Ex Parte Pechenik et al

Patent Trial and Appeal Board

Oct 2, 2018

12942073 (P.T.A.B. Oct. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/942,073 11/09/2010
35811 7590 10/04/2018
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Jacob E. Pechenik
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.
YJI-08-1284DIV1 1993
EXAMINER
HUANG, TSAN-YU J
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
10/04/2018 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACOB E. PECHENIK, GREGORY S. CAMPBELL,
DOUGLAS E. MILLER, and BLAKE A. BARNES
Appeal2017-004126
Application 12/942,073
Technology Center 3600
Before CYNTHIA L. MURPHY, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 6, 8-15, 18, 20, 23, 25-36, and 38-51,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Throughout this decision, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed May 3, 2016), Reply Brief ("Reply Br.," filed Jan. 17,
2017), and Specification ("Spec.," filed Nov. 9, 2010), and to the
Examiner's Answer ("Ans.," mailed Nov. 18, 2016) and Final Action
("Final Act.," mailed Feb. 12, 2016).
2 According to the Appellants, the real party in interest is YellowJacket, Inc.
Appeal Br. 1.
Appeal2017-004126
Application 12/942,073
STATEMENT OF THE CASE
The Appellants' invention "generally relates to a system for trading
and analyzing derivative products, and more particularly, software that
aggregates, organizes, parses and extracts market data for trading
information from Over-The-Counter (OTC) networks." Spec. ,r 2.
Claims 1 and 20 are the independent claims on appeal. Claim 20
(Appeal Br. 17-18 (Claims App.)) is illustrative of the subject matter on
appeal and is reproduced below (with added bracketing for reference):
20. A method for collecting and using market data, the
method comprising:
in at least one computer comprising memory and a
processor,
[ (a)] sending at least one unstructured message via
a graphical user interface message over the Internet;
[ (b)] receiving the at least one unstructured
message via a central computing system, said unstructured
message including at least one structure, the structure
comprising a derivative contract description;
[ ( c)] automatically activating a market data
recognition (MDR) module when the unstructured message is
received;
[(d)] automatically activating a data recognizer to
identify at least one component of the received unstructured
message;
[ ( e)] automatically activating a parser to parse the
received unstructured message into the identified components;
[(f)J automatically activating a pricing service to
automatically break down the structure into component parts,
automatically pricing each component part, and assigning an
aggregate premium to the aggregate structure calculated from
premiums of each component part;
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[ (g)] translating and arranging the identified
components into a standardized arrangement; and
[(h)] causing display of the standardized
arrangement.
REJECTIONS
I. Claims 1, 6, 8-15, 18, 20, 23, 25-36, and 38-51 stand rejected
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
II. Claims 1, 6, 8-15, 18, 20, 23, 25-36, and 38-51 stand rejected
under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
III. Claims 1, 6, 8-15, 18, 20, 23, 25-36, and 38-51 stand rejected
under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Wong et al.
(US 2003/0028468 Al, pub. Feb. 6, 2003) (hereafter "Wong") and Keen,
JR., et al. (US 2006/0026091 Al, pub. Feb. 2, 2006) (hereafter "Keen").
ANALYSIS
Reiection 1-35 US.C. § 101
The Appellants argue the claims as a group for this rejection. See
Appeal Br. 4, 11. We select claim 20 as representative of the group;
claims 1, 6, 8-15, 18, 23, 25-36, and 38-51 stand or fall therewith. See
37 C.F.R. § 4I.37(c)(l)(iv).
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.
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v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 588-89
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (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. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. (emphasis
added) (citing Mayo, 566 U.S. at 79). If so, the second step is to consider
the elements of the claims "individually and 'as an ordered combination'" to
determine whether the additional elements "'transform the nature of the
claim' into a patent-eligible application." Id. ( quoting Mayo, 566 U.S.
at 78-79).
The first step requires a consideration of the claims "in their entirety
to ascertain whether their character as a whole is directed to excluded
subject matter." Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015). The question is whether the claims as a whole
"focus on a specific means or method that improves the relevant technology"
or are "directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery." McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In other words, the
claims are assessed as to whether they "do no more than describe a desired
function or outcome, without providing any limiting detail that confines the
claim to a particular solution to an identified problem." Affinity Labs of
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Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) cert.
denied, 137 S. Ct. 1596 (2017).
