Ex Parte Acuña-Rohter et al

Patent Trials and Appeals Board

May 28, 2019

12559215 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/559,215 09/14/2009
12684 7590 05/30/2019
Lempia Summerfield Katz LLC/CME
20 South Clark Street
Suite 600
Chicago, IL 60603
FIRST NAMED INVENTOR
Jose Antonio Acufia-Rohter
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4672/743 8025
EXAMINER
LIU,IJUNG
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
mail@lsk-iplaw.com
docket-us@lsk-iplaw.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE ANTONIO ACUNA-ROHTER and
PEARCE PECK-WALDEN
Appeal 2018-004928
Application 12/559,215
Technology Center 3600
Before JEAN R. HOMERE, CAROLYN D. THOMAS and
CARL W. WHITEHEAD JR., Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1-24 under
35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Introduction
The invention is directed to "software, systems and methods for
electronic trading in a commodities exchange, derivatives exchange or
similar business involving tradable items where orders from buyers are
matched with orders from sellers." Specification ,-J 1.
Appeal 2018-004928
Application 12/559,215
Illustrative Claim
1. A computer implemented method of optimizing the computation of
implied orders to a electronic trading system, the method comprising:
representing, by a processor, three or more financial products
using a plurality of vectors having a number of columns, wherein the
number of columns is equal to a number of unique legs making up the
financial products;
defining, by the processor, a first order as a first vector of the
plurality of vectors;
identifying, by the processor, a list of candidate vectors from
the plurality of vectors, each candidate vector having at least one
nonzero column in common with the first vector;
selecting, by the processor, a second vector from the list of
candidate vectors;
adding, by the processor, the first vector to the second vector to
define a first intermediate vector;
removing, by the processor, the second vector from the list of
candidate vectors;
outputting, by the processor to the electronic trading system, an
implied order corresponding to the second vector, if the first
intermediate vector has no nonzero columns;
not outputting, by the processor to the electronic trading
system, the implied order corresponding to the second vector, if the
first intermediate vector has nonzero columns; and
whereby the electronic trading system processes less than all
implied orders corresponding to the candidate vectors.
Appeal Brief 19 (Claims Appendix).
Rejection on Appeal
Claims 1-24 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent ineligible subject matter. Final
Action 2-4.
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ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief ( filed October 18, 201 7), the Reply Brief ( filed
April 9, 2018), the Final Action (mailed May 3, 2017) and the Answer
(mailed February 9, 2018), for the respective details.
The Examiner determines:
The current implementation is based on a "the series of steps of
representing, by a processor; defining, by the processor;
identifying, by the processor; selecting, by the processor; adding,
by the processor; removing, by the processor; outputting, by the
processor are methods of organizing human activities, and an
idea with mathematical relationships/formulas as part of
fundamental economic practices and thus directed to an abstract
idea." Such an abstract idea relating to the economy and
commerce form the basis of a fundamental economic practice".
Final Action 2; see Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573 U.S.
208, 217 (2014) ( describing the two-step framework "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.").
After the mailing of the Answer and the filing of the Briefs in this
case, the USPTO published revised guidance on the application of§ 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the
Office first looks 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
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)-( c ), ( e )-(h) (9th
ed. 2018).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office 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 Memorandum.
We are not persuaded the Examiner's rejection is in error. Unless
otherwise indicated, we adopt the Examiner's findings and conclusions as
our own, and we add the following primarily for emphasis and clarification
with respect to the Memorandum.
Alice/May~tep 1 (Abstract Idea)
Step 2A-Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong One
Appellants argue the pending claims are not directed to an abstract
idea because:
[T]he claims are directed to a specific, novel and patentable
system for efficiently generating implied orders to an electronic
trading system which improves the efficiency and computational
capacity of that system, as well as the transaction processing
systems implemented thereby, by, instead of blindly computing
all possible trading combinations, using rules to selectively
reduce the computational load on the system by only computing
tradeable implied combinations while avoiding computing those
combinations which are not tradeable.
Appeal Brief 4.
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Appellants' argument is not persuasive. Instead, we agree with the
Examiner's determination that the claims are directed to an abstract idea.
Final Action 2-4.
Claim 1 recites, "A computer implemented method of optimizing the
computation of implied orders to [an] electronic trading system,"
"representing, by a processor, three or more financial products using a
plurality of vectors having a number of columns, wherein the number
of columns is equal to a number of unique legs making up the
financial products," "outputting, by the processor to the electronic
trading system, an implied order corresponding to the second vector,
if the first intermediate vector has no nonzero columns," "not
outputting, by the processor to the electronic trading system, the
implied order corresponding to the second vector, if the first
intermediate vector has nonzero columns" and "whereby the
electronic trading system processes less than all implied orders
corresponding to the candidate vectors."
These steps comprise fundamental economic principles or practices
and/or commercial or legal interactions; thus, the claim recites the abstract
idea of "certain methods of organizing human activity." Memorandum,
Section I (Groupings of Abstract Ideas); see Specification ,-J,-J 16-22 ("One of
the advantages of quickly identifying tradable combinations is that the
exchange can execute trades that would not have previously occurred. An
increase in trading volume is an increase in revenue for the exchange.").
Our reviewing court has found claims to be directed to abstract ideas when
they recited similar subject matter. See Bilski v. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk .... "); Ultramercial, Inc. v. Hulu,
