Ex Parte Lutnick et al

Patent Trial and Appeal Board

Sep 11, 2018

13614240 (P.T.A.B. Sep. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/614,240 09/13/2012
63710 7590 09/13/2018
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Howard W. Lutnick
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.
01-1030-Cl 9154
EXAMINER
KAZIMI, HAN! M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/13/2018 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):
patentdocketing@cantor.com
lkorovich@cantor.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, GLENN D. KIRWIN,
JOAN KIRWIN, ANDREW C. GILBERT,
and MARY ANN GILBERT
Appeal2017-006207
Application 13/614,240 1
Technology Center 3600
Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 24--42, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Technology
According to the Specification, the application relates to "allow[ing]
traders to access information on intangible asset futures contracts," such as
"future royalties or revenues from artistic works or future salaries of
professionals." Spec. Abstract.
1 Appellants state that the real party in interest is CFPH, L.P. App. Br. 3.
Appeal2017-006207
Application 13/614,240
Illustrative Claim
Claim 24 is illustrative and reproduced below with certain limitations
at issue emphasized:
24. An apparatus comprising:
a server configured to provide access to information
describing trading of futures contracts to a plurality of remote
computing devices that are configured to engage in futures
contract trading; and
a microwave communication link configured to
communicate the information from the server to the plurality of
remote computing devices.
Rejections
Claims 24--42 stand rejected under 35 U.S.C. § 101 as being directed
to ineligible subject matter. Final Act. 2.
Claims 24--42 stand rejected under 35 U.S.C. § I02(a)(l) as
anticipated by Chaganti (US 2005/0080705 Al). Final Act. 2.
Related Case
Appellants note that "[ a ]n appeal is ongoing in parent application
10/015738" (Appeal No. 2017-005996). App. Br. 3.
ISSUES
1. Did the Examiner err in finding Chaganti discloses "a
microwave communication link," as recited in claim 24?
2. Did the Examiner err in concluding that claim 24 was directed
to an abstract idea without significantly more under § 101?
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Appeal2017-006207
Application 13/614,240
ANALYSIS
§ 102
Independent claim 24 recites "a microwave communication link" to
communicate the claimed information.
The prior art Chaganti discloses that "there are established secure
communications links between the server computer 100 and the client
computer 104 in any one of the secure communications methods known to
persons of ordinary skill in the art." Chaganti ,r 36 (emphasis added). The
Examiner therefore finds that "Chaganti anticipates any one of the secure
communications methods known to persons of ordinary skill in the art" and
"[a] microwave communication link is one of the secure communications
methods that are known to one of ordinary skilled in the art prior to the filing
date of this application." Ans. 10.
We agree with Appellants, however, that "[ n ]owhere in this cited-
portion of Chaganti is there any teaching or suggestion of a 'microwave
communication link."' App. Br. 8 ( emphasis omitted). "To anticipate a
claim, a single prior art reference must expressly or inherently disclose each
claim limitation." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334
(Fed. Cir. 2008). Here, a microwave communication link is neither
expressly nor inherently disclosed in Chaganti, and the Examiner has not
identified any additional reference to show that it would have been obvious
to use a microwave communication link.
Accordingly, we are constrained to reverse the Examiner's rejection
of independent claim 24 and its dependent claims 25--42 under§ 102.
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Appeal2017-006207
Application 13/614,240
§ 101
To determine patentable subject matter, the Supreme Court has set
forth a two part test. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355
(2014 ). In the first step, we determine whether the claims are "directed to"
any patent-ineligible concepts of "laws of nature, natural phenomena, and
abstract ideas." Id. In the second step, we "consider the elements of each
claim both individually and as an ordered combination" in search of "an
'inventive concept'-i.e., an element or combination of elements that is
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the ineligible concept itself." Id. (quotations omitted).
Here, Appellants argue that the Examiner "completely ignores the
microwave communication link element of the claim." Reply Br. 5. We
agree with Appellants that the Examiner has not addressed the "microwave
communication link" limitation in the § 101 analysis. For the second step of
the Alice inquiry, the Federal Circuit has recently held that"[ w ]hether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination." Berkheimer v. HP Inc.,
881 F.3d 1360, 1369 (Fed. Cir. 2018). On this record, the Examiner has not
yet made such a determination for the "microwave communication link."
Accordingly, we do not sustain the Examiner's rejection of
independent claim 24 and its dependent claims 25--42 under § 101.
DECISION
For the reasons above, we reverse the Examiner's decision rejecting
claims 24--42.
REVERSED
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