The second step of the Mayo/Alice framework is to "search for 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."' Alice, 134 S. Ct. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 72-73).
Under the first step of the Alice/Mayo framework, the Examiner
determines that claim 20 is "directed to the abstract idea of determining a
price on a structure." Final Act. 7. Under the second step of the Mayo/Alice
framework, the Examiner determines that the elements of claim 20,
individually or as an ordered combination, do not amount to significantly
more than the above-identified abstract idea. See Final Act. 8-9.
The Appellants contend that the claim is "directed to solving the
computer-centric problem of translating and processing electronic messages
of varying formats" (Appeal Br. 8) and argue that
the ordered-combination of features recited in the claims is
patent-eligible under 35 USC § 101 because, at a minimum:
( 1) the claims are necessarily rooted in computer technology and
they overcome a computer-centric problem specifically arising
in the realm of computer networks, which render them patent-
eligible under the rationale of DDR Holdings, LLC v.
Hotels.com, L.P., [773 F.3d 1245] (Fed. Cir. Dec. 5, 2014);
(2) the claims recite "specialized computer components" that, at
a minimum, convert whatever abstract idea may exist into a
meaningful application thereof; (3) the claims include features
such as activating specialty modules, which is patent-eligible
under Diamond v. Diehr, 450 U.S. 175 (1981 ); ( 4) the features
such as activating specialty modules are also comparable to
patent-eligible Example 21 from the July 2015 Update on
Subject Matter Eligibility; (5) the claims are not directed to an
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abstract idea as evidenced by lack of preemption; and/ or ( 6) the
alleged abstract idea is applied by use of a particular machine.
Id. at 4. As discussed below, we disagree.
The Specification provides evidence as to what the claimed invention
is directed. Here, the Specification is titled "METHOD AND SYSTEM
FOR COLLECTING AND USING MARKET DATA FROM VARIOUS
SOURCES." The Background section of the Specification provides that the
"invention generally relates to a system for trading and analyzing derivative
products, and more particularly, software that aggregates, organizes, parses
and extracts market data for trading information." Spec. ,r 2. The claimed
invention addresses the needs for "standardizing the trading process and
automating distribution such that the display of the OTC market data is in a
secure and compliant environment" and for "automating post-trade
functions, such as entering trades into clearing and other systems." Id. ,r 11.
Claim 20 provides for a "method for collecting and using market data,
the method comprising: in at least one computer comprising memory and a
processor," (a) sending data of an unstructured message over the Internet,
(b) receiving the message data at a central computing system,
( c) automatically activating a module when the data is received,
( d) automatically activating a data recognizer, ( e) automatically activating a
parser, (f) automatically activating a pricing service, (g) translating and
arranging component data into a standardized arrangement, and (h) causing
display of the standardized arrangement. See Appeal Br. 17-18 ( Claims
App.). The computer that performs these functions comprises computer
system 1 having user computers and a server computer connected via a
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network. Spec. ,r,r 38-39; see also Appeal Br. 3 (citing Spec. ,r,r 38-39,
Figs. 1, 2).
The claim does not recite the algorithm for, or how, the identifying,
parsing, and translating functions, i.e., steps ( d), ( e ), and (g), are performed.
And the Specification does not provide technological details or algorithms
for how to perform these functions. The Appellants rely on paragraphs 43,
46-48, 52, 53, 55, and 83 of the Specification as support for these
limitations. These paragraphs simply discuss that translating is performed
(see Spec. ,r 43), data are recognized by the "market data recognition (MDR)
feature" (id. ,r,r 46, 52), unstructured text is converted into usable quotes
using "[ v ]irtually any process" (id. ,r,r 46, 55), parsing data (id. ,r,r 4 7, 53,
83), that the identifying component uses textual information, extracts data,
and creates an identifier object (id.), and performing any process on the
resulting data (id. ,r 48). There is no further specification of particular
technology for performing the steps. See Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016); see also Enfzsh, LLC
v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016) (focusing on
whether the claim is "an improvement to [the] computer functionality itself,
not on economic or other tasks for which a computer is used in its ordinary
capacity").
