Ex Parte OLSSON

Patent Trial and Appeal Board

Aug 29, 2018

13934435 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/934,435 07/03/2013
23117 7590 08/31/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Johan L. OLSSON
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.
JRL-4010-0265 6357
EXAMINER
BAIRD, EDWARD J
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHAN L. OLSSON1
Appeal2017-002569
Application 13/934,435
Technology Center 3600
Before JAMES R. HUGHES, JESSICA C. KAISER, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 2, 4--10, and 12-17. Claims 3 and
11 have been canceled. Final Act. 1-2.2 We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 According to Appellant, the real party in interest is Nasdaq Technology
AB. Appeal Br. 3.
2 We refer to Appellant's Specification ("Spec.") filed July 3, 2013
(claiming benefit ofUS 11/453,252, filed June 15, 2006); Appeal Brief
("Appeal Br.") filed Apr. 4, 2016; and Reply Brief ("Reply Br.") filed Dec.
2, 2016. We also refer to the Examiner's Final Office Action (Final
Rejection) ("Final Act.") mailed Nov. 4, 2015, and Answer ("Ans.") mailed
Oct. 3, 2016.
Appeal2017-002569
Application 13/934,435
Appellant's Invention
The invention generally "relates to a method for negotiating trades on
electronic trading systems and to an electronic trading system enabling on-
line trading negotiation between users" (Spec. 1: 11-13). More specifically,
the negotiation process (method) stores unmatched bids and offers for a
financial instrument (to be matched/for matching) in an order book memory.
Bids, offers, and corresponding instruments are matched ( a match occurs)
when a bid order price for an instrument equaling or exceeding an offer
order price for the instrument is identified. The negotiation method receives
a trade negotiation request associated with a selected order (which has a
priority position in the order book), forwards the (trade negotiation) request
to a submitter of the selected order, and receives in return an acceptance or a
rejection of the trade negotiation request (from the submitter). If the trade
negotiation request is accepted by the submitter, the method initiates an
internal (intra-trading-system) negotiation procedure between the requester
(user terminal) and the submitter (of the selected order). The method then
freezes the selected order ( sets the selected order in the order book to a
frozen state at the priority position in the order book) to prevent the frozen
order from being matched ( to other bids) while the internal negotiation
procedure is active. Spec. 1: 11-12, 1:22-29, 4: 1-9, 6:3-19, 7:5----6, 7:25-
8:2, 8:5-9, 11-32, 11:2-8, Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A method of negotiating trades on an electronic
trading system, comprising the steps of:
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Application 13/934,435
storing by the electronic trading system in an order book
memory unmatched bids and offers for an instrument entered for
matching by user terminals coupled to the electronic trading
system, where a match occurs when a bid order price for the
instrument equaling or exceeding an offer order price for the
instrument is identified;
receiving by the electronic trading system, from one of the
user terminals, a trade negotiation request associated with a
select order having a priority position in the order book;
forwarding by the electronic trading system the trade
negotiation request to a submitter of the selected order;
receiving by the electronic trading system an accept or a
reject to the trade negotiation request from the submitter;
initiating by the electronic trading system an intra-trading-
system negotiation procedure between the user terminal and the
submitter of the selected order when the negotiation request is
accepted by the submitter of the selected order, where the intra-
trading-system is within the electronic trading system and the
intra-trading-system negotiation procedure uses a control
processor in the electronic trading system to facilitate the
negotiation procedure;
setting the selected order in the order book to a frozen state
at the priority position in the order book; and
preventing the frozen order from being matched by the
electronic trading system while the negotiation procedure is
active.
Rejection on Appeal
The Examiner rejects claims 1, 2, 4--10, and 12-17 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
ISSUE
Based upon our review of the record, Appellant's contentions, and the
Examiner's findings and conclusions, the issue before us follows:
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Did the Examiner err in finding Appellant's claims were directed to
patent ineligible subject matter under 35 U.S.C. § 101?
ANALYSIS
Appellant argues independent claims 1 and 9 ( as well as dependent
claims 2, 5-8, 10, and 13-17) together as a group with respect to the§ 101
rejection. See Appeal Br. 7-18. We select independent claim 1 as
representative of Appellant's arguments with respect to claims 1, 2, 5-10,
and 13-17. 37 C.F.R. § 4I.37(c)(l)(iv). We also discuss dependent claims
4 and 12 (infra).
