Ex Parte Karavousanos

Patent Trial and Appeal Board

Sep 25, 2017

12192306 (P.T.A.B. Sep. 25, 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.
12/192,306 08/15/2008 Alex Karavousanos A0008-1001 2487
144359 7590
Blueshift IP LLC
1 Broadway, 14th Floor
Cambridge, MA 02142
09/27/2017 EXAMINER
AMELUNXEN, BARBARA J
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
mail@blueshiftip.com
eofficeaction @ appcoll.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEX KARAVOUSANOS
Appeal 2015-006520
Application 12/192,3061
Technology Center 3600
Before, JOSEPH A. FISCHETTI, MICHAEL R. ZECHER, and
JAMES A. WORTH, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’
non-final rejection of claims 1— 20. We have jurisdiction under 35 U.S.C.
§ 6(b).
1 Appellant identifies Ariston Advisors, LLC as the real party in interest.
Appeal Br. 1.
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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant’s claims are directed to a stock portfolio balancing system
that identifies two sets of stocks to compare to each other (Spec. 1 5).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method performed by at least one
computer processor executing computer program instructions tangibly
stored on a first non-transitory computer-readable medium, the
method comprising:
(A) identifying a screen defining at least one criterion
applicable to a tradable financial instrument, wherein the
screen is tangibly stored in a first data structure on a
second non-transitory computer-readable medium;
(B) applying the screen to a database of tradable financial
instruments at a first time to identify a first plurality
of tradable financial instruments which satisfy the at
least one criterion and to store a second data structure
representing the first plurality of tradable financial
instruments on a third non-transitory computer-readable
medium;
(C) applying the screen to the database at a second time to
identify a second plurality of tradable financial
instruments which satisfy the at least one criterion and
to store a third data structure representing the second
plurality of tradable financial instruments on a fourth
non-transitory computer-readable medium;
(D) comparing the second data structure to the third data
structure to compare the first plurality of tradable
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financial instruments to the second plurality of tradable
financial instruments;
(E) identifying at least one tradable financial instrument to
buy based on the comparison; and
(F) identifying at least one tradable financial instrument to
sell based on the comparison.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Martone US 2002/0138389 A1 Sept. 26, 2002
The following rejections are before us for review.
Claims 1—20 are rejected under 35 U.S.C. § 101.
Claims 1— 20 are rejected under 35 U.S.C. § 102(b) as anticipated by
Martone.
FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 5-7 and 13-
17 of the Non-Final Action concerning the rejection made under 35 U.S.C. §
101, and concerning the rejection made under 35 U.S.C. § 102(b) only as to
claims 12-20.
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2. Appellant defines a “screen” as “a predetermined set of criteria for
filtering (‘screening’) out stocks which do not match the pre-determined set
of criteria.” (Appeal Br. 29)
3. Martone discloses
Model balancing operations are used across or
multiple accounts. Here, the user creates models
that contain a list of securities and a corresponding
weight (% to hold). When accounts are balanced
against a model, the holdings and corresponding
weight (relative to the portfolio) are compared
with the securities and weights in the model.
1197
ANALYSIS
35 U.S.C. § 102(b) REJECTION
Claims 1 and 8
Concerning claim 1, Appellant argues,
Martone at most teaches comparing the current
holdings in a portfolio against a model.
Martone’s model defines a target asset allocation
(such as 60% of your money should be invested in
stocks and 40% in bonds), not a specified set or list
of specific stocks. Martone’s comparison,
therefore, is not a comparison of two lists of
individual financial instruments produced by
applying a screen to a database, as expressly
required by claim 1. In fact, the problem that
Martone intends to solve is that of maintaining
target proportions of assets within a portfolio over
time by buying and/or selling assets within that
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portfolio as needed to maintain the target
proportions of those assets. Nowhere does
Martone teach or suggest even the desirability of
maintaining individual holdings (rather than
proportions of holdings) which satisfy a screen
over time.
(Appeal Br. 36-37).
The Examiner, however, found that Martone discloses:
(D) comparing the second data structure to the
third data structure to compare the first plurality of
tradable financial instruments to the second
plurality of tradable financial instruments (see
Martone: 31, 39, (H, 0013, 0014, 0173, 0197]);....
(Non-Final Act. 9).2
We agree with the Appellant. According to the claims, the first
plurality of tradeable financial instruments results from applying the screen
to a database of tradable financial instruments at a first time, and the second
plurality of tradable instruments results from applying the screen to the
database of tradable financial instmments at a second time. The second data
structure is where the first plurality of tradable financial instruments is
stored, and the third data structure is where the second plurality of tradable
financial instruments is stored. The claim requires that the results of the first
in time screening and the second in time screening be compared, i.e.,
“comparing the second data structure to the third data structure to compare
2 All references to the Non-Final Action are to the Non-Final Action entered
August 22, 2014.
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the first plurality of tradable financial instruments to the second plurality of
tradable financial instruments.” Appellant defines the claim term “screen”
as “a predetermined set of criteria for filtering (‘screening’) out stocks which
do not match the pre-determined set of criteria.” (FF. 2).
