Ex Parte Tilfors

Patent Trial and Appeal Board

May 7, 2018

13600805 (P.T.A.B. May. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/600,805 08/31/2012
23117 7590 05/09/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Jan TILFORS
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
JRL-4010-24 7 6734
EXAMINER
ALLADIN, AMBREEN A
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
05/09/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN TILFORS
Appeal 2016-008051
Application 13/600,805
Technology Center 3600
Before JOHN A. JEFFERY, JOHN P. PINKERTON, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 1-21, which constitute all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b ). 1
We AFFIRM.
1 Appellant identifies Nasdaq Inc. as the real party in interest. App. Br. 3.
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Application 13/600,805
STATEMENT OF THE CASE
Introduction
Appellant's disclosed and claimed invention is generally directed to
"determining how a quantity of an order in a market is allocated to other
orders in the market." Spec. 1, 11. 6-7. 2 Appellant acknowledges the
Specification describes in detail "how an automated exchange computer
system can be programmed in a particular manner to match electronically
submitted orders." App. Br. 26. Appellant submits, however, that the
amended claims on appeal "are directed to a particular technique for
automatically processing electronic data messages against those electronic
data messages that have been previously received (and not yet processed)."
Id. at 29.
Claim 1 is representative and reproduced below (with the disputed
limitations emphasized in italics):
1. A method performed on a computer server system that
includes a memory device storing a plurality of pending data
messages that are to be operated on, each one of the plurality
of pending data messages having (a) a numerical value, (b) a
data message type identifier for the respective data message,
and ( c) a participant identity parameter associated with the
respective pending data message, the computer server system
including processing circuitry and receiver circuitry, the method
compnsmg:
2 Our Decision refers to the Final Office Action mailed June 18, 2015
("Final Act."); Appellant's Appeal Brief filed Dec. 21, 2015 ("App. Br.")
and Reply Brief filed Aug. 23, 2016 ("Reply Br."); the Examiner's Answer
mailed June 23, 2016 ("Ans."); and the original Specification filed Aug. 31,
2012 ("Spec.").
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receiving, by the receiver circuitry, a signal comprising
an incoming data message that includes a data transaction
request with (a) a specified data message type identifier, (b) at
least one predefined instruction from among a plurality of
possible predefined instructions, and ( c) a quantity value;
for each one of the plurality of pending data messages
with a data message type identifier that is the specified data
message type identifier, accessing, by using the processing
circuitry, the respective pending data message to determine the
participant identity parameter for the accessed respective
pending data message;
for each determined participant identity parameter having
pending data messages with the specified data message type
identifier, determining, by the processing circuitry, a collective
time that pending data messages with the determined
participant identity parameter and the specified data message
type identifier have spent on at least one dynamically
determined numerical value that is associated with the specified
data message type identifier; and
processing, by the processing circuitry, the data
transaction request included in the incoming data message to
the plurality of pending data messages based on the determined
time spent on the dynamically calculated numerical value by
said determined participant identity parameter.
App. Br. 35 (Claims App'x).
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Rejections on Appeal
Claims 1-21 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final Act.
2-3.
Claims 1-21 stand rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written-description requirement. 3 Final Act. 3--4.
Claims 1-21 stand rejected under 35 U.S.C. § 112, second paragraph,
as indefinite for failing to particularly point out and distinctly claim the
subject matter which the inventor regards as the invention. Final Act. 5-6.
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Carone et al. (US 2012/0158567 Al; published June 21,
2012) ("Carone") and Altius (US 2009/0182657 Al; published July 16,
2009). 4 Final Act. 7-26.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments in the Briefs. For the reasons discussed infra, we are not
persuaded by Appellant's arguments that the Examiner erred in rejecting
3 The Examiner withdrew the rejection under 35 U.S.C. § 112, first
paragraph, with respect to claim 12 as to the access, determination, and
processing circuitry and claims 5, 6, 16, and 17 as to the previous and
current trading day. See Ans. 2.