The Examiner rejects the claims ( claim 1) as being directed to patent-
ineligible subject matter in that "[t ]he claimed invention is directed" "to the
abstract idea of a fundamental economic practice and a fundamental method
of organizing human activities" ( emphasis omitted}-"a method of
negotiating trades on an electronic trading system" ( emphasis omitted}-and
the claims "do not amount to significantly more than an abstract idea." Final
Act. 5. Further, the Examiner explains the "claims ... do not include an
improvement to another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations beyond
generally linking the use of an abstract idea to a particular technological
environment." Final Act. 5 ( emphasis omitted). Also, the Examiner
explains that the "[ t ]he additional elements or combination of elements in
the claims other than the abstract idea ... amount to no more than a method
of negotiating trades on an electronic trading system" in that "the method is
implemented on a computer[ and] the computer serves to perform generic
computer functions that are well-understood, routine, conventional, and
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previously known to the financial industries." Final Act. 5 ( emphasis
omitted).
Appellant contends that "[t]he final office action provides no
evidentiary support to show that the claim language is abstract." Appeal Br.
8 (citing PNC Bank v. Secure Axcess, LLC, CBM2014-00100, 2014 WL
4537440 (PTAB Sept. 9, 2014)). See Appeal Br. 7-9. Appellant further
contends that "the final action offers no evidence or analysis to demonstrate
that the additional claim elements" "are well-understood, routine and generic
computer functions" ( quotations omitted) and that the Examiner has not
presented a prima facie case "under Alice step two." Appeal Br. 10; see
Appeal Br. 9-11. Additionally, Appellant contends: the Examiner's
reasoning is contradictory ( contrasting the Examiner's reasons for allowance
with the Examiner's Alice step two analysis) (see Appeal Br. 12); the claims
"satisfy part two of the Alice test" because "[ t ]he claims require substantially
more than simply requiring a generic computer to merely carry out
negotiating trades on an electronic trading system" (Appeal Br. 12
(quotations omitted); see Appeal Br. 12-14); the claims are analogous to
"Example 21" of the USPTO's "July [2015] Update Appendix 1" and are,
therefore, patent eligible (Appeal Br. 14 ( quotations omitted); see Appeal Br.
14--15); "the scope of the claimed subject matter is sufficiently specific that"
(Appeal Br. 16) "[t]here is no preemption of the idea of negotiating trades on
an electronic trading system" (Appeal Br. 15 (quotations omitted)) (see
Appeal Br. 15-16); and dependent claims 4 and 12 add additional
"technical" features (see Appeal Br. 18-19). See Appeal Br. 7-19; Reply
Br. 2-11.
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Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77-80 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract
idea. For example, abstract ideas include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If
the claims are not directed to an abstract idea, the inquiry ends. Otherwise,
the inquiry proceeds to the second step where the elements of the claims are
considered "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 78-79). This second step is described as "a search for an 'inventive
concept'-i.e., an element or combination of elements that is ' ...
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significantly more than ... the [ineligible concept] itself."' Id. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 72-73).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Alice Step 1 Analysis
Turning to the first step of the eligibility analysis, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfzsh, 822 F.3d at 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. (15 How.) 62, 113 (1853)). "We therefore look to whether
the claims ... focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314.
The Examiner finds independent claim 1 (as well as claims 2, 4--10,
and 12-17) is directed to the abstract idea of "negotiating trades on an
electronic trading system" because the claim is directed to "a fundamental
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economic practice and a fundamental method of organizing human
activities" and the claim does not improve the functioning of the computer
itself (or any other technology), or provide meaningful limitations beyond
linking the "abstract idea to a particular technological environment." Final
Act. 5. Conversely, Appellant attacks the Examiner's findings as being an
inaccurate characterization and lacking evidentiary support-that is,
according to Appellant, the Examiner fails to present evidence that the
claims are directed to an abstract idea such as a fundamental economic
practice or mere method of organizing human activities and, thus, the
Examiner's reasoning and analysis do not include sufficient substance to rise
to the level of a prima facie showing. See Appeal Br. 6-9; Reply Br. 2-3.
We agree with the Examiner that Appellant's claim 1 (and the other pending
claims) are directed to patent-ineligible abstract ideas or concepts.
With respect to Appellant's prima facie case and evidentiary
contentions, Appellant misconstrues the relevant law and precedent. The
Federal Circuit has repeatedly noted that "the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). Therefore, the USPTO
carries its procedural burden of establishing a prima facie case when its
rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for rejection, "together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011) (internal quotations omitted). Thus, a prima facie rejection need only
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set forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132. Id.