The Examiner maps the claimed “screen” to the model in Martone3
(Non-Final Act. 8, citing, e.g., Martone H 221, 226). The Examiner maps
the comparing step to paragraphs 13, 14, 173 and 197 of Martone (Non-
Final Act. 9). Only paragraphs 14 and 197 disclose comparing. In
paragraph 14 the comparing is done between a “comparative index
evaluator” and the selected accounts in the user’s financial portfolio. In
paragraph 197, the comparing occurs between a model and the portfolio, i.e.,
“[w]hen accounts are balanced against a model, the holdings and
corresponding weight (relative to the portfolio) are compared with the
securities and weights in the model.” (FF. 3). In each instance, the
comparison is not between two resultant groups of tradable financial
instruments which have been screened, as required by the claims. Instead,
the selected user accounts are evaluated against one of a “comparative index
evaluator” and a model. In any case, the evaluation does not occur at first
3 Although the Non-Final Action cites to paragraphs 192, 221 and 266 of
Martone as disclosing a “screen” (Non-Final Act. 8), paragraph 192
discloses a customization of asset allocation that does not use screen
matching.
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and second time frames to achieve results which are further compared with
each other.
Therefore, we will not sustain the rejection of independent claim 1.
Independent claim 8 contains similar limitations as found in claim 1.
Because claims 2-7 and 9-11 depend from one of claims 1 and 8, and
because we cannot sustain the rejection of claims 1 and 8, the rejection of
claims 2-7, and 9-11 likewise cannot be sustained. “A claim is anticipated
only if each and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art reference.” Verdegaal
Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987),
cert, denied, 484 U.S. 827 (1987).
Independent claims 12 and 164 differ in scope from independent
claims 1 and 8 in that each of the former claims does not require applying a
4 16. A computer-implemented system comprising:
means for receiving first input from a user defining a first
plurality of tradable financial instruments;
means for receiving second input from the user defining a
second plurality of tradable financial instruments;
means for comparing the first plurality of tradable financial
instruments to the second plurality of tradable financial
instruments;
means for identifying at least one tradable financial
instrument to buy based on the comparison;
means for identifying at least one tradable financial
instrument to sell based on the comparison;
means for buying the at least one tradable financial instrument
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“screen”. Rather, these claims are directed to an alternative embodiment
(Appeal Br. 18, citing, Spec. 140) only requiring comparing two stock lists.
Thus, Appellant’s sole argument that, “(U.S. Pat. App. Pub. No.
2002/0138389 [Martone]) does not teach or suggest generating lists of
individual financial instruments by applying the same screen to a database at
two different points in time and then comparing the resulting lists of
individual financial instruments to each other to generate buy and/or sell
orders based on the comparison (emphasis added)” (Appeal Br. 36-37), does
not apply to these claims. Therefore, we find no error with the Examiner’s
finding that the comparison between Martone’s model list (first plurality of
tradable financial instruments) and a user portfolio list (second plurality of
tradable financial instruments) (Non-Final Act. 14, citing, Martone 1197),
meets the claimed “comparing” function of claims 12 and 16.
We also affirm the rejections of dependent claims 13-15 and 17-20
because Appellant has not challenged such with any reasonable specificity
{see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).
35 U.S.C. § 101 REJECTION
Claims 1—20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
to buy; and
means for selling the at least one tradable financial
instrument to sell.
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We will sustain the rejection of claims 1-20 under 35 U.S.C. § 101.
Claim 1 is representative of the independent claims before us on
appeal, which contain similar if not broader limitations, and is a method
claim reciting, in pertinent part, the steps, viz.
(A) identifying a screen defining at least one criterion
applicable to a tradable financial instrument, wherein the
screen is tangibly stored in a first data structure on a
second non-transitory computer-readable medium;
(B) applying the screen to a database of tradable financial
instruments at a first time to identify a first plurality
of tradable financial instruments which satisfy the at
least one criterion and to store a second data structure
representing the first plurality of tradable financial
instruments on a third non-transitory computer-readable medium,
(C) applying the screen to the database at a second time to
identify a second plurality of tradable financial
instruments which satisfy the at least one criterion and
to store a third data structure representing the second
plurality of tradable financial instruments on a fourth
non-transitory computer-readable medium;
(D) comparing the second data structure to the third data
structure to compare the first plurality of tradable
financial instruments to the second plurality of tradable
financial instruments;
(E) identifying at least one tradable financial instrument to
buy based on the comparison; and
(F) identifying at least one tradable financial instrument to
sell based on the comparison.
Claim 1. Appeal Br. 40-41.
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The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis as 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.”
Alice Corp., Pty. Ltd. v CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012)).
