Ex Parte Pechenik et al

Patent Trials and Appeals Board

Jun 12, 2019

13770452 - (D) (P.T.A.B. Jun. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/770,452 02/19/2013
35811 7590 06/14/2019
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
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-08-1284CIP 9693
EXAMINER
DETWEILER, JAMES M
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
06/14/2019 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
Appeal2017-003500 1
Application 13/770,4522
Technology Center 3600
Before PHILIP J. HOFFMANN, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1--40. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
July 12, 2016) and Reply Brief ("Reply Br.," filed Dec. 28, 2016), and the
Examiner's Answer ("Ans.," mailed Nov. 4, 2016) and Final Office Action
("Final Act.," mailed Feb. 12, 2016).
2 Appellants identify YellowJacket, Inc. as the real party in interest. App.
Br. 1.
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CLAIMED INVENTION
Appellants' claimed invention "generally relates to a system for
trading and analyzing derivative products, and[,] more particularly, [to]
software that aggregates, organizes, parses and extracts market data for
trading information from trading networks." Spec. ,r 2.
Claims 1 and 21 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A system comprising:
[ (a)] one or more computer devices;
[ (b)] at least one graphical user interface configured to
send and receive at least one unstructured message over the
Internet via instant messaging, the unstructured message
comprising one or more component parts of a transaction;
[ ( c)] one or more server computers in communication
with the one or more computer devices, said one or more server
computers each comprising memory storing code and at least one
processor executing the code, said code configured to activate
[ ( d)] a market data recognition module when the at
least one unstructured message is received via the at least
one graphical user interface, the market data recognition
module comprising computer-readable instructions stored
on a non-transitory computer readable storage medium
and executed by at least one processor, the computer-
readable instructions, when executed, causing the market
data recognition module to automatically:
[ ( e)] determine a deal status using one of a
counterparty history and a counterparty activity;
[(f)] pair the at least one received
unstructured message with contextual information
using at least the deal status;
[ (g)] identify the one or more component
parts of the at least one received unstructured
message;
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[(h)] parse the at least one received
unstructured message into the identified component
parts;
[(i)] create an identifying object comprising
the identified component parts; and
[ U)] create at least one editable electronic
order ticket comprising the identifying object.
REJECTIONS
Claims 1--40 are rejected under 35 U.S.C. § 101 as judicially excepted
from statutory subject matter.
Claims 1, 3, 7, 16-18, 21, 23, 27, and 36-38 are rejected under 35
U.S.C. § 112(a) as failing to comply with the written description
requirement.
Claims 1 and 21 are rejected under 3 5 U.S. C. § 112 (b) as indefinite.
Claims 1-6, 20-26, and 40 are rejected under 35 U.S.C. § 103 as
unpatentable over Ajitsaria (US 2003/0061149 Al, pub. May 27, 2003) and
Feilbogen (US 2002/0023045 Al, pub. Feb. 21, 2002).
Claims 7-10 and 27-30 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Ajitsaria, Feilbogen, and Rose (US 2002/0133453 Al,
pub. Sept. 19, 2002).
Claims 11-14 and 31-34 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Ajitsaria, Feilbogen, Rose, and Annunziata
(US 2008/0215477 Al, pub. Sept. 4, 2008).
Claims 15, 16, 18, 19, 35, 36, 38, and 39 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Ajitsaria, Feilbogen, Rose, Annunziata, and
Cushing (US 7,162,447, iss. Jan. 9, 2007).
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Claims 17 and 37 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Ajitsaria, Feilbogen, Rose, Annunziata, and Albert
(US 2007/0118455 Al, pub. May 24, 2007).
ANALYSIS
Judicially-Excepted Subject Matter
Appellants argue the pending claims as a group. App. Br. 5-20. We
select independent claim 1 as representative. The remaining claims stand or
fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (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 Corp., 573 U.S. at 217. The first step
in that analysis is to "determine whether the claims at issue are directed to
one of those patent-ineligible concepts." Id. If the claims are not directed to
a patent-ineligible concept, e.g., 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 there are additional elements that "'transform the nature
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of the claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S.
at 79, 78).
