Ex Parte Lundberg et alDownload PDFPatent Trial and Appeal BoardAug 13, 201810424997 (P.T.A.B. Aug. 13, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/424,997 04/29/2003 23117 7590 08/15/2018 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Jonas Lundberg 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. 4010-17 3375 EXAMINER SHARVIN, DAVID P ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 08/15/2018 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONAS LUNDBERG and ULF AHLENIUS Appeal 2017-004941 1 Application 10/424,997 Technology Center 3600 Before HUBERT C. LORIN, ANTON W. PETTING, and MICHAEL W. KIM, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1, 4, 5, 7, 9, 12, 15, 16, 18, and 23-26. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6. The invention relates generally to an automated trading system for interest rate swap contracts. Spec. 1, lines 6-7. Independent claim 1 is illustrative: 1. A method in a computer-implemented automated data processing system, the data processing system comprising at 1 The Appellants identify Nasdaq Technology AB as the real party in interest. Appeal Br. 3. Appeal2017-004941 Application 10/424,997 least one computer for matching incoming data transaction processing requests input from a number of input terminals connected to the data processing system and a memory for storing active unmatched data transaction processing requests received by the data processing system, the method comprising the steps of: a) the computer-implemented automated data processing system receiving from an input terminal associated with a first party a first data transaction processing request message of a first transaction type identifying a first processing condition that includes a first value used to calculate a fixed transaction quantity that is provided to the first party at predetermined times; b) the computer-implemented automated data processing system receiving from a second counter-party a second data transaction processing request message of a second transaction type that is matchable to the first transaction type and identifies the first processing condition, where the fixed transaction quantity is obtained by the second counter-party at the predetermined times; c) the computer-implemented automated data processing system performing a matching between the first data transaction processing request and the second data transaction processing request based on the messages received in steps a) and b ), respectively; and d) the computer-implemented automated data processing system automatically creating a second processing condition associated with the first party and the second counter-party, the second processing condition includes a second value used to calculate a variable transaction quantity that is obtained by the first party and provided to the second counter-party at predetermined times upon the completion of the matching step c) thereby forming a combined data processing condition transaction including processing of the first data processing condition linked to processing of the second data processing condition between the first party and the second counter-party. The Examiner rejects claims 1, 4, 5, 7, 9, 12, 15, 16, 18, and 23-26 under 35 U.S.C. § 101 as directed to ineligible subject matter in the form of abstract ideas. 2 Appeal2017-004941 Application 10/424,997 We AFFIRM. ANALYSIS Principles of Law An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (internal citation and quotation marks omitted). In determining whether a claim falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court's two- step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 76-77 (2012)). In accordance with that framework, we first determine whether the claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356 ("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"); 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"); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing respondents' claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable subject matter"); Parker v. Flook, 437 U.S. 584, 594--95 (1978) ("Respondent's application simply provides a new and presumably better method for calculating alarm limit values"); Gottschalk v. Benson, 409 U.S. 3 Appeal2017-004941 Application 10/424,997 63, 64 (1972) ("They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals"). The following method is then used to determine whether what the claim is "directed to" is an abstract idea: [T]he decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen-what prior cases were about, and which way they were decided. See, e.g., Elec. Power Grp., 830 F.3d at 1353-54.[] That is the classic common law methodology for creating law when a single governing definitional context is not available. See generally Karl N. Llewellyn, The Common Law Tradition: Deciding Appeals (1960). This more flexible approach is also the approach employed by the Supreme Court. See Alice, 134 S. Ct. at 2355-57. We shall follow that approach here. Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016). The patent-ineligible end of the spectrum includes fundamental economic practices (Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611); mathematical formulas (Flook, 437 U.S. at 594--95); and basic tools of scientific and technological work (Benson, 409 U.S. at 69). On the patent- eligible side of the spectrum are physical and chemical processes, such as curing rubber (Diamond, 450 U.S. at 184 n.7), "tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores," and a process for manufacturing flour ( Gottschalk, 409 U.S. at 67) (internal quotations and citation omitted). If the claim is "directed to" a patent-ineligible abstract idea, we then consider the elements of the claim-both individually and as an ordered combination-to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. Alice, 134 4 Appeal2017-004941 Application 10/424,997 S. Ct. at 2355. This is a search for an "inventive concept"-an element or combination of elements sufficient to ensure that the claim amounts to "significantly more" than the abstract idea itself. Id. (internal citation and quotation marks omitted). Analysis The Examiner finds the claims "are directed to a method of matching transaction requests between at least two parties," also find that this is known as "trading contract[s] ... in an exchange." Final Act. 5. The Examiner finds the claims are similar to others claims found abstract: comparing new and stored information and using rules to identifiy [sic] options ( an idea of itself, see SmartGene ), using categories to organize, store, and transmit information ( an idea of itself, see Cyberfone ), creating a contractual relationship (fundamental economic practice and a method of organizing human activity, see buySafe), and computing a price for the sale of a fixed income asset and generating a financial analysis output ( a method of organizing human activity and a mathematical relationship, see Bancorp). Final Act. 5. The Appellants do not address the Examiner's finding of the similar claims in other cases, either by concept or case. Instead, using claim 23 as a representative claim, the Appellants argue claim 23 is not an abstract idea, because the claim recites far more words than those that make up the idea to which the Examiner finds the claim is directed. Appeal Br. 12; see also Reply Br. 3 (characterizing the Examiner's treatment of claims as "overgeneraliz[ation ]," and "90% of claim 23 sets forth specific technical features that are considerably more specific and tangible than 'matching transaction requests between at least two parties"'). We are not persuaded by the Appellants' arguments, because the number of words to which a claim is directed is not the standard employed in 5 Appeal2017-004941 Application 10/424,997 determining what a claim is directed to. See Amdocs, 841 F.3d at 1294. Instead, when we analyze the claim language, we are persuaded that the Examiner has shown sufficiently that most of the claim language supports the proposition that the claims "are directed to a method of matching transaction requests between at least two parties," also known as "trading contract[ s] ... in an exchange" (Final Act. 5) for the reasons set forth below. We are also unpersuaded by the Appellants' argument that the claim is not abstract because it does not meet a dictionary definition of "abstract." Appeal Br. 17; see also Reply Br. 4 ("claim 23, read as a whole, cannot be characterized as 'disassociated from any specific instance,' 'insufficiently factual,' 'theoretical,' and 'expressing a quality apart from an object"'). Instead of determining whether the claims match a dictionary definition of "abstract," our reviewing courts have directed us to take a different approach, which we have summarized above in the "Principles o(Law" section. In addition, claims involving data collection, analysis, and display are directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and displaying certain results of the collection and analysis" are "a familiar class of claims 'directed to' a patent-ineligible concept"); see also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than 6 Appeal2017-004941 Application 10/424,997 abstract." SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018) (internal citation omitted). Instead of advancing arguments relative to the Examiner's findings about cases to which the claims are similar, the Appellants argue, "[ w ]hether this language authored by the Examiner is relevant to different claims at issue in the buySafe, Alice, Electric Power Group, and Bancorp cases is beside the point because this part of the Answer fails to address the actual language of claim 23." Reply Br. 4. Claim 23 recites a computer and memory to perform the steps of receiving messages describing a "first transaction type" and "a second transaction type," "matching" the two transactions to each other, and forming "a combined data processing condition transaction" by creating "a second processing condition." The "first transaction type" and "second transaction type" identify a "first processing condition." The terms "first transaction type," "second transaction type," "first processing condition," "second processing condition," and "combined data processing condition transaction" do not appear in the Specification or original claims. Even the terms "transaction type" and "condition" alone do not appear in the Specification or original claims. In support of the two claimed receiving steps, the Appellants direct us to page 6, lines 1 to 6, of the Specification. Appeal Br. 6-7. That section of the Specification describes, in its entirety: First, an order is placed by a first trader. In this example a trader A enters an order to sell a fixed interest rate instrument and at the same time buy a floating rate instrument. For example, an order to sell 100 contracts of a five year fixed interest rate instrument with six-monthly payments and at the same time buy a corresponding number of 5-year floating interest rate instrument 7 Appeal2017-004941 Application 