Considering the claim in light of the Specification and on its
"character as a whole" (Enfish, 822 F.3d at 1335), we determine that
claim 20 is directed to collecting and using market data by identifying,
parsing, and organizing data, pricing structures, translating and arranging the
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organized data, and displaying the results of the translating and arranging. 3
The claim here is akin to ones our reviewing court has deemed abstract in
Electric Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed.
Cir. 2016) (gathering and analyzing information by steps people go through
in their minds, or by mathematical algorithms, of a specific content and
displaying the results), Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1147 (Fed. Cir. 2016), cert. denied., 138 S. Ct. 71 (2017) ("method of
changing one description of a level sensitive latch (i.e., a functional
description) into another description of the level sensitive latch (i.e., a
hardware component description) by way of a third description of that very
same level sensitive latch (i.e., assignment conditions)"), and Novo
Transforma Techs., LLC v. Sprint Spectrum L.P., 2015 WL 5156526,
at *2-3 (D. Del. Sept. 2, 2015), ajf'd, 669 F. App'x 555 (Fed. Cir. 2016)
( claim reciting generating a payload, defining parameters, converting the
payload into a different form, and delivering the converted payload directed
to the abstract idea of translation). Here, the claim involves nothing more
than determining a price on an item by sending, receiving, identifying,
recognizing, parsing, manipulating, translating, arranging, and displaying
data without any particular inventive technology- an abstract idea.
See Elec. Power, 830 F.3d at 1354.
3 We note that although our description of the abstract idea may differ
slightly from that of the Examiner, "[a]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). The Board's "slight revision of its
abstract idea analysis does not impact the patentability analysis." Id. at
1241.
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We disagree with the Appellants' contention that the claim is
"necessarily rooted in computer technology and [it] overcome[s] a
computer-centric problem specifically arising in the realm of computer
networks, which render[ s it] patent-eligible under the rationale of DDR
Holdings." Appeal Br. 4; see also id. at 5, 10; Reply Br. 3--4. In DDR
Holdings, the Federal Circuit determined that the claims addressed the
problem of retaining website visitors who, if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host's website after clicking on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
The Federal Circuit, thus, held that the claims were directed to statutory
subject matter because they claim a solution "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." Id. The court cautioned that "not all claims
purporting to address Internet-centric challenges are eligible for patent." Id.
at 1258. And the court contrasted the claims to those at issue in
Ultramercial, in that, in DDR Holdings, the computer network was not
operating in its "normal, expected manner" and the claims did not "recite an
invention that is ... merely the routine or conventional use of the Internet."
Id. at 1258-59.
In contrast, here, the Appellants specify the problem the claim
addresses is prior art systems' "inability to distribute and receive electronic
messages in a timely and efficient manner" (Appeal Br. 4 (citing Spec. ,r 5))
due to the varying formats of electronic messages generated and transmitted
from varying sources and results on the systems being "unable to process the
incoming electronic messages, which in tum creates unfair delays that
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prevent the timely processing (e.g., analysis) of these electronic messages
(Id.) and/or prevent any processing altogether" (id). The Specification, at
paragraph five, discusses that the conventional method of quoting custom
derivative structures via phone or instant messaging has many disadvantages
such as the dealers not all receiving the quote at the same time, the dealer
not knowing whether the quote is new or an update, and time lost in
reformatting the information. But, the Specification does not indicate that
prior art systems were unable to "distribute and receive electronic messages
in a timely and efficient manner"; rather, the Specification indicates a desire
that the timeliness and efficiency needs to be improved. Further, the
Specification does not discuss existing problems with network architecture.
Cf Reply Br. 4--5. Although the distribution and delivery of messages here
is computer-centric, distributing and receiving messages in a more timely
and efficient manner is not a problem rooted in technology arising out of
computer networks, but rather a problem that existed prior to the Internet
and computers. See Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015) ("[O]ur precedent is clear that merely
adding computer functionality to increase the speed or efficiency of the
process does not confer patent eligibility on an otherwise abstract idea.").
And, "[i]ncompatible communication types have existed since before the
emergence of computers and the Internet." Novo Transforma, 2015 WL
5156526, at *3.
Also, unlike DDR Holdings, here, the purported solution requires a
generic computer system with a memory and processor operating in their
normal capacities to perform the functions of sending and receiving data,
activating modules/software to identify, parse, and organize data, pricing
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each part, translating and arranging data, and displaying the arrangement.