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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
The USPTO recently published revised guidance on the application of
§ 101. 2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). 3 That guidance
revised the USPTO' s examination procedure with respect to the first step of
the Mayo/Alice framework such that a claim will generally be considered
directed to an abstract idea if (1) the claim recites subject matter falling
within one of the following groupings of abstract ideas: (a) mathematical
concepts; (b) certain methods of organizing human activity, e.g., a
fundamental economic practice; and ( c) mental processes ("Step 2A, Prong
One"), and (2) the claim does not integrate the abstract idea into a practical
application, i.e., apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception
3 The Revised Guidance is effective as of January 7, 2019, and applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019.
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("Step 2A, Prong Two"). See Revised Guidance 54--55. The Revised
Guidance references MANUAL OF p ATENT EXAMINING PROCEDURE
("MPEP") §§ 2106.05(a}-(c) and (e}-(h) in describing the considerations
that are indicative that an additional element or combination of elements
integrates the judicial exception, e.g., the abstract idea, into a practical
application. Id. at 55. If the recited judicial exception is integrated into a
practical application, as determined under one or more of these MPEP
sections, the claim is not "directed to" the judicial exception.
Only if the claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application do we then look to
whether the claim "[a]dds a specific limitation or combination of
limitations" that is not "well-understood, routine, conventional activity in the
field" or simply "appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception" ("Step 2B"). Id. at 56. With the legal principles
outlined above, and the 2019 Revised Guidance in mind, we tum to the
Examiner's § 101 rejection.
In rejecting the pending claims under § 101, the Examiner determined
that claim 1 is directed to an abstract idea encompassed by limitations ( e)
through U), which the Examiner characterized as a method of organizing
human activity and, therefore, an abstract idea. See Final Act. 18. The
Examiner further determined that this abstract idea is similar to the concept
of "comparing new and stored information and using rules to identify
options" identified by the court as abstract in SmartGene, Inc. v. Advanced
Biological Labs., SA, 555 F.App'x 950 (Fed. Cir. 2014) because, like the
claims in SmartGene, Appellants' claims compare new information ( an
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unstructured message) to stored information ( deal status and counterparty
activity) using rules (pairing rules, parsing rules) to identify options (a
suitable electronic order ticket comprising identifying objects). Final Act.
18-19. The Examiner also determined that the abstract idea is similar to the
concept of "data recognition and storage" identified by the court as abstract
in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l
Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014) because, like the claims in Content
Extraction, Appellants' claims collect/ detect data ( an unstructured message,
deal status, counterparty activity, counterparty history, parsed identified
component parts) and store the information (within a suitable electronic
order ticket comprising identifying objects). Id. at 19. The Examiner further
determined that the claims do not include additional elements that are
sufficient to ensure the claims amount to significantly more than the abstract
idea. Id. at 22. Specifically, the "claim elements merely add specific
limitations that are well-understood, routine and conventional in the field,
and fail to add unconventional steps that confine the claims to a particular
useful application." Id.
In so doing, the Examiner notified Appellants of the reasons for the
rejection under 35 U.S.C. § 101 in a sufficiently articulate and informative
manner as to meet the notice requirement of 35 U.S.C. § 132, thereby
establishing a prima facie case of patent ineligibility. See In re Jung, 637
F.3d 1356, 1363 (Fed. Cir. 2011) (holding that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the notice requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for the rejection, "together with such information
and references as may be useful in judging the propriety of continuing
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prosecution"). Therefore, we are not persuaded by Appellants' argument
(App. Br. 17-18) that the Examiner has not met the burden of establishing a
rejection under 35 U.S.C. § 101.
Judicial Exception
The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the [S]pecification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d at 1346). Here,
the Specification is titled "METHOD AND SYSTEM FOR COLLECTING
AND PARSING MARKET DATA FROM VARIOUS SOURCES." The
Specification describes that the invention "generally relates to a system for
trading and analyzing derivative products, and more particularly, [to]
software that aggregates, organizes, parses and extracts market data for
trading information from trading networks." Spec. ,r 2. The Specification
describes in the Background section that conventional methods of
communicating indications of interest and/or pricing information related to
derivative contracts in the voice broker market include voice
communications and instant messenger ("IM"). Id. ,r 6. Brokers may
receive and access multiple instant messages simultaneously, and
transmitting information via IM provides a written record of the information,
making IM an uprising favorite for communicating indications of interest.
Id.
