Ex Parte Lutnick et al

Patent Trial and Appeal Board

Nov 2, 2017

12204403 (P.T.A.B. Nov. 2, 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 11/06/2017
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
11/06/2017 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 REQUEST FOR REHEARING
This is a decision on rehearing in Appeal Number 2015-004381. We
have jurisdiction under 35 U.S.C. § 6(b).
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision, or to responses
to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R.
§ 41.52. Appellants may also present a new argument based upon a recent
relevant decision of either the Board or a federal court. 37 C.F.R.
§ 41.52(a)(2).
Appeal 2015-004381
Application 12/204,403
ANALYSIS
The Appellants argue that the Decision mailed June 30, 2017 has five
points that were misapprehended or overlooked.
The Appellants argue: 1) that the final rejection failed to make a
prima facie showing of abstractness, 2) that the Decision made a new
grounds of rejection in articulating the alleged abstract idea and fails to
make a prima facie case, 3) that the claims are not directed to an abstract
idea, 4) that there is no prima facie case for showing the claims “do not add
significantly more” than the abstract idea, 5) that the claims do add
“significantly more” than an abstract idea, and 6) that the dependent claims
were not addressed (Req. 2—13).
We have considered but are not persuaded by these arguments.
With regard to the first argument, the Examiner’s Answer mailed
December 26, 2014 has been reviewed and considered to have set out a
prima facie case with regard to the issue of the claims being directed to an
abstract idea (Ans. 35-39). The Examiner considered the claims in light of
Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347 (2014) and set forth
a prima facie case that claims are directed to a fundamental economic
practice and method of organizing human activities, i.e., to an abstract idea
(Ans. 36). The Appellants argue that the Examiner did not consider the
Federal Circuit decision in Trading Technologies Inc. v. CQG, Inc. 675 F.
App’x 1001 (Fed. Cir. 2017).1 The cited case was decided on January 18,
2017, which was after both the Answer and Reply Brief were filed, and was
designated as non-precedential. Regardless, the consideration of that case
1 The Appellants cite ‘Trading Tech v. CQG’ without a full legal cite in the
Request. The case is assumed to be the one we reference by citation here.
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Application 12/204,403
does not change the prima facie case established to show that the specific
claims in this particular case at hand are directed to an abstract idea.
The Appellants secondly argue that the Decision makes a new ground
of rejection in stating that the claims are directed to the abstract idea of
“executing a trade for a financial instrument” and further that a prima facie
case was not established (Req. 5, 6). The Answer determined that the claim
was directed to “execution of a trade fulfilling at least the portion of each of
the non-firm order and a matching order without a negotiation about a price
or quantity of the trade”; was a “fundamental economic practice” and
“method of organizing human activity” and, therefore, an abstract idea
(Ans. 36). Here, the Decision also determined and affirmed the claim to be
directed to a “fundamental economic practice” and “method of organizing
human activities” and an abstract idea (Dec. 5). Although the Decision uses
slightly different language in stating that the claim’s abstract nature is
directed to “executing a trade for a financial instrument” this description of
the claim does not change the thrust of the rejection to that of being a new
ground of rejection. Note that the claim matches and executes trades in
financial instruments. Abstract ideas can be characterized at different levels
of abstraction. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed.
Cir. 2016) (“An abstract idea can generally be described at different levels of
abstraction.”). The Appellants again reference the non-precedential case,
Trading Technologies here, but regardless as noted above the consideration
of that case in the analysis does not change the prima facie case established
to show that the specific claims in this particular case at hand are directed to
an abstract idea. In Chicago Board of Options Exchange v. International
Securities Exchange, 640 F. App’x 986 (Mem) (Fed. Cir. 2016), the Federal
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Application 12/204,403
Circuit affirmed the determination in three similar cases (CBM2013-00049,
CBM2013-00050, CBM2013-00051) involving trading technologies that
were held to not meet the requirements of35U.S.C. § 101.
The Appellants thirdly argue that the claims are not directed to an
abstract idea as they provide “an improvement to computer functionality”
and also “do not preempt an entire area” (Req. 8). We have considered but
reject both these arguments. The claims do not recite sufficient subject
matter to take them from being in the realm of what is encompassed as an
abstract idea into patentable subject matter and fail to add significantly more
to “transform” the nature of the claims.
We note the point about pre-emption in the Request at page 8.
Although pre-emption “might tend to impede innovation more than it would
tend to promote it, ‘thereby thwarting the primary object of the patent laws’”
{Alice, 134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1293 (2012)), “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),
cert, denied, 136 S. Ct. 701, 193 (2015) (“[Tjhat the claims do not preempt
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”).
The Appellants make a fourth argument that a prima facie case has not
been established based on the failure to show that the claim limitations, both
individually and as an ordered combination, “do not add significantly more”
than the abstract idea (Req. 9, 10). We have considered but reject this
argument as well. Here, we again determine that the Examiner’s
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Application 12/204,403
determination in this regard was proper. Also, note that the Decision at
page 5 states that we considered the elements of the claim both individually
and as an ordered combination in the analysis.
The Appellants make a fifth argument that the claims are directed to
more than an abstract idea because they are rooted in “networking and
computers” (Req. 10-13). We disagree and instead determine that the claims
are directed to an abstract idea as outlined and of record in the case. Here,
the claims are rooted in basic trading practices that are used in financial
markets, not computer technology.
The Appellants make a sixth argument that the rejection of record and
Decision ignore the dependent claims (Req. 13). This argument is not well-
taken as the Appellants failed to specifically argue any of the dependent
claims in the Reply Brief filed in this case. Only those arguments actually
made by Appellants were considered in the Decision. Arguments which
Appellants could have made but chose not to make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). Regardless, after a review of the dependent claims, we
determine that these rejections are proper as well.
For these reasons, the request for rehearing is denied.
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Application 12/204,403
CONCLUSION
The Appellants’ request for reconsideration has not convinced us that
we have overlooked or misapprehended issues in the previous analysis in
light of the arguments presented.
DECISION
REHEARING DENIED
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