Here, in rejecting the claims (in particular claim 1) under 35 U.S.C.
§ 101, the Examiner analyzed the claims using the Mayo/Alice two-step
framework, consistent with the guidance set forth in the USPTO's "2014
Interim Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618
(Dec. 16, 2014), in effect at the time the rejection was made, i.e., on Nov. 4,
2015. The Examiner notified Appellant of the reasons for the rejection
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application."
35 U.S.C. § 132. See Final Act. 2---6. Contrary to Appellant's assertions, in
doing so, the Examiner set forth a prima facie case of unpatentability such
that the burden of production shifted to Appellant to demonstrate that the
claims are patent-eligible.
Appellant argues that evidentiary support is required to establish a
prima facie case of patent-ineligibility. See Appeal Br. 8-9; Reply Br. 2-3
(citing Secure Axcess, CBM2014-00100, 2014 WL 4537440). We note that
Secure Axcess is a non-precedential PT AB opinion, and therefore, not
binding on this panel. Moreover, there are significant differences between
the attorney arguments that are presented in a post-grant AIA-CBM
proceeding such as Secure Axcess compared to findings and conclusions of
an Examiner. See Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034,
1042--44 (Fed. Cir. 2017) (discussing differences between attorney
arguments and the Examiner's findings). Further, the Panel in Secure
Axcess relied on more than the lack of persuasive evidentiary support in
determining that the claims were not directed to an abstract idea. See Secure
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Axcess, Paper 13, slip op. at 4 (PTAB Sept. 30, 2014) (recognizing that the
lack of evidence was only "one factor in our analysis" in denying request for
rehearing). We are aware of no controlling precedent that requires the
Office to provide factual evidence to support a finding that a claim is
directed to an abstract idea. Although it may be useful in some
circumstances to compare the claims at issue with those in earlier cases in
which a similar issue of patent-eligibility has been decided, such a
comparison, contrary to Appellant's suggestion (Appeal Br. 8-9), is not
required for a prima facie showing.
With respect to Appellant's contentions that the Examiner
mischaracterized the claims, claim 1 recites a method that: stores
information (unmatched bids and offers for a financial instrument) in
memory (an order book memory); receives information (a trade negotiation
request associated with a selected order ( which has a priority position in the
order book)); forwards information (the trade negotiation request) to a
submitter of the selected order; receives additional information ( an accept or
a reject to the trade negotiation request from the submitter); initiates an
intra-trading-system negotiation procedure (when the trade negotiation
request is accepted by the submitter of the selected order) utilizing a control
processor to facilitate the negotiation procedure; and sets the selected order
in the order book to a frozen state at the priority position in the order book
( during the negotiation procedure). In sum, as the Examiner finds, claim 1 is
directed to "negotiating trades on an electronic trading system," which is "a
fundamental economic practice" and "method of organizing human
activities," i.e., an abstract idea. Final Act. 5 (emphasis omitted). Although
we could characterize claim 1 with more detail, for example, as being
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directed to communicating, organizing, analyzing ( comparing), and
manipulating data to facilitate negotiating trades on an electronic trading
system, including an internal (intra-trading-system) negotiation procedure,
such details do not substantively change the patent-eligibility analysis.
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 Board's slight revision of its abstract idea analysis does not impact the
patentability analysis.").
Utilizing the above-identified characterization, we analyze whether
claim 1 is directed to an abstract idea. Instead of using a fixed definition of
an abstract idea and analyzing how claims fit ( or do not fit) within the
definition, "the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen - what
prior cases were about, and which way they were decided." Amdocs (Isr.)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir.
2016)). As part of this inquiry, we must "look at the 'focus of the claimed
advance over the prior art' to determine if the claim's 'character as a whole'
is directed to excluded subject matter." Affinity Labs of Texas, LLC v.
DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
Here, Appellant's claims generally, and independent claim 1 in
particular, relate to collecting and communicating information, organizing
the information (in priority order), and analyzing/manipulating information
to negotiate trades for financial instruments on a computer system
( electronic trading system) (see discussion supra). That is, Appellant's
claims relate to organizing, collecting, analyzing, communicating, and
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manipulating data utilizing un-recited processes or algorithms and devices to
facilitate and negotiate trades for financial instruments. Therefore, the
claims broadly recite organizing, collecting, analyzing, transferring, and
manipulating information (data) relating to financial transactions. See
Abstract; Spec. 1: 11-29, 2:28-3: 10. This is consistent with how Appellant
describes the claimed invention. See Appeal Br. 3--4 ( citing Spec. 1: 11-12,
1:22-25, 4:7, 6:3-19, 7:5----6, 7:25-8:2, 8:7-9, 8:13-14, 8:28-32, 11:2-8).