See Spec. ,r,r 38--40. The Appellants do not direct attention to, and we do not
see, where the Specification provides that the computer system processing
device acts in an abnormal manner or outside of its ordinary capacity.
Rather, the claim recites an invention that is merely the routine or
conventional use of a generic computer. See Versata Dev. Grp., Inc. v. SAP
America, Inc., 793 F.3d 1306, 1334--35 (Fed. Cir. 2015) (use of general
purpose computer to implement abstract idea of using organizational and
group hierarchies to determine a price was not rooted in computer
technology to solve a problem specifically arising in computer technology);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097 (Fed.
Cir. 2016); DDR Holdings, 773 F.3d at 1258-59.
We also are not persuaded by the Appellants' argument that "the
claim[] recite [ s] 'specialized computer components' that, at a minimum,
convert whatever abstract idea may exist into a meaningful application
thereof' (Appeal Br. 5; see also Reply Br. 4), particularly because "the
additional translation and conversion functions clearly amount to
significantly more" (id. at 6; see also Reply Br. 2). The "MDR module that
carries out the specialized functions [ ofJ ... identifying, translating and
converting component parts ( within unstructured messages) into a
standardized arrangement" (Appeal Br. 6) is a "market data recognition
(MDR) feature" (Spec. ,r 46) of software implemented by the generic
computer system (see id. ,r,r 38, 43). We note that the claim does not recite a
"conversion" function. And, as discussed above, the claim does not recite
the algorithm for, or how, the identifying, parsing, and translating functions,
i.e., steps ( d), ( e ), and (g), are performed. Performing the identifying,
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translating, and converting functions using a generic computer do not
comprise an inventive concept. See Content Extraction & Transmission
LLC v. Wells Fargo, 776 F.3d 1343, 1348--49 (Fed. Cir. 2014) (identifying
and recognizing data are not inventive concepts); Berkheimer v. HP Inc.,
881 F.3d 1360, 1370 (Fed. Cir. 2018) (parsing is not an inventive concept);
Novo Transforma, 2015 WL 5156526, at *3 (translating is not an inventive
concept); cf Reply Br. 5. We further note that the Appellants do not direct
attention to, and we do not see, where the Speciation or the claim discusses
"highly specialized electronic financial communication network
architectures." Reply Br. 4.
We disagree with the Appellants' contention that the claim is
analogous to those of Diehr. See Appeal Br. 6-7. The claims in Diehr were
directed to a process for curing synthetic rubber, and recited a series of steps
( e.g., installing rubber in a press, closing the mold, constantly determining
the temperature of the mold, constantly recalculating the appropriate cure
time through the use of the Arrhenius equation and a digital computer, and
automatically opening the press at the proper time) that together provided a
significant and novel practical application of the well-known Arrhenius
equation and transformed uncured synthetic rubber into a new state or thing.
See Diehr, 450 U.S. at 184--87. The Court determined that although the
invention employed a well-known equation, it used that equation in a
process designed to solve a technological problem in conventional industry
practice. Alice Corp., 134 S. Ct. 2348 (citing Diehr, 450 U.S. at 177). The
claims in Diehr were, thus, patent-eligible because they improved an
existing technological process. Id. The Appellants contend that the claim
here "recite[ s] special purpose modules, including an MDR module that
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controls a data recognizer, a parser and a data converter, and a pricing
service. Much like Diehr, the MDR router module is opened ( or activated)
only upon receipt of a message that is unstructured." Appeal Br. 7.
However, merely taking a manual, mental, or computer-implemented action
is not transforming the data from one form to another, such as a molded
product, and is not patent eligible, as the Supreme Court made clear in
Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972). In contrast to the situation
in Diehr, opening or activating the software of the MDR module does not
result in any analogous transformation of matter from one state (i.e., raw
rubber) to another (i.e., a molded product). And the claim does not provide
details on the technological processes for recognizing data, parsing, pricing,
and opening a module such that a technological process is changed or
improved. Rather, any change or improvement lies in the abstract idea. The
Appellants' assertion that "system resources may be conserved" (Appeal
Br. 7) is unsupported and, further, does not explain how a technological
process is changed or improved.