Nonetheless, IM technology suffers deficiencies in the voice broker
market. Id. ,r 7. Namely, IM communications are unstructured text (i.e.,
textual information that does not comply with or follow any particular order,
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sequence or syntax). Id. ,r 8. Because the text does not have a particular
structure, conventional electronic trading systems cannot automatically
process and extract relevant information in the text of the IM
communication. Id. ,r 8. Appellants' invention seeks to recognize, parse,
and extract relevant information from unstructured IM text and convert the
unstructured text into structured data that can be easily organized for
presenting to users. Id. ,r 10. It also seeks to convert the unstructured text
into a format that can be processed and integrated with all types of electronic
systems and modules. Id. ,r 11.
With this context in mind, claim 1 recites the following limitations:
"[receiving] at least one unstructured message [comprising one or more
component parts of a transaction (limitation (b))]" (limitation (d));
"determine a deal status using one of a counterparty history and a
counterparty activity" (limitation ( e) ), "pair the at least one received
unstructured message with contextual information using at least the deal
status" (limitation (f)); "identify the one or more component parts of the at
least one received unstructured message" (limitation (g)); "parse the at least
one received unstructured message into the identified component parts"
(limitation (h)), "create an identifying object comprising the identified
component parts" (limitation (i)); and "create the at least one editable
electronic order ticket comprising the identifying object" (limitation U)).
These limitations, under their broadest reasonable interpretation in light of
the Specification, recite rules or instructions to process a message
comprising one or more component parts of a transaction to create an order
ticket, i.e., a commercial interaction, which is a method of organizing human
activity and, therefore, an abstract idea. See Revised Guidance 52. These
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limitations also could be performed in the human mind, which is a mental
process and, therefore, recites a series of steps for evaluating data to create
an order ticket, which is a mental process, and, therefore, an abstract idea.
Id.
Practical Application
Under the Revised Guidance, if a claim recites a judicial exception
(e.g., method of organizing human activity, a mental process), it must then
be analyzed to determine whether the recited judicial exception is integrated
into a practical application of that exception. Revised Guidance 54.
Specifically, we identify whether there are any additional elements recited in
the claim beyond the judicial exception, and evaluate the additional elements
individually and in combination to determine whether they integrate the
exception into a practical application. Id. at 54--55.
Here, claim 1 additionally recites "one or more computer devices"
(limitation (a)); "at least one graphical user interface configured to send and
receive at least one unstructured message over the Internet via instant
messaging, the unstructured message comprising one or more component
parts of a transaction" (limitation (b )); "one or more server computers in
communication with the one or more computer devices, said one or more
server computers each comprising memory storing code and at least one
processor executing the code, said code configured to activate [ a market data
recognition module]" (limitation (c)); and a "market data recognition module
[("MDR")] comprising computer-readable instructions stored on a non-
transitory computer readable storage medium and executed by at least one
processor, the computer-readable instructions, when executed, causing the
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market data recognition module to automatically [perform limitations ( e)
through U)J" (limitation (d)).
We find no indication in the Specification, nor do Appellants direct us
to any indication, that these additional elements implement the abstract idea
with a specialized computer hardware or other inventive computer
components, i.e., a particular machine, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. Instead, these elements are described in the
Specification at a high level of generality, i.e., as generic computer
components. See, e.g., Spec. ,r,r 36-39, 86-89. And "after Alice, there can
remain no doubt: recitation of generic computer limitations does not make
an otherwise ineligible claim patent-eligible." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a "practical application," as that
phrase is used in the 2019 Revised Guidance. See Revised Guidance 55.
Instead, the additional limitations generally link the identified abstract idea
to a particular technological environment ( e.g., instant messaging) or field of
use, and/or add pre- or post-solution activity (e.g., send/receive at least one
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unstructured message) to the abstract idea, which is insufficient to integrate
the abstract idea into a practical application. See id.
Appellants argue that claim 1 is not directed to an abstract idea
because it improves the functioning of a computer, analogous to the patent
eligible claims in Enfish. App. Br. 6-11; see also Reply Br. 4--5. According
to Appellants, claim 1 improves the functioning of a computer system "by
providing a mechanism that enables the claimed computer system to receive
and process data messages that were otherwise not processable, and convert
those data messages into electronic forms that are suitable for use and
editing by external systems." App. Br. 7. Specifically, Appellants assert
that the claimed MDR module "represents a technological innovation and
advancement in computer systems that enable them to process more and
more types of information than before." Id. Appellants contend that the
MDR module increases the computer system's throughput and operating
efficiency by processing any unstructured data message, and converting
objects within unstructured data messages into electronic order tickets that
are suitable for use and editing by external sources. Id. at 8.