4 The Examiner finds claims 1 and 11, and their dependent claims, are so
indefinite that no art rejection is warranted. Final Act. 6 (citing In re Steele,
305 F.2d 859 (CCPA 1962)). The Examiner also finds that, although
Appellant has broadened the claims by amendment, the Examiner finds
Appellant is attempting to claim the same invention as before and, as such,
the prior art of record "appears to still be applicable." Id. at 7.
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claims 1-21under35 U.S.C. §§ 101 and 112, first paragraph, with respect to
the claim 1 limitation of the dynamically "calculated" numerical value.
However, we are persuaded by Appellant's arguments the Examiner erred in
rejecting claims 1-21under35 U.S.C. §§ 103(a) and 112, first paragraph,
other than with respect to the aforesaid limitation of claim 1, and second
paragraph.
Rejection of Claims 1-21 Under§ 101
Applicable Law
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: "Laws of nature, natural phenomena, and
abstract ideas are not patentable." See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014) (citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75-77 (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 the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. For
example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 2355-57. The
"directed to" inquiry asks not whether "the claims involve a patent-ineligible
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concept," but instead whether, "considered in light of the specification, ...
'their character as a whole is directed to excluded subject matter."' Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (citations
omitted). In that regard, we determine whether the claims "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) (citation omitted).
If, at the first stage of the Alice analysis, we conclude that the claim is
not directed to a patent-ineligible concept, it is considered patent eligible
under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v. CellzDirect,
Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2350 (quoting Mayo, 566 U.S. at 79, 78).
In other words, the second step 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."' Id. at 2355 (quoting Mayo, 566 U.S. at 72-73).
The prohibition against patenting an abstract idea "'cannot be circumvented
by attempting to limit the use of the formula to a particular technological
environment' or adding 'insignificant post-solution activity."' Bilski v.
Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted).
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Examiner's Findings and Conclusions
The Examiner concludes that claims 1-21 are directed to the abstract
idea of exchange trading and the additional elements or combination of
elements in the claims do not transform the abstract idea into a patent-
eligible application of the abstract idea. Final Act. 2-3. In response to
Appellant's arguments in the Appeal Brief, the Examiner finds the claims
have been amended "in an attempt to overcome the 101 rejection," but also
finds the claims can be "directed to" an abstract idea without an express
recitation in the claims. Ans. 32-33. The Examiner finds the Specification
makes it clear the invention involves "automated exchanges and trading
orders" (id. at 33, (citing Spec. 1, 11. 5-9)), and further finds the
Specification "is laden with references to an 'automated exchange' (noted 77
times in the specification), 'trading' (115 times) and 'order(s)' (440 times)."
Id. at 33. After analyzing the limitations of claim 1 (and noting that system
claim 11 recites similar limitations), the Examiner finds:
These steps describe a method where data messages with a
numerical value, message type identifier and participant identity
identifier are stored on a server with a memory; receiving data
messages; accessing the data messages, processing and
comparing the received data with stored data; determining how
long a data message has been at a determined value and
processing the data transaction within a data message based on
that determination.
Id. at 36. The Examiner further finds these steps are similar to "the concepts
previously identified as abstract ideas by the courts such as Dealertrack Inc.
(processing information); SmartGene, Inc. (comparing new and stored
information and using rules to identify options); Cybeifone Systems (using
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categories to organize, store and transmit information); Bilski (risk hedging)
and Alice (intermediate[ d] settlement)." Id.
Regarding step two of Alice, the Examiner concludes the claim
elements do not amount to significantly more than the judicial exception
"because the claims do not provide improvements to another technology or
technical field, improvements to the functioning of the computer itself, and
do not provide meaningful limitations to the abstract idea to a particular
technological environment." Id. at 37, 38--42.