We further are not persuaded by the Appellants' argument that "the
claimed features of activating specialty modules are also comparable to
patent-eligible Example 21 from the July 2015 Update on Subject Matter
Eligibility [hereafter "Update"]." Appeal Br. 7. In that example, the
limitations related to "transmitting an alert over a wireless communication
channel to activate the stock viewer application, which causes the alert to
display and enables the connection of the remote computer to the data source
over the Internet when the remote subscriber computer comes online" were
considered to "add more than generally linking the use of the abstract idea
(the general concept of organizing and comparing data) to the Internet,
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because they solve an Internet-centric problem with a claimed solution that
is necessarily rooted in computer technology, similar to the additional
elements in DDR Holdings." Update, Appendix I, 4. In contrast, here, as
discussed above, the limitations do not solve an Internet-centric problem
with a solution necessarily rooted in computer technology.
In response to the Appellants' argument that "the claim[ is] not
directed to an abstract idea as evidenced by lack of preemption" (Appeal
Br. 8; see also Reply Br. 6), we note that although the Supreme Court has
described "the concern that drives this exclusionary principle[, i.e., the
exclusion of abstract ideas from patent eligible subject matter,] as one of
pre-emption" (see Alice, 134 S. Ct. at 2354), characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. "The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability" and "[ fJor this reason, questions on preemption
are inherent in and resolved by the § 101 analysis." Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice,
134 S. Ct. at 2354). Although "preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Id.
We find unpersuasive the Appellants' argument that "the alleged
abstract idea is applied by use of a particular machine and it provides
improvements to the functioning of the computer itself." Appeal Br. 9. As
discussed above, the Specification, including the claims, does not provide
technological details on the manner in which the steps of the method are
performed nor any details on how the processor or system itself is improved.
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The claim does not recite a particular way of programming or designing the
processor/component to recognize, parse, or translate data, but instead
merely claims the functional results. Apple, 842 F.3d at 1241. The
Appellants' assertion that "the claimed invention avoids delays and
breakdowns caused in conventional systems as a result of receiving
electronic messages in varying formats" (Appeal Br. 10) is unsupported and
does explain how the invention technologically improves the computer.
Moreover, an abstract idea does not transform into an inventive
concept just because the prior art does not disclose or suggest it. See Mayo,
566 U.S. at 90; cf Reply Br. 4. "Groundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the § 101 inquiry." Ass 'n for
Molecular Pathology, 569 U.S. at 591. Indeed, "[t]he 'novelty' of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diehr, 450 U.S. at 188-
89.
We also find unpersuasive the Appellants' arguments that the claim is
"patent eligible under the tenants [sic] of McRO, Enfzsh, Bascom and
Amdocs (Israel)." Reply Br. 6; see also id. at 7-8 (citing McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016)),
BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016), Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288 (Fed. Cir. 2016).
In McRO, the claims were directed to a specific improvement in
computer animation and used rules to "transform[] a traditionally subjective
process performed by human artists into a mathematically automated process
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executed on computers," not simply the use of the computer. Fair Warning,
839 F.3d at 1094 (citing McRO, 837 F.3d at 1314). The claim here recites
an invention that is merely the routine or conventional use of a generic
computer. See FairWarning, 839 F.3d at 1097.
In Enfzsh, the court determined the claims were directed to a self-
referential table for a computer database and were directed to "a specific
improvement to the way computers operate." Enfzsh, 822 F.3d at 1336.
Conversely, here, the claims are not directed to an improvement in the way
computers operate. At best, they improve a way of providing information
using the ordinary capabilities of a general purpose computer. See Elec.
Power, 830 F.3d at 1354. As discussed above, the Specification does not
provide details on the technological manner in which the steps are
performed, including the identifying, parsing, and translating functions.
In BASCOM, the court determined that "an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces." BASCOM, 827 F.3d at 1350. In that case, the
installation of a filtering tool at a specific location, remote from the end
users, with customizable filtering features specific to each end user,
provided an inventive concept in that it gave the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server. Id. We find no analogous non-conventional, non-generic
arrangement of known, conventional pieces within a network or an
achievement of a technical improvement. Instead, the claim recites results-
focused limitations to identify, parse, price, and translate data.