But we are not persuaded that the MDR having computer-readable
instructions stored on a non-transitory computer readable storage medium
(limitation (d)) and the execution by a process of the MD R's computer-
readable instructions (limitations ( e) through U)) improves the functioning of
a computer itself or otherwise provides an improvement to another
technology or technical field comparable to the claims in Enfish. See Enfish,
822 F.3d at 1336, 1339 (holding claims focused on a self-referential table for
a computer database designed to improve the way a computer stores and
retrieves data in memory were directed to a specific improvement in the way
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computers operate). Instead, Appellants make clear that claim 1 focuses on
improving a process for a commercial interaction, i.e., an abstract idea.
Namely, a broker receives unstructured data messages from a trader
by telephone and in-person voice conversations, as well as unstructured IM
communications; analyzes the information through a series of mental steps
that could be performed in the human mind and/ or with pen and paper; and
creates an order for a transaction based on the results of the data collection
and analysis. See Spec. ,r,r 5---6; see also id. ,r,r 7-8 ( describing that
conventional IM communications have enhanced workflow between traders
and brokers, but conventional electronic trading systems cannot
"automatically process and extract" relevant information in unstructured
data messages). By way of attorney argument, Appellants assert that this
conventional approach performed by a human results in "discarded data,
missed opportunities and inefficient use of resources." (App. Br. 8, citing
Spec. ,r,r 5, 8, 9). Ostensibly, Appellants contend that claim 1 improves
electronic trading systems by enabling unstructured data messages
communicated via IM technology to be processed automatically by the
MDR module (a software module), instead of mentally by a human. Yet, the
improvements touted by Appellants concern making a broker faster and
more efficient with creating an order based on an unstructured message from
a customer on behalf of a customer. This is not a technical solution to a
technical problem or an improvement in the functioning of a computer or
other technical field. Instead, it is an implementation of the abstract idea in
a particular technological environment.
Implementing limitations ( e) through U), as recited in claim 1, as
computer-readable instructions executed by a processor, may well improve
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the speed and accuracy in creating order tickets from an unstructured
message over prior art systems that processed such messages mentally by a
human. However, the use of a computer to implement an abstract idea ( a
commercial interaction) is insufficient to render a claim patent eligible. See
Enfish, 822 F.3d at 1335-35; see also OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015) ("relying on a computer to perform
routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible").
We are not persuaded by Appellants' argument that claim 1 is patent-
eligible under BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016). App. Br. 11-12. The claims at issue in
BASCOM were directed to a "content filtering system for filtering content
retrieved from an Internet computer network," which the court held to be an
abstract idea. BASCOM, 827 F.3d at 1348--49. However, the court further
held that the ordered combination of limitations transformed the abstract
idea into a practical application of that abstract idea. Id. at 1352. Namely, a
non-conventional and non-generic arrangement of known, conventional
pieces, such as a local client computer and a remote ISP server, resulted in
"a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user." Id. at 1350.
Appellants contend that claim 1 is analogous to the claims in
BASCOM because it recites an ordered combination of steps performed by
the MDR module for processing and converting unstructured messages,
which, as described by Appellants above in the context of Enfish, results in a
technical improvement upon prior art processes. App. Br. 11. However, we
are not persuaded, for the same reasons described above in the context of
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Enfish, that claim 1 's MDR module provides a "technical improvement," as
opposed to an improvement in a commercial interaction for which computer
components are used in their ordinary capacity.
Appellants' reliance on DDR Holdings also fails to persuade us of
Examiner error. See App. Br. 12-13. In DDR Holdings, the Federal Circuit
held that the claims were directed to statutory subject matter because they
claimed a solution "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
i.e., 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. We are not
persuaded that a comparable situation is presented here.
Appellants argue that claim 1 is patent-eligible under DDR Holdings,
because it is "necessarily rooted in computer technology" and "overcome[ s]
a computer-centric problem specifically arising in the realm of computer
networks and the Internet." App. Br. 12. Specifically, Appellants contend
that the MDR module is activated when an unstructured message is received,
and then it processes, parses, and converts the message into an editable
electronic order ticket that is capable of being processed. Id. (citing Spec.
,r,r 46-47). Appellants' invention, thus, seeks to automatically process and
extract relevant information included in an unstructured message, and
structure that information for processing by other systems. Spec. ,r,r 6, 8-9.
