Ex Parte Steinberg et al

Patent Trial and Appeal Board

May 11, 2018

13412434 (P.T.A.B. May. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/412,434 03/05/2012 Jonathan L. Steinberg
60879 7590 05/15/2018
BROWNSTEIN HYATT FARBER SCHRECK, LLP
410 17th STREET
SUITE 2200
DENVER, CO 80202
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.
P000735.US.03 7907
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
05/15/2018 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):
PatentDocket@BHFS. COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN L. STEINBERG AND
LUCIANO SIRACUSANO III 1
Appeal2017-003053
Application 13/412,434
Technology Center 3600
Before ROBERT E. NAPPI, ERIC S. FRAHM and JAMES W. DEJMEK,
Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1, 2, and 5 through 21. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Wisdom Tree
Investments, Inc. Appeal Br. 3.
Appeal2017-003053
Application 13/412,434
INVENTION
Appellants' disclosed invention is directed to a financial instrument
formed by selecting and weighting securities according to selection and
weighting criteria. Abstract. Claim 1 is representative of the invention and
reproduced below.
1. A system for creating a financial instrument, comprising:
at least one non-transitory storage medium; and
at least one computer that executes instructions stored in
the at least one non-transitory storage medium to create a
financial instrument, comprising:
a first index comprising a first and second security, the
first and second security having a positive dividend yield;
the first security issued by a first affiliated entity, the first
security comprising a first fundamental datum satisfying a first
selection criterion comprising at least one of security type,
dividend paid, issuing entity revenue, number of employees of
issuing entity, trading forum of security, geographic location of
issuing entity or headquarters thereof, date of security
maturation, or presence in another index;
the second security issued by a second affiliated entity, the
second security comprising a second fundamental datum
satisfying the first selection criterion;
a second index comprising:
a first plurality of securities chosen from the first
index, the first plurality of securities comprising the
securities having the highest ranking according to the first
selection criterion; and at least one record stored in at least
one non-transitory medium that identifies the first and
second indexes; and
wherein the first and second securities are ranked
within the first index according to the first selection
criterion.
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Application 13/412,434
REJECTION AT ISSUE2
The Examiner has rejected claims 1, 2, and 5 through 21 under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter. Final
Act. 2-3.
The Examiner has rejected claims 1, 2, 5 through 11, and 13 through
21under35 U.S.C. § 103(a) as being unpatentable over Jones (US
2005/0060254 Al; published March 17, 2005) and Vass (US 7,251,617 Bl;
issued July 31, 2007 ). Final Act. 4---6.
The Examiner has rejected claims 12 and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Jones, Vass and Molinari (US 2003/0041036 Al;
published February 27, 2003). Final Act. 6.
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: laws of
nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). Although an abstract idea
2 Throughout this Decision we refer to the Appeal Brief (Appeal Br.) filed
July 25, 2016, Reply Brief (Reply Br.) filed December 12, 2016, Final
Office Action (Final Act.) mailed September 18, 2015, and the Examiner's
Answer (Answer) mailed October 11, 2016.
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Application 13/412,434
itself is patent ineligible, an application of the abstract idea may be patent
eligible. Alice, 134 S. Ct. at 2355. Thus, we must consider "the elements of
each claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Id. (citing Mayo, 566 U.S. at 78-80). The
claim must contain elements or a combination of elements that are
"'sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [abstract idea] itself."' Id. (citing Mayo, 566
U.S. at 72-73).
The Supreme Court sets forth a two-part "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355. First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. Mayo, 566 U.S. at 76-
77. If so, we consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional elements
"transform the nature of the claim" into a patent-eligible application. Id.
The court has described step two of this analysis as a 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." Id. at 71-73.
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Application 13/412,434
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. Appellants' arguments have not persuaded us of error in the
Examiner's conclusion that the claims are directed to patent-ineligible
subject matter or that the claims are obvious over the prior art.
Rejection under 35 U.S.C. § 101
Appellants argue on pages 5 and 6 of the Appeal Brief and pages 2
and 3 of the Reply Brief that the claims are drawn to a financial instrument
and as such is not directed to an abstract idea. Specifically, Appellants
argue:
The financial instrument did not exist before the claims
and is created by them. Individual financial instruments can be
bought and sold. Abstract ideas cannot be bought and sold.
Appeal Br. 5. Further, Appellants assert that the claims, create a specific
financial instrument, and do preclude creation of all financial instruments
comprising two indexes. Appeal Br. 6. Finally, Appellants argue that
creating a financial instrument is reciting significantly more than the abstract
idea and that the claim represents a "computer-centric challenge of
automated creation of financial instruments." Appeal Br. 7.
The Examiner responds to Appellants' arguments regarding the claim
reciting an abstraction by stating that the ability to buy or sell and "item" is