Also, the present claims are analogous to a number of cases in which
courts have identified similar claims as encompassing abstract ideas. Our
reviewing court has held that abstract ideas include gathering, organizing,
analyzing, and manipulating information. Elec. Power Grp., 830 F.3d at
1354 (finding claims directed to a "combination of ... abstract-idea
processes ... of gathering and analyzing information" to be abstract).
Similarly, our reviewing court has held that abstract ideas include gathering,
organizing, analyzing, and storing information. See Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC., 874 F.3d 1329, 1337-38 (Fed. Cir. 2017)
( finding claims directed to the functional results of accumulating,
converting, and monitoring records manipulate data "but fail[] to do so in a
non-abstract way"); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat'! Ass 'n, 776 F.3d 1343, 1345, 1347 (Fed. Cir. 2014) (finding the
"claims generally recite ... extracting data ... [and] recognizing specific
information from the extracted data" and that the "claims are drawn to the
basic concept of data recognition").
The Federal Circuit has also held that abstract ideas include financial
transactions or other "fundamental economic practices" (Final Act. 5)
( emphasis omitted). See Credit Acceptance Corp. v. Westlake Servs., 859
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F.3d 1044, 1049--51, 1054 (Fed. Cir. 2017) (the claims are "directed to the
abstract idea of processing an application for financing a purchase", which is
"a fundamental economic practice long prevalent in our system of
commerce" (internal quotations omitted)); Intellectual Ventures I LLC v.
Capital One Bank, 792 F.3d 1363, 1367-70 (Fed. Cir. 2015) ("[T]he patent
claims are directed to an abstract idea: tracking financial transactions" (id. at
1367) which amounts to "a fundamental ... practice long prevalent in our
system" (id. at 1369--70 (internal quotations omitted))); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1353-55 (Fed. Cir. 2014) (claims reciting
sending and receiving communications over a computer network to facilitate
online commercial transactions (id. at 1351-52) are directed to "contractual
relations, which are intangible entities" and "constitute[] a fundamental
economic practice long prevalent in our system of commerce" (id. at 1353-
54 (internal quotations omitted))).
Here, the collection, organization, analysis, manipulation, and
communication of information ( data}--in the form of storing information
(unmatched bids and offers for a financial instrument) in memory (an order
book memory); receiving information (a trade negotiation request associated
with a selected order (which has a priority position in the order book));
forwarding information (the trade negotiation request) to a submitter of the
selected order; receiving additional information (an accept or a reject to the
trade negotiation request from the submitter); initiating an intra-trading-
system negotiation procedure (when the trade negotiation request is accepted
by the submitter of the selected order) utilizing a control processor to
facilitate the negotiation procedure; and setting the selected order in the
order book to a frozen state at the priority position in the order book ( during
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the negotiation procedure }-are analogous to the abstract ideas of collecting,
analyzing, and manipulating information discussed in Electric Power Group,
Two-Way Media, and Content Extraction. Further, negotiating trades on an
electronic trading system is analogous to the fundamental economic
practices found to be abstract ideas in Credit Acceptance Corp., Intellectual
Ventures I, and buySAFE.
Appellant's claims can also be distinguished from patent-eligible
claims such as those in Enfzsh that are directed to "a specific improvement to
the way computers operate." Enfzsh, 822 F.3d at 1336. Appellant's claims
are directed to the results of data analysis and manipulation (negotiating
trades on an electronic trading system) rather than "a particular way of
performing" or "inventive technology for performing those functions" or, in
other words, "achiev[ing] these results in a non-abstract way." Two-Way
Media, 874 F.3d at 1337-38 (internal quotations omitted). In summary, "the
focus of the claims is not on such an improvement in computers as tools, but
on certain independently abstract ideas that use computers as tools." Elec.
Power Grp., 830 F.3d at 1354.
Thus, we agree with the Examiner that the claims are directed to the
abstract ideas of collecting, analyzing, and manipulating information
utilizing a computer, resulting in a fundamental economic practice. Notably,
this characterization is consistent with Appellant's description of the claimed
invention. See Spec. 6:5-24 (users may be "terminals" that "can
communicate with an electronic trading system 106 through a network 107,"
where a terminal may be "any device" including "PC, laptop, palm-held
devices, mobile phones" and the electronic trading system "can be made up
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of essentially any combination of hardware and software for performing the
functions").