Processing unstructured data to create an order ticket does not embody a
problem "rooted in computer technology" or even a problem unique to
computers or computer networks. App. Br. 12.; see Spec. ,r,r 5---6 (describing
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that brokers in conventional systems recognize, parse, and extract
information from unstructured messages communicated by voice over a
telephone). We find no technological improvement at issue in claim 1,
analogous to DDR Holdings' change to the routine, conventional functioning
of Internet hyperlink protocol. DDR Holdings, 773 F.3d at 1257. Instead,
claim 1 requires nothing more than implementing the abstract idea on a
"computer system." Compare with id. (the claims at issue did not simply
use computers to serve a conventional business purpose).
Appellants argue that the claims are analogous to the patent-eligible
claims in Diamond v. Diehr, 450 U.S. 175 (1981). App. Br. 13-14.
Appellants contend that "the claimed computer provides a mechanism, like
Diehr, for determining and controlling when the MDR module is activated
and what functions it performs." Id. at 13. And the MDR module, in tum,
transforms unstructured messages to "create[] something what was not there
- an order ticket- much like the rubber mold in Diehr." Id. Yet,
Appellants' claim 1 involves a commercial interaction that receives one
form of data ( an unstructured message), and processes the data to create
another form of data (an electronic order ticket). Diehr, in contrast, involved
transforming a particular article (uncured rubber) to a different state or thing
(precision-molded synthetic rubber products). Diehr, 450 U.S. at 177.
Claim 1 does not recite a transformation of a particular article to a different
state or thing, analogous to Diehr 's transformation of uncured synthetic
rubber into precision-molded synthetic rubber products. See Revised
Guidance 55, n.28
Appellants further argue that claim 1 is analogous to patent-eligible
claim 2 of Example 21 of the July 2015 Update on Subject Matter
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Eligiblility. 4 See App. Br. 14--16. Seeking to draw an analogy with claim 2
of Example 21, Appellants contend that Appellants' claim 1 "recite[ s]
activating components for time sensitive processes, i.e., activating the MDR
module to reformat unstructured messages into a data format suitable for
time-sensitive trading (i.e., an editable electronic order ticket)." Id. at 14.
Yet, similar to the claims in DDR Holdings, claim 2 of Example 21
"addresses the Internet-centric challenge of alerting a subscriber with time
sensitive information when the subscriber's computer is offline." July 2015
Update 4. Claim 2 solves this Internet-solution by transmitting an alert over
a wireless communication channel to activate the stock viewer application,
thereby enabling the connection of the remote subscriber to the data source
when the subscriber comes online. Id. Put simply, claim 2 of Example 21,
like the claims in DDR Holdings, solves an Internet-centric problem with a
solution that is necessarily rooted in computer technology. Id. As described
above, here, we find no analogous Internet-centric problem.
In the Reply Brief, Appellants additionally argue that the Federal
Circuit in McRO "made clear that automation both constitute[ s] a
technological improvement and is patent eligible." Reply Br. 7 ( emphasis
omitted). Appellants suggest that any difference between a human process
and the process performed by the MDR module, renders the claims patent
eligible. See id. at 7-8. Yet, the Federal Circuit premised its determination
that the claimed invention in McRO was patent-eligible because it was
4 See July 2015 Update, Appendix 1: Examples ( available at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-appl.pdf)
(hereinafter "July 2015 Update").
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directed to a "technological improvement over the existing, manual 3-D
animation techniques" through the use of "limited rules in a process
specifically designed to achieve an improved technological result in
conventional industry practice." McRO, 837 F.3d at 1316. In McRO, an
improvement in computer animation was realized using rules to define an
output morph weight set stream as a function of phoneme sequence and time
of said phoneme sequence, obviating the need of human animators to make
visual and subjective determinations for the morph weight sets. Id. at 1306,
1313. In this sense, McRO is akin to DDR Holdings, Enfish, and similar
decisions that have held claims patent-eligible where the claimed invention
provided a technological improvement in industry practice. In contrast,
here, Appellants do not identify, and we do not find, any specific rules
analogous to those in McRO that enabled a computer to generate computer-
animated characters.
We also are not persuaded by Appellants' argument that the present
claims are similar to those at issue in Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288 (Fed. Cir. 2016). Reply Br. 6. In Amdocs, the Federal
Circuit held the claim patent-eligible because it "entail[ ed] an
unconventional technological solution ( enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases)." Amdocs, 841 F.3d at 1300. Namely, "[t]he
solution require[ d] arguably generic components, including network devices
and 'gatherers' which 'gather' information." But the court concluded that
these generic components provided an enhancing limitation for specifying
how the data is processed before placement in a database. Id. at 1301. The
court further concluded that this "enhancing limitation necessarily require[ d]
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that these generic components operate in an unconventional manner to
achieve an improvement in computer functionality." Amdocs, 841 F.3d at
1300-01.
Appellants argue that the present claims are analogous to those in
Amdocs because the
presence of the claimed recognizer module causes the claimed
system ( which may comprise generic computer components) to
operate unconventionally to enhance data (i.e., converting
unstructured data in unstructured IM messages into an editable
electronic order ticket), which in tum improves the operation of
the computer system/ functionality ( discussed in detail above).
Reply Br. 6. But, as described above, we are not persuaded that the MDR's
performance of limitations ( e }-U), as recited in claim 1, for converting an
unstructured message into an electronic order ticket is a technological
process, technological improvement, or improvement to the operation of a
computer system, rather than an improvement to an abstract idea.
Appellants argue that claim 1 is patent-eligible because it does not
preempt the abstract idea of "parsing messages." App. Br. 15-16; see also
Reply Br. 9-10. However, preemption is not the sole test for patent-
eligibility. Although the Supreme Court has described "the concern that
drives [the exclusion of abstract ideas from patent eligible subject matter] as
one of pre-emption," Alice Corp., 573 U.S. at 216, 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 "[f]or 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.
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2015) ( citing Alice Corp., 573 U.S. at 216). "[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility." Id.
Appellants also argue that claim 1 recites elements that are applied by
a particular machine - a specialized MDR module that performs functions
to convert unstructured messages into editable electronic orders. App.
Br. 16. Yet, the claimed MDR module includes computer-readable
instructions stored on a non-transitory computer medium and are executed
by at least one processor for performing the abstract idea embodied by
limitations (e) through U). None of these components, considered
individually or in combination, indicates that a particular machine is
required to perform limitations ( e) through U). Moreover, Appellants do not
direct us to any indication in the Specification that the operations recited in
claim 1 require any particular machine. See, e.g., Spec. ,r,r 12, 38-39
( describing the computer components in high level terms).
Appellants attempt to analogize claim 1 to the patent-eligible claims
in McRO, 837 F.3d 1299 because it recites "a set of rules for converting
unstructured messages that achieve a technological improvement with very
specific claim limitations that are distinct from prior art processes and
improves upon prior art processes." Reply Br. 5. In McRO, the Federal
Circuit addressed claims directed to "[a] method for automatically animating
lip synchronization and facial expression of three-dimensional characters."
McRO, 837 F.3d at 1307. For example, claim 1 of McRO recites a method
for automatically animating lip synchronization and facial expression of 3-D
characters comprising, among other things, "obtaining a first set of rules that
define output morph weight set stream as a function of phoneme sequence
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and time of said phoneme sequence." Id. at 1307---08. The court reviewed
the Specification of the patent at issue and found that, rather than invoking
the computer merely as a tool, "[c]laim 1 of the [asserted] patent is focused
on a specific asserted improvement in computer animation." Id. at 1314.
The court found that the plain focus of the claim was on an improvement to
computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity.
Unlike claim 1 of McRO, Appellants' claim 1 does not recite specific
rules with specific characteristics that improve computer animation
techniques or some other technology. Instead, limitations ( e) through U) of
Appellants' claim 1 each recite a desired result without the requisite
technical details to indicate any improvement in technology. For example,
instead of presenting any specific rules for parsing the unstructured message,
limitation (h) recites the desired functionality to be achieved "parse the at
least one received unstructured message into the identified component
parts." Likewise, limitation (g) recites "identifying the ... component parts"
without specifying any particular technique for accomplishing the desired
result.
Likewise, to the extent Appellants argue that the MDR called for in
limitation ( d) effects a transformation or reduction of a particular article to a
different state or thing (see App. Br. 16), we disagree. The MDR merely
uses a computer to perform the abstract idea recited in limitations ( e)
through U). We do not find, and Appellants do not identify, any
transformation of a particular article to a different state or thing, analogous
to the transformation of uncured synthetic rubber into precision-molded
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synthetic rubber products in Diehr, for example. See Revised Guidance 54,
n.28.
