Ex Parte Lutnick et al

Patent Trial and Appeal Board

Jan 26, 2017

12237958 (P.T.A.B. Jan. 26, 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.
12/237,958 09/25/2008 Howard W. Lutnick 08-2234 1781
63710 7590
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
SHRESTHA, BIJENDRA K
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
01/30/2017 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 HOWARD W. LUTNICK, DEAN P. ALDERUCCI,
ANDREW FISHKING, BRIAN L. GAY, KEVIN FOLEY,
MARK MILLER, and CHARLES PLOTT
Appeal 2016-008406
Application 12/237,958
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—9 and 40-47, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2016-008406
Application 12/237,958
THE INVENTION
The Appellants’ claimed invention is directed to a trading method
(Spec. 176). Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A method of operating a marketplace comprising:
transmitting, by a processor of the marketplace, a plurality of
sets of queries to a plurality of buy-side participants of the
marketplace,
in which each set of queries asks about a respective order,
in which each participant of the plurality of buy-side
participants is associated with a respective order management system
of a plurality of order management systems that collectively store a
dark pool of liquidity that the sets of queries access,
in which each query of each set of queries asks a respective
buy-side participant of the plurality of buy-side participants (a) if a
respective matching order to the respective order is stored in a
respective order management system and (b) if the respective buy-side
participant accepts a respective offer to enter into a respective trade
that fulfills at least a portion of each of the respective order and the
respective matching order;
for each query, if a respective buy-side participant accepts the
respective offer, facilitating, by the processor of the marketplace, an
execution of the respective trade;
based on results from the plurality of sets of queries, assigning,
by the marketplace, each of the plurality of buy-side participants to a
respective one of a plurality of risk pools, in which each risk pool
corresponds to at least one rate of positive responses to offers to enter
into trades;
transmitting an indication of the plurality of risk pools, in which
each risk pool corresponds to a range of positive response rates to
offers for acceptance of respective orders, and in which each risk pool
includes a number of the buy-side participants that correspond to
respective positive response rates in the respective ranges;
receiving, by the marketplace from a submitter of a first order,
an identification of one or more risk pools to which queries regarding
the first order should not be transmitted;
2
Appeal 2016-008406
Application 12/237,958
in response to receiving the indication of the one or more risk
pools, querying a set of buy-side participants that are not in the
identified one or more risk pools to find a matching order
to the order in the dark pool of liquidity;
determining that the matching order is stored in an order
management system of one of the set of buy-side participants and that
the one of the set of buy-side participants accepts an offer to enter into
a trade fulfilling at least part of the order; and
in response to determining that the matching order is stored in
the order management system of the one of the set, facilitating an
execution of the trade without a negotiation about a price of the trade
and without a negotiation about a quantity of a financial instruments
in the trade.
THE REJECTION
The following rejection is before us for review:
Claims 1—9 and 40-47 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.1
ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the rejection fails to show that the claim is directed to an abstract idea (App.
Br. 7, 8, Reply Br. 2, 3). The Appellants also argue that even taking the
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
3
Appeal 2016-008406
Application 12/237,958
claim to be directed to an abstract idea, that the limitations of the claim “add
significantly more” to any abstract idea, and that the claim is rooted in
technology (App. Br. 9, 10, Reply Br. 3—5).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 2—13).
We agree with the Examiner.
Under 35 U.S.C. § 101, 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 an implicit exception: “laws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 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., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
This is a search for an “inventive concept,” i.e., an element or combination
of elements sufficient to ensure that the claim amounts to “significantly
more” than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id. at 2358.
4
Appeal 2016-008406
Application 12/237,958
Here, we determine that the claim is directed to the concept of
facilitating a trade between parties by querying buy-side participants,
matching orders, and executing the trade, taking risking pools into account.
This is a fundamental economic practice of trading long prevalent in our
system of commerce, and is an abstract idea beyond the scope of § 101.
We next consider whether additional elements transform the nature of
the claim into a patent-eligible application of the abstract idea, e.g., whether
the claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not. The claim can be implemented using only generic computer
components performing generic functions.
The Appellants have argued that the claims are rooted in computer
technology to overcome a problem arising from computer networks (App. 9,
10, Reply Br. 3—5). We have considered, but disagree with this contention.
Here, the claim is rooted in the execution of a trade and does not require
more than a generic computer system.
For these reasons, the rejection of claim 1 is sustained. The
Appellants have presented the same arguments for the remaining claims and
the rejection of these claims is sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims 1—9 and 40-47 under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1—9 and 40-47 is sustained.
5
Appeal 2016-008406
Application 12/237,958
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
6