In Amdocs, the court determined that the claim contained an inventive
concept because it "entails an unconventional technological solution
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( enhancing data in a distributed fashion) to a technological problem
( massive record flows which previously required massive databases)."
Amdocs, 841 F.3d at 1300. The claim's limitation of enhancing a record
"necessarily require[ d] that the[] generic components operate in an
unconventional manner to achieve an improvement in computer
functionality." Id. at 1300--01. Here, as discussed above, there is no such
unconventional technological solution to a technological problem that
achieves an improvement in computer functionality.
Based on the foregoing, we sustain the rejection under 35 U.S.C.
§ 101 of claim 20, and of claims 1, 6, 8-15, 18, 23, 25-36, and 38-51, which
fall with claim 20.
ReiectionII-35 US.C. §112. firstparagraph
The Examiner rejects claims 1, 6, 8-15, 18, 20, 23, 25-36, and 38-51
as failing to comply with the written description requirement. Specifically,
the Examiner finds "the Specification does not sufficiently identify how the
invention achieves the claimed function of automatically activating a market
data recognition module, and as a result, automatically activating the data
recognizer/ parser/ data converter, when an unstructured message is
received" (Final Act. 10-11) and does not "mention the concept of
automation" (Ans. 4).
The Appellants contend that the Specification provides adequate
description at paragraphs 46 and 47. Appeal Br. 11; Reply Br. 8.
To satisfy the written description requirement, the patent disclosure
must "reasonably convey[ ] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad
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Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane). The question is whether "the specification [ ] describe[ s] the
invention in sufficient detail so 'that one skilled in the art can clearly
conclude that the inventor invented the claimed invention as of the filing
date sought.' Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997) [ ]." In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008). The
Specification must describe the claimed subject matter, although it need not
contain the exact wording used in the claim. See Lockwood, 107 F .3d
at 1572.
After careful consideration of the paragraphs cited by the Appellants,
we agree with the Examiner that the Specification does not describe in
sufficient detail that the inventor invented the claimed automatic activation
of a data recognizer, a parser, and a pricing service to break down the
message structure, as recited in limitations (c}-(f) of independent claim 20,
and similarly recited in independent claim 1. The Specification provides
that the "market data recognition (MDR) feature ... can recognize structures
and quotes on structures" (Spec. ,r 46), "is also capable of recognizing
incoming and outgoing quote messages between users and non-users" (id.),
"has the ability to recognize bids and offers" (id. ,r 47), and "provides for an
inline chat message capability to add a quote to a structure" (id.). "The
collection of quotes for the structure may automatically be updated with any
recognized incoming or outgoing bids and/or offers, according to a user's
preferences." Id. "The identifying component may use the contextual
information to configure its operation or set default behaviors and settings."
Id. The Specification uses the term "activate" only once in describing that
"a contact's communication window may be opened or activated." Spec.
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,r 66. Thus, the Specification provides support for the MDR feature to
include recognizing data and structures, updating quote data, identifying
data, and parsing/converting text data. However, we do not see, and the
Appellants do not adequately explain, how or where the Specification
describes that the module is automatically activated upon receiving a
message or that the MDR automatically activates a recognizer, parser, or
pricing module, structure, or function. To the extent the Appellants argue
that "automatically" means that the functions are "automatically perform[ ed]
. . . when certain conditions are met" (Reply Br. 8), we note that the
Specification, including the original claims and the claims currently at issue,
does not recite that certain conditions must be met for the functions to be
performed. Rather, the Specification, including the claims, simply provides
for receiving data and performing functions on that data.
Based on the foregoing, we sustain the rejection under 35 U.S.C.
§ 112 of claims 1, 6, 8-15, 18, 20, 23, 25-36, and 38-51.
Reiection 111-35 USC § 103(a)
The Appellants argue the claims as a group for this rejection. See
Appeal Br. 4, 11. We select claim 20 as representative of the group;
claims 1, 6, 8-15, 18, 23, 25-36, and 38-51 stand or fall therewith. See
37 C.F.R. § 4I.37(c)(l)(iv).
The Appellants contend that the Examiner's rejection is in error
because: (1) "Wong fails to disclose or describe the elements for which it is
cited, including the claimed market data recognition (MDR) module, data
recognizer, parser, data converter and pricing service module" (Appeal
Br. 11 (emphases omitted); (2) Wong does not disclose breaking down
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messages to identify and price component parts (id. at 13); and (3) the
combination of Wong and Keen "fails to disclose unstructured messages or
an ability to process such messages" (id. at 11, 13-14). After careful review
of the Appellants' arguments as presented in the Appeal and Reply Briefs,
we are not persuaded of Examiner error.