Appellant's Arguments 5
Appellant argues that the pending claims meet the explicit
requirements of subject-matter eligibility under 35 U.S.C. §§ 101 and 1 OO(b)
because they "cover new uses of a known machine," and the implicit
exception set forth in Alice should be "narrowly applied in order to give full
purpose and effect to the operation of the statute at issue." App. Br. 24--25
(citing John Hancock Mut. Life Ins. Co. v. Harris Trust & Sav. Bank, 510
U.S. 86, 97 (1993)). Regarding step one of Alice, Appellant argues the
claims are not directed to the abstract idea of exchange trading because the
claims "do not recite an exchange, trading, or trading on an exchange." Id.
at 26. According to Appellant, the claims are "directed to a particular
technique for automatically processing electronic data messages against
those electronic data messages that have been previously received (and not
yet processed)," which is not an abstract idea. Id. at 28-29. Appellant also
5 Appellant argues the rejection of claims 1-21under§101 as a group,
focusing on claim 1. We consider claim 1 to be representative of the
claimed subject matter on appeal and, therefore, we decide the rejection of
claims 1-21 on the basis of representative claim 1. See 3 7 C.F .R.
§ 41.37(c)(l)(iv)(2016).
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argues that the technical solution set forth in the claims "relates to a new
way of allocating or processing the incoming orders in a specific and
detailed way that takes into account the total or aggregate time." App. Br.
29; see also Reply Br. 4. Regarding step two of Alice, Appellant argues "it
is clear the claims require substantially more than just the alleged abstract
idea (or its simple application to a general purpose computer) - i.e., more
than just the 'abstract idea of exchange trading."' App. Br. 30; Reply Br. 5.
After reproducing claim 1, Appellant argues "[ t ]hese features are
significantly more than just the general application of 'exchange trading' as
alleged by the FOA." App. Br. 31. Appellant further argues that without
"such detail and specificity, the claims would likely be anticipated by the
art"; and, for the reasons argued by Appellant, "the claims are clearly not
obvious over the currently relied upon art." Id. According to Appellant, the
claimed features of: (1) determining a collective time that pending data
messages have spent on at least one dynamically determined numerical
value; and (2) processing the transaction request based on the determined
time spent on "the dynamically calculated numerical value" are individually
and collectively significantly more than the asserted abstract idea. 6 Id. at
31-32. Appellant also argues the claims at issue are "like the claims at issue
in Trading Technology Intl.[, Inc.] v. CQG, Inc. 7 where the district court held
the claims allegedly directed to 'placing an order for a commodity on an
6 As discussed infra, we find the claim 1 limitation of "the dynamically
calculated numerical value" is not supported by the Specification and,
therefore, fails to meet the written-description requirement of§ 112, first
paragraph.
7 2015 WL 774655, at *4 (N.D. Ill., Feb. 24, 2015).
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electronic exchange' required substantially more than that characterization."
Id. at 33.
Step One of Alice
We are not persuaded by Appellant's arguments that the Examiner
erred in concluding claim 1 is directed to patent-ineligible subject matter-
an abstract idea. Although Appellant correctly argues that the claims are
directed to categories of patentable subject matter identified in 35 U.S.C.
§ 101, and described in 35 U.S.C. § lOO(b), as stated supra, the Supreme
Court held in Alice there are implicit exceptions to these categories that are
not patentable, including abstract ideas. Alice, 134 S. Ct. at 2354.
Although Appellant amended the claims to delete certain terms
relating directly to order trading, the Examiner concludes claim 1 is directed
to "exchange trading" because the Specification makes it clear the invention
concerns "automated exchanges and trading orders." See Ans. 32-33. The
Examiner also concludes the steps of claim 1 are similar to concepts
previously identified as abstract by the courts, such as "processing
information" and "comparing new and stored information and using rules to
identify options." Id. at 36.