Alice Step 2 Analysis
Having found Appellant's claims are directed to an abstract idea under
Alice's step 1 analysis, we next address whether the claims add significantly
more to the alleged abstract idea. As directed by our reviewing court, we
search for an "'inventive concept' sufficient to 'transform the nature of the
claim into a patent-eligible application."' McRO, 837 F.3d at 1312 (quoting
Alice, 134 S. Ct. at 2355). The implementation of the abstract idea involved
must be "more than performance of 'well-understood, routine, [and]
conventional activities previously known to the industry."' Content
Extraction, 77 6 F .3 d at 134 7--48 ( alteration in original) ( quoting Alice, 134
S. Ct. at 2359). The "inventive concept" "must be significantly more than
the abstract idea itself, and cannot simply be an instruction to implement or
apply the abstract idea on a computer." Bascom Global Internet Servs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) (citation
omitted).
Here, the Examiner determined that Appellant's claims do not add
significantly more. See Final Act. 5---6; Ans. 6-12. Appellant, on the other
hand, contends the Examiner did not provide sufficient evidence or analysis
"to demonstrate that the additional claim elements" "are well-understood,
routine and generic computer functions." Appeal Br. 10 ( quotations
omitted); see Appeal Br. 9--11; Reply Br. 3--4, 8. Appellant also contends
the claims are directed to significantly more than an abstract idea, inter alia,
"require substantially more than simply requiring a generic computer to
merely carry out negotiating trades on an electronic trading system." Appeal
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Br. 12 (quotations omitted); see Appeal Br. 12-14. In addition, Appellant
contends that the claims are analogous to an example provided in the
US PTO' s guidelines-"Example 21" of the US PTO' s "July [2015] Update
Appendix 1." See Appeal Br. 14--15.
Appellant fails to persuade us of error in the Examiner's rejection
with respect to the second Alice step. We agree with the Examiner that
Appellant's claim 1 (and the other pending claims) does not evince an
"inventive concept" that is significantly more than the abstract idea itself.
With respect to Appellant's prima facie case and evidentiary
contentions, the Examiner provides an explanation as to why claim 1 is
patent ineligible under the second Alice step. See Final Act. 5-6; Ans. 6-12.
The Examiner also provides supporting evidence. See Ans. 7 ( citing Spec.
6:5-15). We agree with the Examiner that the collection, receiving,
transferring, and analyzing information, utilizing undisclosed means
( algorithms, processes, and/ or devices) utilizing a generic computer system
and processor (see discussion supra; Spec. 6:5-24) does not amount to
significantly more than the abstract idea.
With respect to Example 21, the analysis of the exemplary claim
explains how additional limitations of the claim address "the Internet-centric
challenge of alerting a subscriber with time sensitive information when the
subscriber's computer is offline" by "transmitting the alert over a wireless
communication channel to activate the stock viewer application." July 2015
Update Appendix 1: Examples3 at 4. Unlike Appellant's claim 1, claim 2 in
Example 21 recites additional limitations that, when considered as an
3 July 2015 Update Appendix 1: Examples, pp. 1-5, available at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-appl.pdf.
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ordered combination, amount to significantly more than the abstract idea.
Appellant points to no such limitation( s) in claim 1. See Appeal Br. 14--15.
Collecting information, receiving additional information, transferring
(forwarding) information, and analyzing the collected information (see
discussion supra) does not amount to significantly more than the abstract
idea because it is insignificant extra-solution activity. See Elec. Power Grp.,
830 F.3d at 1354--55 (the collection, analysis, and display of information is
insignificant extra-solution activity).
Appellant further contends a number of recent cases support patent
eligibility of Appellant's claims 1 and 9 under the second part of the Alice
eligibility analysis. See Appeal Br. 16-18; Reply Br. 5-7, 9-11. 4 For
example, Appellant states "[t]he Federal Circuit's recent Enfzsh, BASCOM,
McRO, and Amdocs decisions all found patent eligible subject matter
without requiring improvement to another technology or technical field."