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LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting,
offering for exchange, display, allowing access, and receiving payment
recited an abstraction); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data
retrieval, analysis, modification, generation, display, and transmission was
abstract). Therefore, we conclude the claims recite an abstract idea pursuant
to Step 2A, Prong One of the guidance. See Memorandum, Section III(A)(l)
(Prong One: Evaluate Whether the Claim Recites a Judicial Exception).
Step 2A, Prong Two (Integration into a Practical Application)
Under Prong Two of the Revised Guidance, we must determine
whether there are "additional elements that integrate the judicial exception
into a practical application." See MPEP § 2106.05(a)--(c), (e)--(h).
Appellants argue, "[T]he claims are directed to a specific, novel and
patentable system for efficiently generating implied orders to an electronic
trading system which improves the efficiency and computational capacity of
that system." Appeal Brief 4. However, as the Federal Circuit has
explained, a "claim for a new abstract idea is still an abstract idea."
Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016). Even assuming the technique claimed was "[g]roundbreaking,
innovative, or even brilliant," that would not be enough for the claimed
abstract idea to be patent eligible. See Ass 'n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Appellants argue, "While not entirely dispositive, as opposed to
preempting the entire idea of optimizing the computation of implied orders,
the claims, instead, are directed to a specific, novel and patentable system
for computing an optimized subset of implied orders according to a specific
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set of rules, i.e. if the claimed intermediate vector has no nonzero columns."
Appeal Brief 7.
We agree the Supreme Court has described "the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption." Alice, 134 S. Ct. at 2354.
However, characterizing pre-emption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. As our reviewing court has explained, "[t]he Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability" and "[ fJor this reason, questions on
preemption are inherent in and resolved by the§ 101 analysis." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
( citing Alice, 134 S. Ct. at 2354). And although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Id. Moreover, "[w]here a patent's
claims are deemed only to disclose patent ineligible subject matter under the
[Alice/Mayo] framework ... , preemption concerns are fully addressed and
made moot." Id.; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362-63 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701 (2015)("[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.").
Appellants argue:
[T]he claimed invention improves upon the technical field of
electronic trading and transaction processing by offering a novel
mechanism for efficiently and selectively computing implied
combinations, as opposed to merely computing all such
combinations, thereby improving the technical process of
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electronic order processing. See Appellants' Specification at
paras. 3-6, 17-20 and 29.
Appeal Brief 8.
Appellants' arguments are not persuasive because the claims merely
recite a method for trading securities within an electronic trading system
using a processor wherein the claims do not recite supporting technology for
improving a computer system. See Specification ,i,i 32-35 ("Terminals 301
include a central processor that controls the overall operation of the
computer, a user interface that allows the trader or market participant to
enter and/or receive information, and a communication device such as a
network card or a modem that allows communication with the electronic
trading system 300."); see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1335-36 (Fed. Cir. 2016):
([W]e find it relevant to ask whether the claims are directed to an
improvement to computer functionality versus being directed to
an abstract idea . . . the focus of the claims is on the specific
asserted improvement in computer capabilities (i.e., the self-
referential table for a computer database) or, instead, on a process
that qualifies as an "abstract idea" for which computers are
invoked merely as a tool.).
The claims do not recite an additional element or elements that reflect
an improvement in the functioning of a computer, or an improvement to
other technology or technical field. See Alice, 573 U.S. at 222 ("In holding
that the process was patent ineligible, we rejected the argument that
'implement[ing] a principle in some specific fashion' will 'automatically
fal[l] within the patentable subject matter of§ 101. "' ( alterations in original)
(quoting Parker v. Flook, 437 U.S. 584, 593 (1978))).
Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Memorandum, Section III(A)(2)
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(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the
Judicial Exception Is Integrated Into a Practical Application).
Step 2B
Alice/May~tep 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 217-18 (quoting Mayo,
566 U.S. at 72-73). Appellant contends, "[T]hat lack of preemption is
indicative of the claims including 'something more' under the two-part Alice
test." Appeal Brief 7.
We are not persuaded, as we find the claim does not include a specific
limitation or a combination of elements that amounts to significantly more
than the judicial exception itself. See Memorandum, Section III(B) (Step
2B: If the Claim Is Directed to a Judicial Exception, Evaluate Whether the
Claim Provides an Inventive Concept); see also Aatrix Software, Inc. v.
Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (Moore,
J., concurring) ("the 'inventive concept' cannot be the abstract idea itself');
see Final Rejection 3-4 ("The claim elements in addition to the abstract idea
are processor with memory that performs the steps of comparing and
organizing information for transmission to a remote computer.").
Accordingly, we conclude claims 1-24 are directed to a fundamental
economic practice, which is one of certain methods of organizing human
activity identified in the Memorandum and thus an abstract idea, and the
claims do not recite limitations that amount to significantly more than the
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abstract idea itself. We sustain the Examiner's § 101 rejection of claims 1-
24.
DECISION
The Examiner's patent ineligible subject matter rejection of claims 1-
24 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l). See 37 C.F.R.
§ l.136(a)(l)(v).
AFFIRMED
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