Ex Parte Lutnick et al

Patent Trial and Appeal Board

Jan 26, 2017

12239803 (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.
12/239,803 09/28/2008 Howard W. Lutnick 08-2247 4159
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 FISHKIND, BRIAN L. GAY, KEVIN FOLEY,
MARK MILLER, CHARLES PLOTT
Appeal 2016-008410
Application 12/239,803
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—5, 9, 10, 12—25, 27, 28, 50—54, 58, 59, 61—74, 76, and
77, 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 2016-008410
Application 12/239,803
THE INVENTION
The Appellants’ claimed invention is directed to a trading method that
allows access to pools of liquidity (Spec. 114). Claim 1, reproduced below,
is representative of the subject matter on appeal.
1. A method of operating a trading marketplace through which
financial instruments are traded comprising:
receiving, from a trading system by a processor of the trading
marketplace, an indication of an order that is pending in an order book
of the trading system, in which the order defines a side for trades for a
financial instrument, in which the trading system includes a
marketplace through which financial instruments are traded;
algorithmically determining, by the trading marketplace, a
portion of the order;
transmitting, by the trading marketplace to a buy-side
participant of the trading marketplace, a first query asking if a
matching order to the order is stored in an order management system
of the buy-side participant, in which the matching order defines an
opposite side of the trade for the financial instrument, in which the
matching order is part of a dark pool of liquidity stored by the order
management system and a plurality of other order management
systems accessible by the trading marketplace;
transmitting, by the trading marketplace to the buy-side
participant, a second query - asking if an offer to enter into a trade that
fulfills the portion of the order and at least part of the matching order
is accepted, in which the portion includes an algorithmically
determined portion that is expected by the trading marketplace to be
available in the order book at a future time;
receiving, by the trading marketplace from the buy-side
participant, an indication of an acceptance of the offer;
in response to receiving the indication of the acceptance,
transmitting, by the trading marketplace, an indication that the trade
should be executed to the trading system; and
receiving an indication of an agreement that the trading system
will execute the trade if the acceptance of the offer is identified unless
at least one of (1) the order is cancelled and (2) at least some of the
2
Appeal 2016-008410
Application 12/239,803
order is fulfilled such that the at least the part of the order is no longer
available when the acceptance is identified.
THE REJECTION
The following rejection is before us for review:
Claims 1-5, 9, 10, 12-25, 27, 28, 50-54, 58, 59, 61-74, 76, and 77 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 ; see also Reply Br. 2, 3). The Appellants also argue that even taking
the 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. 8—10; see also Reply Br. 3—7).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 2—14).
We agree with the Examiner.
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 2016-008410
Application 12/239,803
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
BankInt7, 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.
Here, we determine that the claim is directed to the concept of a
trading marketplace in which trading orders are matched, accepted, and
executed. This is a fundamental economic practice 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
4
Appeal 2016-008410
Application 12/239,803
the claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not. Here, the claim can be executed using generic computer components.
The Appellants have also argued that the claims are rooted in
computer technology to overcome a problem arising from computer
networks (App. Br. 9, 10; see also Reply Br. 5—7). We have considered but
disagree with this contention. Here, the claim is rooted in the concept of a
trading marketplace in which trading orders are matched, accepted, and
executed and that do not require more than a generic computer system.
For these reasons, the above rejection of claim 1 is sustained. The
Appellants have provided the same arguments for the remaining claims and
the rejection of these claims is accordingly sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims 1—5, 9, 10, 12—25, 27, 28, 50—54, 58, 59, 61—74, 76,
and 77 under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1—5, 9, 10, 12—25, 27, 28, 50—54,
58, 59, 61—74, 76, and 77 is sustained.
5
Appeal 2016-008410
Application 12/239,803
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
6