Reply Br. 5 ( quotations omitted). Appellant cites Amdocs for the
proposition that "the improvement ... need [not] be in the computer itself
but rather the improvement [ may be] in the claimed 'system itself."' Reply
Br. 6 (citing Amdocs, 841 F.3d at 1302); see Reply Br. 5-7, 10-11. We are
unpersuaded by Appellant's arguments. The court in Amdocs found the
claims "entail[] an unconventional technological solution ( enhancing data in
a distributed fashion) to a technological problem (massive record flows
which previously required massive databases)," i.e., the claims met the
4 Appellant, for example, cites Trading Technologies Int'!, Inc. v. CQG, Inc.,
2015 WL 774655 (N.D. Ill. Feb. 24, 2015), aff'd Trading Technologies Int'!,
Inc. v. CQG, Inc., 675 Fed. App'x 1001, 1004 (Fed. Cir. 2017) (explaining
that the district court found the claims were not directed to an abstract idea).
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second Alice step because they were unconventional. Amdocs, 841 F .3 d at
1300. Here, Appellant simply reiterates the limitations of claim 9 (and claim
1) and concludes that the limitations are not routine or conventional. See
Reply Br. 7. Appellant does not explain how the limitations (individually
and in combination) are not routine or are unconventional. As we explain
supra, we agree with the Examiner that Appellant's claim limitations do not
amount to significantly more than the abstract idea of negotiating trades on
an electronic trading system, in that the limitations implement (facilitate)
negotiating trades of financial instruments by performance of well-
understood, routine, and conventional activities.
To the extent Appellant's arguments invoke DDR Holdings, LLC v.
Hotels.com L.P., 773 F.3d 1245 (Fed. Cir. 2014) (see Appeal Br. 16-18;
Reply Br. 9--1 O}-in that the instant claims allegedly improve the operation
of a computer system-we disagree. In DDR Holdings, the court held that a
claim may amount to more than an abstract idea recited in the claims when it
addresses and solves problems only encountered with computer technology
and online transactions, e.g., by providing (serving) a composite web page
rather than adhering to the routine, conventional functioning of Internet
hyperlink protocol. See DDR Holdings, 773 F.3d at 1257-59. In contrast
and as discussed supra, claim 1 simply transfers and manipulates data using
known conventional computers and/or equipment, to facilitate negotiating
trades on an electronic trading system according to an undisclosed process
and/or algorithm. See Spec. 6:5-24. Despite Appellant's arguments to the
contrary, nothing in claim 1 recites a "specific improvement to the way
computers operate." The communication, analysis, and manipulation of
trade information, and the resulting negotiating of trades by conventional
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means (an electronic trading system), is not a solution to a technical problem
as discussed in DDR Holdings.
Rather, facilitating negotiating trades on an electronic trading system
based on collected, received, and/or transferred bid, offer, and order
information and additional received data (negotiation request and acceptance
of the request), is a commercial solution to a routine and conventional
financial transaction, not a technical solution to a computer or networking
problem. This commercial solution may be assisted using a general purpose
computer (see Spec. 6:5-24) to perform the data transfer, collection,
analysis, and manipulation processes, but does not improve how the
computers themselves function. As we previously explained, the instant
claims are more akin to the claims for analyzing information found to be
abstract. See Elec. Power Grp., 830 F.3d at 1353.
We agree with the Examiner that the additional limitations, separately,
or as an ordered combination, do not provide meaningful limitations (i.e., do
not add significantly more) to transform the abstract idea into a patent
eligible application. See, e.g., Ans. 6-12. The claim merely recites
functions (processes) for communicating, analyzing, and manipulating data
using known conventional computers and/or equipment to effect
conventional financial transactions. Such conventional computer and
communication processes "do not alone transform an otherwise abstract idea
into patent-eligible subject matter." FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d
at 1256).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
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Examiner's rejection under§ 101 of independent claims 1 and 9, as well as
dependent claims 2, 5-8, 10, and 13-17, which were not argued separately.
Appellant provides nominal separate arguments with respect to
dependent claims 4 and 12. See Appeal Br. 18-19. Here, Appellant merely
reiterates the limitations of the claims and contends the Examiner has not
provided evidence showing the disputed limitations describe a "generic
computer function" and are directed to a "fundamental method of organizing
human activities." Appeal Br. 18 ( quotation omitted). Appellant does not
persuade us of error in the Examiner's rejection of these claims under§ 101
for the same reasons as claim 1 discussed supra. Accordingly, we also
sustain the Examiner's rejection of claims 4 and 12 under§ 101.
CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims 1,
2, 4--10, and 12-17 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1, 2, 4--10, and 12-17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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