The Examiner finds that Wong teaches a computer memory and
processor that send and receive a message, the message including at least
one structure comprising a derivative contract description, as partially
recited in limitations (a) and (b ), that automatically activate a market data
recognition ("MDR") module when the message is received, as partially
recited in limitation ( c ), the MDR module activating a data recognizer and a
parser, as partially recited in limitations ( d) and ( e ), and activating a pricing
service to break down the structure, price each component part, and assign a
premium to the structure, as recited in limitation (f), and that translate and
arrange the identified parts into a standardized arrangement, as recited in
limitation (g). See Final Act. 12-13 (citing Wong ,r 15, Fig. 2). The
Examiner acknowledges that Wong does not teach sending and receiving an
unstructured message including at least one structure, identifying a
component of the unstructured message, parsing the unstructured message
into components, and displaying the standardized arrangement. See id.
at 13-14. However, the Examiner relies on Keen for teaching these
elements, concluding that one of ordinary skill in the art would have applied
the known technique of Keen to the invention of Wong because it "would
have yielded predictable results and resulted in an improved invention ...
because applying said technique allows a customer unfamiliar with the
syntax of the pricing engine to request a price quote, thus improving the
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invention's overall user convenience." Id. at 14 (citing Keen ,r,r 29--31, 33,
34, 36, 51, Figs. 3, 6).
We find unpersuasive of Examiner error the Appellants' argument
that Wong fails to teach a market data recognition (MDR) module, data
recognizer, parser, data converter and pricing service module. Appeal
Br. 11. The Appellants simply summarize Wong's paragraph 15 and argue
that "no skilled artisan would equate the teachings of Wong with the
elements of Claim 1," because "Wong is directed to a completely different
technology ( e.g., creating new securities) that is literally opposed to the
technology covered by the claimed invention (e.g., processing unstructured
messages of varying formats and identifying unknown component parts
within the unstructured messages)." Id. at 12-13. As discussed above, the
Examiner relies on the combination of Wong and Keen to teach these
elements. The test for obviousness is not what any one reference would
have suggested, but rather what the combined teachings of the references
would have suggested to those of ordinary skill in the art. See In re Keller,
642 F.2d 413,426 (CCPA 1981). "[O]ne cannot show non-obviousness by
attacking references individually were, as here, the rejections are based on
combinations of the references." Id. (citation omitted). The Appellants do
not provide sufficient evidence or technical reasoning to rebut the
Examiner's findings as to what the prior art teaches.
To the extent the Appellants argue that Wong is non-analogous art
(see Appeal Br. 12-13), our reviewing court has set forth a two-prong test
for determining whether a prior art reference is analogous: (1) whether the
reference is from the same field of endeavor as the claimed invention, and
(2) if the reference is not within the same field of endeavor, whether the
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reference is reasonably pertinent to the particular problem with which the
inventor is involved. In re Klein, 647 F.3d 1343 (Fed. Cir. 2011). The
Appellants do not state the field of endeavor for Wong or the current
invention. To the extent the Appellants aver that Wong is in the field of
endeavor of "creating new securities" whereas the Appellants' invention is
in the field of endeavor of "processing unstructured messages of varying
formats and identifying unknown component parts within the unstructured
messages" (Appeal Br. 12-13), we disagree. Both Wong and the
Appellants' invention are in the field of endeavor of trading financial
products such as derivative securities/products. See Wong, Title, Abstract,
,r,r 1, 4; Spec. ,r,r 2--4, 36. As such, we find that Wong is analogous art.
We also find unpersuasive of error the Appellants' argument that
Wong and Keen, alone or in combination, fail to teach performing the
claimed functions. See Appeal Br. 12-14. Wong discloses "a method for
providing customized derivative securities," the custom securities being
based on received data regarding desired risk-return value and field and type
of investment, and that are priced according to current market prices. Wong,
Abstract, ,r 4. Based on the provided data, a structuring engine defines a
product comprised of components and determines the components' prices.
