Bionic Trader Systems, LLC

Patent Trials and Appeals Board

Jan 24, 2020

14265332 - (D) (P.T.A.B. Jan. 24, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/265,332 04/29/2014 Adam Sheldon 1043-016 4742
88360 7590 01/24/2020
Richards Patent Law P.C.
20 N Clark Street
Suite 3300
Chicago, IL 60602
EXAMINER
OYEBISI, OJO O
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
01/24/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@richardspatentlaw.com
eofficeaction@appcoll.com
robin@richardspatentlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ADAM SHELDON
____________

Appeal 2018-004246
Application 14/265,332
Technology Center 3600
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Bionic Trader
Systems, LLC. Appeal Br. 3.
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Application 14/265,332

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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a trading system and
method that facilitates a “target” trading process (Spec., para. 2). Claim 1,
reproduced below with the italics added, is representative of the subject
matter on appeal.

1. A method of reaching one or more target positions in a
user-directed trading system comprising the steps of:
providing a user interface that receives one or more user
commands through an input device to identify one or more target
positions, wherein each target position includes a tractable instrument
identifier, a target quantity, and an identification of the side of market;
for at least one of the target positions, identifying a
corresponding initial position including a current quantity associated
with the tractable instrument identifier and a side of the market,
wherein the side of the market of at least one of the target positions is
on the opposite side of the market from the side of the market
of the corresponding initial position;
in response to receiving a trigger to trade to the one or more
identified target positions, triggering the trading system to identify
one or more orders required to reach at least one target position from
at least one initial position; and
in response to receiving a single user command to trade to the
one or more identified target positions through the user interface,
triggering the trading system to execute one or more of the orders
identified as being required to reach the at least one target position
from the at least one initial position, including the target
position having the identification of the side of the market that is on
the opposite side of the market from the side of the market of the
corresponding initial position.

THE REJECTION
The following rejection is before us for review:
Claims 1–20 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
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FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Supp. App. Br. 6–9). The
Appellant argues further that the claim is “significantly more” than the
alleged abstract idea (Supp. App. Br. 10, 11).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 2–4; Ans. 2–5).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
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Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187
(“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to
monopolize the judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
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concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The Specification at paragraph 2 states that the invention generally
relates to a trading system and method that facilitates a “target” trading
process. Here, the Examiner has determined that the claim sets forth the
concept of facilitating a target trading process (Ans. 3). We substantially
agree with the Examiner. We determine that claim 1 sets forth the subject
matter in italics above, which describes the concept executing a target
position in a trading system which is a certain method of organizing human
activity and fundamental economic practice, i.e., a judicial exception. In
Chicago Board of Options Exchange v. International Securities Exchange,
640 Fed. Appx. 986 (Mem) (Fed. Cir. 2016), the Federal Circuit affirmed the
determination in three cases (CBM2013-00049, CBM2013-00050,
CBM2013-00051) involving trading technologies that were held to not meet
the requirements of 35 U.S.C. § 101. In Trading Tech. Int’l, Inc. v. IBG,
LLC, 921 F.3d 1084, 1089 (Fed. Cir. 2019) it was held that claims directed
to a financial trading method used by a computer were not patent eligible.
We next determine whether the claim recites additional elements in
the claim to integrate the judicial exception into a practical application. See
Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the
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MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c)
and (e)–(h).
Here, the claim does not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claim imposes a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort to monopolize the judicial exception.
For example, in claim 1 the steps of [1] “providing a user interface . . .
to identify one or more target positions,” [2] “for at least one of the target
positions, identifying a corresponding initial position,” [3] “in response to
receiving a trigger to trade to the one or more identified target positions,
triggering the trading system to identify one or more orders required to reach
at least one target position,” [4] “in response to receiving a single user
command to trade to the one or more identified target positions through the
user interface, triggering the trading system to execute one or more of the
orders identified as being required to reach the at least one target,” are
merely steps performed by a generic computer that do not improve computer
functionality. That is, these recited steps [1]–[4] “do not purport to improve
the functioning of the computer itself” but are merely generic functions
performed by a conventional processor. Likewise, these same steps [1]–[4]
listed above do not improve the technology of the technical field and merely
use generic computer components and functions to perform the steps. Also,
the recited method steps [1]–[4] above do not require a “particular machine”
and can be utilized with a general purpose computer. In this case the general
purpose computer is merely an object on which the method operates in a
conventional manner. Further, the claim as a whole fails to effect any
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particular transformation of an article to a different state. The recited steps
[1]–[4] fail to provide meaningful limitations to limit the judicial exception
and rather are mere instructions to apply the method to a generic computer.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
The claim both individually and as an ordered combination fails to add
subject matter beyond the judicial exception that is not well-understood,
routine, and conventional in the field. Rather, the claim uses well-
understood, routine, and conventional activities previously known in the art
and they are recited at a high level of generality. The Specification at
paragraphs 75–80 for example describes using conventional computer
components such as a PC, CPU, keyboards, readers, servers, and network
terminals in a conventional manner. The claim specifically includes
recitations for computers to implement the method but these computer
components are all used in a manner that is well-understood, routine, and
conventional in the field. The Appellant has not demonstrated that the
computers described in the Specification at paragraphs 75–80 for instance
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are not general purpose computer components known to perform similar
functions in a well-understood manner. Here, the claim has not been shown
to be “significantly more” than the abstract idea.
The Appellant, at page 6–8 of the Appeal Brief, has also cited
to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show
that the claim is not abstract, but the claims in that case were not similar in
scope to those here and were in contrast directed to a self-referential data
table.
For these above reasons, the rejection of claim 1 is sustained. The
Appellant has provided the same arguments for the remaining claims which
are drawn to similar subject matter, and the rejection of these claims is
sustained for the same reasons given above.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1–20 under 35 U.S.C. § 101.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

Appeal 2018-004246
Application 14/265,332

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED