Ex Parte Lutnick et al

Patent Trial and Appeal Board

Jun 28, 2017

12204403 (P.T.A.B. Jun. 28, 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.
12/204,403 09/04/2008 Howard W. Lutnick 08-2224 4928
63710 7590 06/30/2017
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
06/30/2017 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
FISHKIND, BRIAN L. GAY, KEVIN FOLEY,
MARK MILLER, and CHARLES PLOTT
Appeal 2015-004381
Application 12/204,403
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 33, 35—60, 87—97, and 99-109, 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 2015-004381
Application 12/204,403
THE INVENTION
The Appellants’ claimed invention is directed to a trading platform
and trading method that allows access to pools of liquidity (Abstract).
Claim 33, reproduced below, is representative of the subject matter on
appeal.
33. A method comprising:
receiving, by a computer system of a marketplace, an
indication of a non-firm order from a first participant, in which
the non-firm order defines a side of a trade for a financial
instrument, in which the non-firm order must be confirmed with
a submitter of the non-firm order before execution of the trade
fulfilling at least a part of the non-firm order;
determining, by the computer system, that a matching
order to the non-firm order is securely stored in an order
management system used by a buy-side participant of the
marketplace and that an offer to enter into a trade that fulfills at
least a portion of each of the non-firm order and the matching
order is accepted, in which the matching order defines an
opposite side of the trade for the financial instrument, in which
the order management system is part of a dark pool of
liquidity accessible to the marketplace;
in response to the determination, transmitting, by the
computer system of the marketplace, a request for confirmation
of the non-firm order to the first participant;
receiving, by the computer system of the marketplace, an
indication of a confirmation of the non-firm order; and
facilitating, by the computer system of the marketplace,
execution of the trade fulfilling at least the portion of each of
the non-firm order and the matching order without initiating a
negotiation about a price or quantity of the trade.
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Appeal 2015-004381
Application 12/204,403
THE REJECTIONS
The Examiner relies on the following prior art:
Ordish et al. US 5,727,165 Mar. 10, 1998
Keith US 2007/0005488 Al Jan. 4, 2007
Bauchot et al. US 8,468,093 B2 June 18,2013
Luke Jeffs, ‘ ‘'Financial News, Dark pools of liquidity come into the
light ” hhtp://www.efinancialnews.corn/sott/story, (last visited Dec. 9,
2012) (Oct. 1,2007).
The following rejections are before us for review:
1. Claims 33, 35—60, 87—97, and 99-109 are rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
2. Claims 33, 35, 42-48, 50-60, 87, 88, 93-97, 99, 104, and 108
are rejected under 35 U.S.C. § 103(a) as unpatentable over Keith and
Bauchot.
3. Claims 36-41, 89-92, 100-102, 105, and 106 are rejected under
35 U.S.C. § 103(a) as unpatentable over Keith and Ordish.
4. Claims 49 and 107 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Keith and Jeffs.
3. Claim 103 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Keith, Ordish, and Jeffs.
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Appeal 2015-004381
Application 12/204,403
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
Rejection under 35 U.S.C. §101
The Appellants argue that the rejection of claim 33 under 35 U.S.C.
§ 101 is improper because the claim is not directed to an abstract idea or
fundamental economic practice, that the claim elements “add significantly
more” than the alleged abstract idea, and that the claim is rooted in
technology (Reply Br. 6—8).
In contrast, the Examiner has determined that the rejection is proper
(Ans. 35—38).
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 Bank Inti, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 33 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
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).
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Appeal 2015-004381
Application 12/204,403
(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” 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.
Here, we find that the claim is directed to the concept of executing a
trade order for a financial instrument. This is a fundamental economic
practice long prevalent in our system of commerce and a method of
organizing human activities in executing a trade order, and is an abstract
idea beyond the scope of § 101.
We next consider whether the additional elements of the claim, both
individually and as an ordered combination, 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.
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function. Here, the claim is
not rooted in technology, but rather the abstract concept identified above.
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Application 12/204,403
For these reasons the rejection of claim 33 is sustained. The Appellants
have provided the same arguments for the remaining claims and the rejection
of those claims is sustained as well.
Rejection under 35 U.S.C. § 103(a)
The Appellants argue in the Appeal Brief at pages 12—15 that the
rejection of claim 33 is improper because the cited prior art fails to disclose
the claim limitation requiring:
receiving, by a computer system of a marketplace, an indication of a
non-firm order from a first participant, in which the non-firm order
defines a side of a trade for a financial instrument, in which the non­
firm order must be confirmed with a submitter of the non-firm order
before execution of the trade fulfilling at least a part of the non-firm
order
(Claim 33).
In contrast, the Examiner has determined that the cited claim
limitation is shown by Keith at paras. 442, 652, and Figure 93B (steps 4220,
4225) (Ans. 3, 39).
We agree with the Appellants. The above-cited claim limitation
requires that “the non-firm order must be confirmed with a submitter of the
non-firm order before execution of the trade fulfilling at least a part of the
non-firm order”. Here, the above citations to the Keith reference fail to
specifically disclose this. For example, although Keith in Figure 93B (step
4220) does disclose the use of a limit order (a non-firm order), there is no
specific disclosure that the limit order “must be confirmed with a submitter
of the non-firm order before execution of the trade fulfilling at least a part of
the non-firm order.” For these reasons, the rejection of claim 33 and its
dependent claims is not sustained. Claim 87 contains a similar limitation
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Appeal 2015-004381
Application 12/204,403
and the rejection of this claim and its dependent claims is not sustained for
these same reasons.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims under 35U.S.C. § 101 as listed in the Rejections
section above.
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a) as listed in the Rejections
section above.
DECISION
The Examiner’s rejection of claims 33, 35—60, 87—97, and 99-109 is
sustained.
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
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