Nasdaq Technology AB

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Nasdaq Technology AB [2022] APO 55

Patent Application:             2018231698

Title:Order depth view visualization tool

Patent Applicant:                Nasdaq Technology AB

Delegate:Anish Singh

Decision Date:  20 July 2022

Hearing Date:  Written submissions filed on 8 November 2021

Catchwords:  PATENTS – section 45 – examiner’s objection – order depth view visualization tool – manner of manufacture – invention in substance directed to a mere scheme – application refused

Representation:                   Patent attorney for the applicant: Griffith Hack

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:             2018231698

Title:Order depth view visualization tool

Patent Applicant:                Nasdaq Technology AB

Date of Decision:                20 July 2022

DECISION

The claims, as proposed to be amended, do not define a manner of manufacture.  The matter

described in the body of the specification provides no material that could result in valid amendments to the claims overcoming this finding.

I refuse the application.

REASONS FOR DECISION

Background

1. Patent application 2018231698 (“the application”) by Nasdaq Technology AB (“the applicant”) was filed on 07 March 2018 with an earliest priority date of 07 March 2017.

2. The application was subjected to two examination reports. 

3. Examination report no. 1, issued on 28 May 2020, contains objections with respect to manner of manufacture as well as novelty and inventive step.  A response to examination report no. 1 was submitted on 3 May 2021 with proposed amendments.  In the first statement of proposed amendments to the specification of the application (“the specification”), the applicant proposed, under item 1, amendments to the description and claims.

4. Examination report no. 2, issued on 28 May 2021, contains a single objection with respect to manner of manufacture. 

5. On 28 May 2021, the applicant requested to be heard.

1. The hearing was conducted by way of written submissions.  On 8 November 2021, the applicant filed written submissions (“the applicant’s submissions”).

2. The final date for acceptance of the application was 28 May 2021, however, paragraph 13.4(1)(g) of the Patents Regulations 1991 (“the Regulations”) may be available to extend the time for gaining acceptance to three (3) months (or longer under subregulation 13.4(3)) from the date of the present decision.

THE SPECIFICATION

The proposed amendments

1. The amendments proposed on 3 May 2021 are directed to cancelling pages 1 to 41 as filed and substituting them with new pages 1 to 45.  The allowability of the amendments appears to be considered by the Examiner at the Examination report no. 2 stage. There were no objections directed towards the allowability of the proposed amendments and I do not consider it necessary to discuss the allowability of the proposed amendments.  The amendments appear allowable, and for the benefit of the applicant, I consider the specification as proposed to be amended.

The Body of the Specification

1. As a background to the alleged invention, the specification describes the use of computer systems operating according to pre-programmed trading algorithms to facilitate large numbers of trades of various instruments, such as stocks and other securities instruments.   Computer systems and…