Id. ,r 15. Keen discloses an automated system and method "allowing traders,
etc. to use instant messaging (IM) (or other non-FIX based) communications
to input trading instructions directly into a broker's Order Management
System (OMS) for managing/executing trades." Keen, Abstract, ,r 2.
Figure 6 "illustrates exemplary IM chat windows, a trade blotter, and an
OMS graphical user interface" (id. ,r 19) so that messages can be sent and
received (id. ,r,r 29, 33). A trader server receives IM communications that
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are incompatible with the sell-side brokerage's order management system
and converts them into communications the management system can
understand, interpret, and/ or accept. Id. ,r 31. The trader server "scans the
IM communication to determine whether the IM communication includes, or
likely includes, trading instructions" such as predetermined keywords. Id.
,r 34. If it does not, then the communication is transmitted to the recipient
and/or stored. Id. ,r 35. If it is likely to include an instruction, then the IM is
parsed "to identify trade parameters of the trading instructions." Id. ,r 36.
The Examiner relies on the combination of Wong and Keen (see Final
Act. 13-14; Ans. 4--5) to teach "breaking down messages (whether
unstructured or otherwise) to identify and price (unknown) component parts"
(Appeal Br. 13). The Appellants argue that Wong does not teach this
limitation and that Keen does not teach unstructured messages (see id.
at 13-14 ), but do not argue why the combination of Wong and Keen does
not teach the recited limitations. Contrary to the Appellants' assertion, the
Specification does not provide that an "unstructured message" "refers to a
lack of organization, arrangement, sequence, attributes or format of text. In
other words, unstructured text does not have a standardized format and/or is
not arranged in any particular sequence nor does it necessarily need to
include any particular information, terms, data markers and/or attributes."
Id.; see also Reply Br. 9. Rather, the Specification provides no particular
definition of an "unstructured" message. Paragraph 45 discusses that
"unstructured text is entered into an IM screen ... [and] sent to a user in the
form of a text message from a non-user." The ordinary and customary
meaning of "unstructured" is lacking structure or organization, such as not
formally organized in a set or conventional pattern. Merriam-Webster
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Online Dictionary, https://www.merriam-webster.com/dictionary/
unstructured, retrieved Sept. 20, 2018.
When we viewing the term "unstructured" in light of the
Specification, we agree with the Examiner that Keen's messages that may or
may not contain trading terms lack a formal structure or organization,
similar to the text message of the Appellants' Specification. We disagree
that Keen's messages are contrary to the Appellants' invention "where no
key trading terms and/ or cadence are needed in order to process and/ or
display text messages." Appeal Br. 14. As noted above, in Keen, if there
are no trading terms, the message is passed to the recipient, i.e., processed
and/or displayed. And, although key terms and cadences may not be
required, the claims do not recite that they cannot be included.
We further find unpersuasive the Appellants' argument that the
Examiner "fails to provide any description or even explanation as to why one
of skilled in the art would be motivated to combine these references, or even
how the combination could be made to realize or produce a fully functioning
system, as claimed by the Appellants." Reply Br. 9. As discussed above,
the Examiner determines that one of ordinary skill in the art would modify
Keen with the teachings of Wong "because applying said technique allows a
customer unfamiliar with the syntax of the pricing engine to request a price
quote, thus improving the invention's overall user convenience." Final
Act. 14. The Appellants do not provide any specific argument or reasons
why the Examiner's provided reasoning is in error.
Based on the foregoing, we sustain the rejection under 35 U.S.C.
§ 103 of claim 20, and of claims 1, 6, 8-15, 18, 23, 25-36, and 38-51, which
fall with claim 20.
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DECISION
The Examiner's rejection of claims 1, 6, 8-15, 18, 20, 23, 25-36, and
38-51 under 35 U.S.C. § 101 is AFFIRMED.
The Examiner's rejection of claims 1, 6, 8-15, 18, 20, 23, 25-36, and
38-51 under 35 U.S.C. § 112 is AFFIRMED.
The Examiner's rejection of claims 1, 6, 8-15, 18, 20, 23, 25-36, and
38-51 under 35 U.S.C. § 103(a) is AFFIRMED.
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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