We find no indication in the record that attributes the additional
elements recited in claim 1 to an improvement in computer technology
and/or functionality, to implementing the abstract idea with a particular
machine that is integral to the claim, that effects a transformation or
reduction of a particular article to a different state or thing, that applies the
abstract idea in some other meaningful way beyond linking the use of the
abstract idea to a particular technological environment, or that otherwise
indicates that the claimed invention integrates the abstract idea into a
"practical application," as that phrase is used in the Revised Guidance.
Inventive Concept
Appellants argue that claim 1 recites significantly more than the
abstract idea because it recites a novel component (the MDR module)
including a novel set of specific rules that did not exist in prior art electronic
trading systems that "literally improves the functioning of the computer
network architecture by providing new functionality ( e.g., the ability to
process unstructured instant messaging data to be leveraged/processed by
various components of the network)." Reply Br. 4--5; see also id. at 6 ("This
novel set of rules was not performed, either electronically or by a human, in
prior systems."). Yet, these limitations, even if novel and non-obvious,
recite no elements beyond the abstract idea. Although the second step in the
Mayo/Alice framework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
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upon the [ineligible concept] itself.'" Alice Corp., 573 U.S. at 217-18
(alteration in original). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
Here, Appellants have not identified, and we do not find, any additional
elements recited in claim 1 that, individually or in combination, provide
significantly more than the abstract idea. At best, the additional elements
limit the abstract idea to a particular technological environment and/or field
of use.
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 101. We also sustain the rejections of claims 2--40, which fall with
claim 1.
Written Description
The Examiner rejects claims 1, 3, 7, 16-18, 21, 23, 27, and 36-38
under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement. Final Act. 22-32; see also Ans. 12-14. The written
description requirement requires that the disclosure of the application relied
upon reasonably convey that the inventor had possession of the claimed
subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). The written description
requirement is met when the disclosure "allow[ s] one skilled in the art to
visualize or recognize the identity of the subject matter purportedly
described." Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed.
Cir. 2002).
The Examiner finds that claims 1, 7, 16-18, 21, 27, and 36-38 recite
computer-implemented functional claim language with respect to the
claimed "market data recognition module" ( claims 1, 7, 21, 27), the claimed
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"user interface" ( claims 3 and 23), and the claimed "one or more server
computers" (claims 16-18 and 36-38) that is not adequately supported by
the Specification. Final Act. 23-32 (citing Spec. ,r,r 44, 46-48, 50, 55, 64,
76, 83, 84, 88, 90, 94--100). With respect to each of these claim elements,
the Examiner acknowledges that the Specification describes the functionality
of the claim element, but finds more explicit technical detail necessary to
show possession. See id.; see also Ans. 12 ("the Examiner did not reject the
claims because the disclosure failed to 'describe literally' the claim
elements" (emphasis added)). For example, referencing MDR functionality
described at paragraphs 46-4 7 of the Specification, the Examiner finds that
the Specification fails to describe how structure data is normalized and
correlated or what a template library looks like. See Final Act. 26; see also,
e.g., id. at 30 (finding that paragraph 94 of the Specification fails to describe
"how the server computer actually transmits the order ticket to a determined
electronic and/or floor-based exchange").
Appellants identify Figures 1-3B and paragraphs 10-13, 38, 41, 44--
47, 50, 51, 55, 64, 76, 83, 84, 86-90 as providing support for the claimed
elements. App. Br. 2--4, 18-19. We find that the portions of the
Specification identified by Appellants and additionally identified by the
Examiner provide sufficient written description support to show possession
of the claimed invention. In particular, the written description shows
Appellants had possession of a system that includes the claimed market data
recognition module, user interface, and one or more server computers. We
agree with Appellants that the skilled artisan would recognize possession
from at least the cited disclosures. The Examiner's demand for more
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explicit support in the Specification, specifying additional detail, is
unnecessary.
Therefore, we do not sustain the Examiner's rejection of claims 1, 3,
7, 16-18, 21, 23, 27, and 36-38 as lacking sufficient written description
support.
Indefiniteness
The Examiner rejects independent claims 1 and 21 under 35 U.S.C.