To perform this two-part test, we must first determine whether the
claims at issue are directed to a patent-ineligible concept, such as an abstract
idea.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
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The six steps in claim 1 result in identifying at least one tradable
financial instrument to buy and sell based on at least one comparison. The
Specification at paragraph 2 recites:
Researching stocks to purchase can be a daunting
task, due in part to the large number of publicly-traded stocks
and the number of criteria according to which such stocks may be
evaluated. Financial web sites often allow users to search for
stocks according to any one or more of a large number of
criteria, including but not limited to the stock's industry,
sector, current price, 52-week high or low, price-to-eamings
ratio, market capitalization, debt-to-capital ratio, whether the
stock’s Trailing Twelve Month (TTM) P/E ratio is less than the
industry average, whether the stock's Price/Sales TTM ratio is
less than or equal to the industry average, whether the stock's
forward-looking PEG ratio (the P/E calculated with reference to
the consensus EPS estimate for the next fiscal year divided by
the consensus long-term projected EPS growth rate) is less than
2.00, whether the stock's Average Rating is less than 2.00 and is
less than or equal to what it was four weeks ago, and whether
the stock's consensus EPS estimate for the current quarter is
higher today than it was within the past four weeks.
Thus, all this evidence shows that claim 1 is directed to identifying at least
one tradable financial instrument to buy and sell based on at least one
comparison. It follows from prior Supreme Court cases, and Gottschalk v.
Benson, 409 U.S. 63 (1972) in particular, that the claims at issue here are
directed to an abstract idea. As found supra, the claims are directed to
identifying at least one tradable financial instrument to buy and sell based on
at least one comparison, which is fundamental economic practice because
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owning profitable equities is a basic premise of economics. The patent-
ineligible end of the 35 U.S.C. § 101 spectrum includes fundamental
economic practices. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2355—1257.
Also, the process of identifying a screen with at least one criteria,
applying the screen at a first time to information to identify a first plurality
of items of information, applying the screen a second time to the information
to identify a second plurality of items of information, and comparing the first
and second plurality of items of information, is an algorithm which is an
abstraction, and, thus, is patent ineligible. “[W]e have treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016). Thus, identifying at least one tradable financial instrument to buy
and sell based on a reiterative comparison is an “abstract idea” beyond the
scope of § 101.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case, ft is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
performing a mathematical algorithm in Gottschalk and the concept of
identifying at least one tradable financial instrument to buy and sell based on
at least one comparison, at issue here. Both are squarely within the realm of
“abstract ideas” as the Court has used that term. See Alice, 134 S. Ct. at
2357. That the claims do not preempt all forms of the abstraction or may be
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limited to the abstract idea in the financial services industry, does not make
them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1360-61 (Fed. Cir. 2015). Perhaps more to the point, claim 1 does no
more than seek to screen information to cull out non-profitable items from
profitable ones. Screening for quality in products is a disembodied concept
that is the epitome of abstraction.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (alterations in original) (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice, 134 S. Ct. at 2359. They do not.
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Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data and compute a result from a database amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s claims simply
recite the concept of identifying at least one tradable financial instrument to
buy and sell based on at least one comparison. The method claims do not,
for example, purport to improve the functioning of the computer itself. Nor
do they effect an improvement in any other technology or technical field.
Instead, the claims at issue amount to nothing significantly more than
instructions to apply the abstract idea of a identifying at least one tradable
financial instrument to buy and sell based on at least one comparison, on a
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
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computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice, 134 S. Ct._at 2360 (alterations in original).
With these findings, we turn to Appellant’s arguments. Appellant
argues:
claim 1 includes limitations which are not
anticipated or suggested by the relied-upon
Martone reference. Instead, claim 1 recites
limitations which are both novel and nonobvious.
Such novel and nonobvious limitations cannot
merely constitute ‘functions that are well-
understood, routine, and conventional,’ because
limitations which are novel and nonobvious are, by
definition, not known in the relevant field.
(Appeal Br. 27).
We are not persuaded by Appellant’s argument because the standard
for patentability under 35 U.S.C. § 103(a) is obviousness, the standard for
patentability under 35 U.S.C. § 102 is novelty, and the standard for patent
eligibility under 35 U.S.C. § 101 is abstract idea. Each of these standards is
separately required to be met before patentability can be conferred on
invention, which is not the case here based on the latter standard. “The
‘novelty’ of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.” Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981).
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Appellant’s also argue:
the examples published by the USPTO include the
claims found to be patent eligible by the Court of
Appeals for the Federal Circuit (CAFC) in DDR
Holdings, LLC v. Hotels.com et al., 113 USPQ2d
1097 (Fed. Circ. 2014). Such claims recite generic
computer hardware, such as a ‘computer store’ and
a ‘computer server’, yet were found to be patent
eligible by the CAFC.
(Appeal Br. 27-28).
We disagree with Appellant. Unlike the claims before us here, which
only generally recite the use of a computer processor generically executing
computer program instructions, the claims in DDR Holdings “specify how
interactions with the Internet are manipulated to yield a desired result — a
result that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). Here, Appellant’s
claims implement the abstract idea of collecting/inputting data, analyzing
financial data, and outputting data with routine, conventional activity.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1—20 under
35U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1—11 under 35
U.S.C. § 102(b), and did not err in rejecting claims 12-20 under 35 U.S.C. §
102(b).
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DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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