not a factor in determining patent-eligibility under 35 U.S.C. § 101 and that
the absence of preemption does not demonstrate patent-eligibility. Answer
3. Further, Examiner concludes that the claims do not recite significantly
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more than the abstraction as the recited use of a computer is merely to
perform functions generic to a computer. Answer 4.
We concur with the Examiner's conclusion that the claims recite an
abstract idea and do not recite significantly more. The Federal Circuit has
explained that, in determining whether claims are patent-eligible under
Section 101, "the decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can be seen-
what prior cases were about, and which way they were decided." Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
The Federal Circuit also noted in that decision that "examiners are to
continue to determine if the claim recites (i.e., sets forth or describes) a
concept that is similar to concepts previously found abstract by the courts."
Id. at 1294 n.2.
In the claims in instant case is similar to those at issue on In re
Chorna, 656 F. App'x 1016 (Fed Cir 2016). In Chorna the claims at issue
were directed to a financial instrument. Id. at 1019. The court held that
financial instruments are designed to protect the risk of investing and as such
are an abstract idea, an agreement between parties having an interest in
monetary value. Id. at 1020. Here, Appellants' Specification also shows
that the claimed financial instruments are similarly directed various interests
in monetary value. Spec. i-fi-17-9. Thus, we concur with the Examiner the
financial instrument is an abstract concept.
Further, with respect to Appellants' arguments directed to preemption,
we are not persuaded of error. As stated by the Examiner, "the absence of
complete preemption does not demonstrate patent eligibility." Answer
3. Our reviewing court has said "[ w ]here a patent's claims are deemed only
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to disclose patent ineligible subject matter under the Mayo framework, []
preemption concerns are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
We are similarly not persuaded by Appellants' arguments that the
claims recite significantly more than the abstract idea. The limitation cited
by Appellants, on pages 6 and 7 of the Appeal Brief, as reciting significantly
more than the abstract idea, is reciting the attributes of the securities in the
financial instrument and as such is merely further defining the abstraction.
These limitations define the nature of how the monetary value assigned (an
abstraction) and, thus, merely present an abstraction within an abstraction,
do not define an inventive concept. Further, we disagree with Appellants
that the claims recite a "computer-centric" challenge. As discussed above,
the claimed financial instrument is concerned with interests in monetary
value and, although Appellants' Specification describes the invention as
capable of being implemented on many types of computer platforms, the
Specification does not describe any manner of improving the functioning of
a computer. Accordingly, Appellants' arguments have not persuaded us of
error in the Examiner's rejection of representative claim 1 for being directed
to patent-ineligible subject matter and we sustain the rejection of claims 1, 2,
5 through 21under 35 U.S.C. § 101.
Rejections under 35 U.S.C. § 103
Appellants argue that the Examiner's rejection of representative claim
1 under 35 U.S.C. § 103(a), is in error, as the combined teachings of the
references do not teach "a first selection criterion comprising at least one of
security type, dividend paid, issuing entity revenue, number of employees of
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issuing entity, trading forum of security, geographic location of issuing
entity or headquarters thereof, date of security maturation, or presence in
another index." Appeal Br. 8; Reply Br. 8.
The Examiner, in response to Appellants' arguments, finds that the
claimed system would perform the same regardless of type of selection
criterion used and that Jones teaches market capitalization as a selection
criteria. Answer 4.
We concur with the Examiner. Further, we note that claim 1 recites a
list of criteria including "security type," "geographic location of issuing
entity," and "presence of another index." These criteria are listed in the
alternative, and, as such, only one needs to be present in the reference to
teach the disputed limitation. Appellants' Specification identifies, security
type as being an index or a fund. Thus, the scope of claim term "security
type" includes market capitalization funds. We find that Jones teaches funds
that meet three of the claimed criteria. Specifically, Jones teaches the
Wilshire 5000 fund, the fund contains entities are based upon market
capitalization (a security type), the fund "measures the performance of all
US headquartered equity securities" (a geographic location criteria) and the
fund includes securities in the Standard Poor' s 500 Index (presence of
another index). See Jones paras. 11 and 12. Accordingly, Appellants'
arguments have not persuaded us of error in the Examiner's obviousness
rejection of representative claim 1 and we sustain the rejection of claims 1,
2, 5 through 11, 13 through 19 and 21under35 U.S.C. § 103(a).
Appellants have not presented arguments directed to the Examiner's
rejection of dependent claims 12 and 20 under 35 U.S.C. § 103(a).
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Accordingly, we sustain the Examiner's rejection of these claims for the
same reasons as discussed with respect to claim 1.
DECISION
We sustain the Examiner's rejections of claims 1, 2, and 5 through 21
under 35 U.S.C. § 101 and 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv)(2015).
AFFIRMED
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