§ 112(b) because the Examiner finds that the term "unstructured message" is
vague and indefinite. Final Act. 32-33; see also Ans. 14. In particular, the
Examiner finds that the phrase "unstructured message ... comprising
structure and quotes on structure ... comprising one or more component
parts" is indefinite. Final Act. 32. As an initial matter, neither claim 1 nor
claim 21 recites that an unstructured message comprises "structure and
quotes on structure." Further, we agree with Appellants that one of ordinary
skill in the art would understand, in light of the Specification, that an
"unstructured message" refers to a message, such as an instant message, that
contains textual information that does not comply with or follow any
particular order, sequence or syntax. See App. Br. 19-20; see also Reply
Br. 10-11 (citing Spec. ,r,r 8, 45, 46); Spec. ,r,r 8 (describing an instant
message as a message that includes unstructured textual information), 45
( describing parsing an unstructured message to recognize textual
information, such as a quote on a structure (i.e., an off-exchange contract
type)).
Therefore, we do not sustain the rejection of claims 1 and 21 under 35
U.S.C. § 112(b) as indefinite.
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Obviousness
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 1 and 21 under 35 U.S.C. § 103(a) because
Feilbogen does not teach or suggest a market data recognition module that
"create[ s] at least one editable electronic order ticket comprising the
identifying object" as recited in claim 1 's limitation U), and similarly recited
in claim 21. App. Br. 21-22. The Examiner finds that Ajitsaria teaches
parsing an instant message into a standardized deal, but does not appear to
disclose creating at least one editable electronic order ticket. Final Act. 37
( citing Ajitsaria ,r,r 60, 157, 572). However, the Examiner finds that
Feilbogen teaches collecting and parsing market data from various sources,
including conversations between traders, and creating an editable electronic
order ticket. Id. ( citing Feilbogen ,r,r 8, 77, claim 3). The Examiner
determines that it would have been obvious to modify Ajitsaria's system to
include placing the standardized deal into an editable electronic order ticket,
as taught by Feilbogen, because doing so would enable more efficient
fulfillment of a desired trade. Id. at 38.
Feilbogen relates to a method and system for initiating, negotiating,
completing, and settling trades. Feilbogen ,r 2. In the Background section,
Feilbogen describes that computerized systems, such as Reuters and
Bloomberg, serve as electronic portals (i.e., trading interfaces) for
conducting trading electronically between counterparts (i.e., two separate
entities or parties). Id. ,r,r 3, 6. A counterpart subscribes to a portal and
conducts business with other counterparts connected to the same portal. Id.
,r 7. To conduct business with a counterpart who subscribes to a different
portal, a subscription to the different portal is required. Id. The portal uses
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secure, dedicated lines to transmit data between counterparts using portal-
specific data formats. Id. ,r 8. The portal enables the parties to engage in an
exchange of trade information for negotiating and finalizing the particular
details of a trade using a portal-specific data format. Id. The portal can
parse to determine the trade information that the customer and price provider
wish to exchange. Id. After the transaction is completed and accepted by
both counterparties, the system generates an electronic ticket containing the
trade details. Id. Individual portal windows allow a conversation between
the price provider and the customer, creation of a trade ticket based on a
conversation between the customer and price provider or based on trade
details electronically received in the window. Id. ,r 77. Thus, we agree with
Appellants that the portions of Feilbogen cited by the Examiner teach
creating an order ticket, but fail to teach that the ticket is "editable." See
App. Br. 21-22.
In response to Appellants arguments, the Examiner determines that
Ajitsaria teaches that orders are "editable," and that Feilbogen also teaches
that a trade ticket is editable. Ans. 17 (citing Ajitsaria ,r,r 83, 84, 98-100;
Feilbogen ,r,r 77-79). We have reviewed the cited portions of Ajitsaria and
Feilbogen. Yet, nothing in the cited portions teaches the argued limitation.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1 and 21 and dependent claims 2---6, 20, 22-26,
and 40 under 35 U.S.C. § 103(a).
The Examiner's rejections of claims 7-19 and 27-39 under 35 U.S.C.
§ 103(a) do not cure the deficiency in the rejection of independent claims.
Therefore, we do not sustain the rejections of claims 7-19 and 27-39 under
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35 U.S.C. § 103(a) for the same reasons described with respect to the
independent claims.
DECISION
The Examiner's rejection of claims 1--40 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1, 3, 7, 16-18, 21, 23, 2 7, and 3 6-
38 under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement is reversed.
The Examiner's rejection of claims 1 and 21 under 35 U.S.C. § 112(b)
as indefinite is reversed.
The Examiner's rejections of claims 1--40 under 35 U.S.C. § 103(a) as
unpatentable are reversed.
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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