10/424,997 contracts. The sell order (and its implied buy order) is then transmitted to the central matching system, where it is received step 301. Spec. 6, lines 1---6. The first transaction type is, thus, a sell order of a fixed interest rate instrument, a second transaction type is a buy order of a floating interest rate instrument, and the combined data processing condition transaction is, thus, an interest rate swap contract to trade the fixed and floating interest rate payment streams. The Specification also describes that "[a]lthough there are automated systems for trading Swap contracts and interest rate Swap contracts in particular; most of such contracts are as stated above still traded manually over the phone." Spec. 3, lines 1-3. The claimed system is, therefore, a computer to trade interest rate swaps, which is admitted by the Appellants, in the aforementioned portion of the Specification, as being previously available. This corresponds to the Examiner's finding that the claims "are directed to a method of matching transaction requests between at least two parties," and trading contracts in an exchange. Final Act. 5. Nothing recited in the claim falls outside the scope of the ideas to which the Examiner says the claims are directed, because each recited claim element is part of a computer that trades interest rate swaps, or "matching transaction requests between at least two parties," which is essentially all that claim 23 recites. The Appellants' argument is, thus, unpersuasive because the Examiner has considered the full scope of the claims, including claim 23, and finds everything recited in the claim falls within the scope of the abstract idea to which the claim is directed, and finding which we are persuaded is correct. 8 Appeal2017-004941 Application 10/424,997 Because the Appellants have not shown error in the Examiner's finding that the claims are directed to abstract ideas, we tum to the next step in the analysis, and look for an "inventive concept" or "something more" which could transform the abstract ideas into eligible subject matter under 35 U.S.C. § 101. We are not persuaded by the Appellants' argument that claim 23 "recites numerous detailed technical features," including a computer that receives requests, memory to store the requests, "matching" the requests, creating a second processing condition, and forming a combined data processing condition transaction. Appeal Br. 20-21. Receiving, storing, and matching data records are standard functions any general purpose computer is capable of performing without sophisticated programming, as noted in the Examiner's findings. Final Act. 5---6. The creating of the "second processing condition" and forming of the combined transaction is described by the Specification as involving "adding to the matched fixed interest rate contract leg its implied floating interest rate contract leg." Spec. 6, lines 19--21 ( cited at Appeal Br. 7). The Specification further describes that parameters are input and checked against rules, and the "system then associates the new fixed interest rate contract with a corresponding floating interest rate contract." Spec. 7, line 28 to 8, line 18 ( cited at Appeal Br. 7). Receiving data, comparing it to other stored data (rules), and linking data together are also steps easily performed by general purpose computers. We, thus, find that claim 23 describes an essentially previously- known system to trade interest rate swaps (Spec. 3, lines 1-3), by receiving, analyzing, editing, and storing data. The operations of storing, analyzing, 9 Appeal2017-004941 Application 10/424,997 receiving, and writing data are primitive computer operations found in any computer system. See In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms 'processing,' 'receiving,' and 'storing,' discussed below, those functions can be achieved by any general purpose computer without special programming"); see also Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that considering claims reciting data retrieval, analysis, modification, generation, display, and transmission as an "'ordered combination"' reveals that they "amount to 'nothing significantly more' than an instruction to apply [an] abstract idea" using generic computer technology) (internal citation omitted). "[ A ]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible .... The bare fact that a computer exists in the physical rather than purely conceptual realm is beside the point." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations and quotation marks omitted). The Appellants also argue the claims do not pre-empt or monopolize the abstract idea to which the claims are directed. Appeal Br. 18-19; see also Reply Br. 5. "While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the ecommerce setting do not make them any less abstract"). And, "[ w ]here a patent's claims are deemed only to disclose patent ineligible subject matter under the 10 Appeal2017-004941 Application 10/424,997 Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot." Ariosa, 788 F.3d at 1379. We, thus, discern no inventive concept or claim features that transform the abstract ideas to which the claims are directed into eligible subject matter. For this reason, we sustain the Examiner's rejection of claims 1, 4, 5, 7, 9, 12, 15, 16, 18, and 23-26 under 35 U.S.C. § 101 as directed to ineligible subject matter. DECISION We AFFIRM the rejection of claims 1, 4, 5, 7, 9, 12, 15, 16, 18, and 23-26 under 35 U.S.C. § 101. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation