the one or more supplemental security actions handling any transaction irregularities associated with the identified factor; and subsequent to performing the one or more supplemental security actions on the live transaction data and based on supplemental security action outcomes, automatically, and without user intervention, unpausing flow of the "live" transaction allowing the "live" transaction to resume and the "live" transaction to progress towards settlement including validating the transaction complies with asset ownership conditions defined for the asset by subjecting the transaction to the one or more supplementing security actions; in response to validating asset ownership conditions compliance, auto- allocating ATS resources, including mutable ledger resources, immutable ledger resources, and digital wallet resources, for settlement of the "live" transaction; and settling the "live" transaction in accordance with the live transaction data and utilizing the allocated ATS resources."
Conclusion
10. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Liz Nguyen whose telephone number is (571) 272-5414. The examiner can normally be reached on Monday to Friday 8:00 A.M to 5:00 P.M.
12. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart, can be reached on (571) 272-3955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
13. Information regarding the status of an application may be obtained from the Patent Center system (visit: https://patentcenter.uspto.gov). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call (800) 786-9199 (USA or CANADA) or (571) 272-1000.
/LIZ P NGUYEN/
Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
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