Ex Parte ASHER et al

Patent Trial and Appeal Board

Feb 21, 2017

13245142 (P.T.A.B. Feb. 21, 2017)

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.
13/245,142 09/26/2011 JOSEPH M. ASHER 04-6191-C3 1099
63710 7590
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
patentdocketing @ cantor.com
lkoro vich @ c antor. com
phowe @ cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH M. ASHER and
HOWARD W. LUTNICK
Appeal 2014-008684
Application 13/245,1421
Technology Center 3600
Before HUBERT C. LORIN, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joseph Asher, et al. (Appellants) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1—28. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM and enter a NEW GROUND OF REJECTION.
1 The Appellants identify CFPH, L.P., as the real party in interest. Br. 4.
Appeal 2014-008684
Application 13/245,142
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method comprising:
listing, by a computing device of a secondary market for trading
financial instruments, a derivate contract for secondary trading;
providing, by the computing device, an interface through which
a plurality of sellers may submit information regarding the derivative
contract, in which the derivative contract relates to one or more
respective rights in one or more respective revenues of one or more
respective entertainment events produced by one or more respective
entertainment companies;
receiving, from the sellers by the computing device, respective
offers to sell respective numbers of the derivative contract for
respective prices, in which a holder of the derivative contract owns a
right to a first payment from a first entertainment company when a
first period of time has ended, in which the payment includes a
portion of a revenue earned by a first entertainment event produced by
the first entertainment company during at least a portion of the first
period of time, in which the first derivative contract does not grant an
equity right in the first entertainment company to the holder;
presenting, by the computing device, an indication of the first
derivative contract to a plurality of potential buyers, in which the
indication identifies the first period of time, the first entertainment
event, and the portion of the revenue;
receiving, from a buyer by the computing device, a bid of a first
amount of money to buy a first amount of the derivative contracts for
a first price;
in response to receiving the offers and the bid, performing, by
the computing device, an exchange of the first derivative contract
between the buyer and the at least one of the plurality of sellers; and
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Appeal 2014-008684
Application 13/245,142
initiating, by the computing device, a provision of the first
payment to the buyer from the first entertainment company when the
first period of time has ended.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Reiser US 5,950,176 Sep. 7, 1999
Andrus US 2002/0156709 A1 Oct. 24,2002
Kaufman US 7,062,457 B1 Jun. 13, 2006
Asher US 7,774,258 B2 Aug. 10,2010
The following rejections are before us for review:
1. Claims 1—28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaufman, Andrus, and Keiser.
2. Claims 1—28 are rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims
56—68 of Asher.
ISSUES
Did the Examiner err in rejecting claims 1—28 under 35 U.S.C.
§103 (a) as being unpatentable over Kaufman, Andrus, and Keiser?
Did the Examiner err in rejecting claims 1—28 under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 56—68 of Asher?
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Appeal 2014-008684
Application 13/245,142
ANALYSIS
The rejection of claims 1—28 under 35 U.S.C. §103 (a) as being unpatentable
over Kaufman, Andrus, and Keiser.
Both independent claims (method claim 1 and apparatus claim 25)
include a limitation to receiving “from a buyer, a bid of a first amount of
money to buy a first amount of the derivative contracts for a first price.”
The Examiner takes the position that said limitation is disclosed in
Kaufman at col. 7, lines 21—30; col. 9, lines 53—64; and, col. 17, lines 14—27.
Final Act. 10. The Appellants dispute this. “[Tjthere is no teaching or
suggestion of bidding in the cited portions and therefore the Final Office
Action fails to make a prima facie showing of obviousness of this
limitation.” Br. 19. We agree.
The relied-upon Kaufman disclosures are reproduced at Br. 17—18.
We see no disclosure there of bids.
In response to the Appellants’ argument, the Examiner indicates that,
e.g., col. 17, lines 6-20 “discloses [ ] receiving a buyef’s input of a price of
their choice for the proposed transaction” and suggests that that choice
amounts to a bidding. Ans. 24. But that is not a bid. A bid is an offer to pay
a certain amount as the price one will pay or accept. See Webster’s New
World Dictionary 136. (3rd Ed. 1988.)(Entry 3. for “bid.”) What Kaufman
discloses is not an offer but the price the buyer has chosen to pay.
For the foregoing reasons, a prima facie case of obviousness for the
claimed subject matter has not been made out in the first instance by a
preponderance of the evidence. Accordingly, the rejection is not sustained.
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Application 13/245,142
The rejection of claims 1—28 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 56—68
of Asher.
The rejection is sustained because the Appellants have not contested
it.
NEW GROUND OF REJECTION
Claims 1—28 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed to funding. Funding is a fundamental economic
practice. As such it is an abstract idea.
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.”’ Id. (alteration in original) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
We see nothing in the subject matter claimed that transforms the
abstract idea of funding into an inventive concept.
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Application 13/245,142
The method of claim 1 sets out seven steps for (1) listing a derivative
contract; (2) providing an ability for sellers to submit information about the
derivative contract; (3) receiving offers to sell numbers of the derivative
contract for respective prices; (4) presenting an indication of the first
derivative contract to a plurality of potential buyers; (5) receiving a bid of a
first amount of money to buy a first amount of the derivative contracts for a
first price; (6) performing an exchange of the first derivative contract
between the buyer and a seller; and, (7) initiating a provision of the first
payment to the buyer.
The steps spell out a particular funding arrangement that does little to
transform the funding abstract idea. None of these individual steps, viewed
“both individually and ‘as an ordered combination,’” transform the nature of
the claim into patent-eligible subject matter. See Alice, 134 S.Ct. at 2355
{quoting Mayo, 132 S.Ct. at 1297, 1298). The funding arrangement is
claimed so as to provide funding for an entertainment event. But that simply
gives the funding arrangement a practical application. Cf. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (“The
Court [Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the
recitation of a practical application for the calculation could alone make the
invention patentable.”).
Finally, we note that claim 1 calls for the use of a computing device,
as well as an interface. But any general-purpose computer available at the
time the application was filed would have satisfied these limitations. The
Specification supports that view. See Spec. 9:4—16. “[T]he mere recitation
of a generic computer cannot transform a patent-ineligible abstract idea into
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Application 13/245,142
a patent-eligible invention. Stating an abstract idea ‘while adding the words
‘apply it” is not enough for patent eligibility.” Alice, 134 S. Ct. at 2358.
For the foregoing reasons, we find that claim 1 covers claimed subject
matter that is judicially-excepted from patent eligibility under § 101. The
other independent claim — apparatus claim 25 parallels claim 1 — similarly
covers claimed subject matter that is judicially-excepted from patent
eligibility under § 101. The dependent claims describe various funding-
related schemes and entertainment event details which do little to patentably
transform the abstract idea.
Therefore, we enter a new ground of rejection of claims 1—28 under
35U.S.C. § 101.
CONCLUSIONS
The rejection of claims 1—28 under 35 U.S.C. § 103(a) as being
unpatentable over Kaufman, Andrus, and Keiser is reversed.
The rejection of claims 1—28 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 56—68
of Asher is affirmed.
Claims 1—28 are newly rejected under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
DECISION
The decision of the Examiner to reject claims 1—28 is affirmed.
Claims 1—28 are newly rejected.
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Application 13/245,142
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
AFFIRMED: 37 C.F.R, $ 41.50(b)
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