Bok, Tomas et al.Download PDFPatent Trials and Appeals BoardSep 6, 201913668566 - (R) (P.T.A.B. Sep. 6, 2019) Copy Citation 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. 13/668,566 11/05/2012 Tomas Bok 107945.000013 3476 145584 7590 09/06/2019 Prince Lobel Tye LLP One International Place Suite 3700 Boston, MA 02110 EXAMINER GAW, MARK H ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 09/06/2019 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@princelobel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte TOMAS BOK and DAVID CUSHING ________________ Appeal 2018-003795 Application 13/668,5661 Technology Center 3600 ________________ Before: JOHN A. JEFFERY, JOHN P. PINKERTON, and JASON J. CHUNG, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants filed a paper under 37 C.F.R. § 41.52 requesting reconsideration of our June 3, 2019, Decision (“Dec.”) in which we affirmed the Examiner’s rejections of claims 1–8 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter and 35 U.S.C. § 112, first paragraph. Req. Reh’g 3–10. For the reasons stated below, however, we deny the request to modify our Decision. 1 According to Appellants, ITG Software Solutions, Inc. is the real party in interest. App. Br. 2. Appeal 2018-003795 Application 13/668,566 2 APPLICABLE REQUEST FOR REHEARING RULES Appellants “may file a single request for rehearing within two months of the date of the original decision of the Board.” 37 C.F.R. § 41.52(a)(1). “Arguments not raised, and Evidence not previously relied upon . . . are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4).” Id. Permitted new arguments are limited to: (a) new arguments based upon a recent relevant decision of either the Board or a Federal Court; (b) new arguments responding to a new ground of rejection designated pursuant to § 41.50(b); or (c) new arguments that the Board’s decision contains an undesignated new ground of rejection. See 37 C.F.R. § 41.52(a)(2)–(4). I. Appellants’ Argument and Our Analysis Pertaining To 35 U.S.C. § 101 Appellants argue the Decision overlooks that the present claims integrate a judicial exception into a practical application because they require specialized computer hardware with software communicating with an electronic network and reading an electronic order automatically without human intervention. Req. Reh’g 2–3. Appellants argue that our analysis on pages 7 through 8 of our Decision is tantamount to an undesignated new ground of rejection. Req. Reh’g 2 (citing Dec. 7–8). We disagree with Appellants. As noted in our Decision, the present claims are directed to fundamental economic practices (i.e., an abstract idea). Dec. 3–7. We disagree with Appellants’ argument that the present claims integrate a judicial exception into a practical application because they require specialized computer hardware with software communicating with an electronic network and reading an electronic order automatically without Appeal 2018-003795 Application 13/668,566 3 human intervention. Req. Reh’g 2–3. The Specification indicates what Appellants’ argue are specialized computer hardware elements (i.e., “data processing device comprising a processor” and “electronic communication network”) recited in the present claims are generic tools used to implement the abstract idea. Spec. ¶ 54 (“data processing device 602 (e.g., a general purpose computer . . . or other data processing device)” and “network 610” is described at a high level of generality). We disagree with Appellants’ argument that our analysis in our Decision is tantamount to an undesignated new ground of rejection. Req. Reh’g 2 (citing Dec. 7–8). The new USPTO 35 U.S.C. § 101 Guidance is not “new precedent,” as Appellants allege (Req. Reh’g 2). Rather, the Guidance merely synthesizes the case law on § 101 that existed at the time the Briefs were filed. Moreover, our Decision did not change the thrust of the rejection; therefore, our Decision is not an undesignated new ground of rejection. Appellants do not make any other arguments pertaining to 35 U.S.C. § 101. Accordingly, we have considered Appellants’ argument raised in the Request, but this argument does not persuade us that the Decision pertaining to 35 U.S.C. § 101 was in error. We are still of the view that the invention set forth in claims 1–8 is patent ineligible under 35 U.S.C. § 101 for the reasons stated above and in our Decision. II. Appellants’ Argument and Our Analysis Pertaining To 35 U.S.C. § 112, first paragraph Appellants argue the Decision overlooks that the disclosure from paragraph 54 of the Specification (i.e., “The instructions may be used to program a data processing device 602 to perform the processes described Appeal 2018-003795 Application 13/668,566 4 above”) provides sufficient support to meet the written description requirement. We disagree with Appellants. As noted in our Decision, Appellants added the limitation “without human intervention” recited in claim 1 in the Amendment filed on January 11, 2017––i.e., after the filing date of November 5, 2012. Dec. 9–10. And we noted that, although the Specification provides support for the limitation “automatically” (Spec. ¶ 6), we find it does not provide adequate support for the limitation “without human intervention.” Dec. 9–10. Stated differently, the cited portions of the Specification relied upon by Appellants are broader than the “without human intervention” limitation. Req. Reh’g 4–5 (citing Spec. ¶ 54). Moreover, the Specification does not support the limitation “an electronic order to trade X shares of security, to create, automatically without human intervention, an initial set of electronic order to trade Y shares of security, wherein Y is less than or equal to X” (emphasis added) inherently because there are different interpretations of the Specification a person having ordinary skill in the art at the time of the invention would take. For example, the Specification is broad enough such that a human can break up X shares of security into a smaller order of Y shares by using a computer input device (i.e., with human intervention by clicking on a mouse); then, the computer software creates Y shares (after the human intervention of clicking on the mouse to initiate the creation of Y shares) and trades the Y shares automatically. It is well settled that a description that merely renders the invention obvious does not satisfy the written description requirement. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en Appeal 2018-003795 Application 13/668,566 5 banc). As such, we discern no error in our finding that Appellants lacked possession of the limitation “without human intervention” recited in claim 1 at the time of filing the application. Dec. 9–10. Accordingly, we have considered Appellants’ arguments raised in the Request, but these arguments do not persuade us that the Decision pertaining to 35 U.S.C. § 112, first paragraph was in error. CONCLUSION For the reasons discussed above, Appellants’ arguments do not persuade us of error in our June 3, 2019 Decision. Accordingly, Appellants’ Request for Rehearing is granted to the extent the Decision is reconsidered, but is denied with respect to modifying the Decision. DENIED Copy with citationCopy as parenthetical citation