With respect to claim 1, the preamble recites a method performed on a
computer server system including a memory device storing a plurality of
pending data messages, each having a numerical value, a data message type
identifier, and a participant identity parameter. Claim 1 recites the steps of:
(1) receiving a signal comprising an incoming data message that includes a
data transaction request with (a) a specified data message type identifier,
(b) at least one predefined instruction, and ( c) a quantity value; (2) for each
of the pending data messages with an identifier matching the specified
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identifier, accessing the pending data message to determine the participant
identity parameter; (3) for each participant identity parameter having
pending data messages with the specified identifier, determining a collective
time that pending data messages have spent on at least one dynamically
determined numerical value associated with the specified identifier; and
( 4) processing the data transaction request based on the determined time
spent on the dynamically calculated numerical value by the determined
participant identity parameter. These steps define storing data messages;
receiving data messages including a data transaction request; accessing and
analyzing the stored data messages to determine those having a specified
identifier and participant parameter; analyzing such data messages to
determine the time they have been at a determined value; and processing the
data transaction request based on the determined time.
Considering the focus of claim 1 as a whole, we agree with the
Examiner's conclusion that claim 1 is directed to an abstract idea-
processing a data transaction request. We see no meaningful difference in
claim 1 and similar or analogous claims in other cases that our reviewing
court has found are directed to an abstract idea. See Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) ("The concept of data collection, recognition, and storage is
undisputedly well-known."); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353-54 (Fed. Cir. 2016) (claims focus on the abstract idea of
collecting information, analyzing it, and displaying certain results of the
collection and analysis); Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) (holding that the claimed
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invention is directed "to the abstract idea of collecting, displaying, and
manipulating data of particular documents").
We also conclude that the steps recited in claim 1 could be
"performed mentally" by a human with pen and paper. In that regard, our
reviewing court has held that "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, [are]
essentially mental processes within the abstract-idea category." Elec.
Power, 830 F.3d at 1354; see also Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1146 (Fed. Cir. 2016). "[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter."
Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (US.), 687 F.3d
1266, 1278 (Fed. Cir. 2012). 8
For the same reasons, we are not persuaded by Appellant's arguments
that the claims are directed to "a particular technique" for automatically
processing data messages against those previously received, which is not an
abstract idea, or that the "technical solution" set forth in claim 1 "relates to a
new way" of processing incoming orders. See App. Br. 28-29; Reply Br. 4.
In that regard, Appellant has not identified any disclosure in the
Specification, or provided other persuasive evidence or technical reasoning,
that the "particular technique" or "new way" of processing data messages
provides a technological advance or improvement, or advantage, to
8 See also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375
(Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even
when performed by a computer, was precisely the holding of the Supreme
Court in Gottschalk v. Benson.").
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computer technology or data processing. Nor do the claims recite any such
technologic advance, improvement, or advantage.
Step Two of Alice
We also are not persuaded by Appellant's arguments regarding step
two of the Alice analysis. First, Appellant argues claim 1 requires
"substantially more" and "significantly more" than the alleged abstract idea
(see App. Br. 30-32; Reply Br. 5), but these arguments are unpersuasive. As
discussed supra, Appellant has not provided persuasive evidence or
technical reasoning establishing that there are any technological advances or
improvements in claim 1 's computer server or data processing system or that
processing a transaction request based on the collective time pending
messages have spent on a determined value provides advantages to the
processing system. Claim 1 does not "focus on a specific means or method
that improves the relevant technology," but is "directed to a result or effect
that itself is the abstract idea and merely invoke[ s] generic processes and
machinery." McRO, 837 F.3d at 1314. This is not enough to transform an
abstract idea into patent-eligible subject matter. See, e.g., Alice, 134 S. Ct. at
23 60 (explaining that claims that "amount to 'nothing significantly more'
than an instruction to apply the abstract idea ... using some unspecified,
generic computer" "is not 'enough ' to transform an abstract idea into a
patent-eligible invention") (quoting Mayo, 566 U.S. at 77, 79)); Intellectual
Ventures, 850 F.3d at 1342 ("[T]he claim language here provides only a
result-oriented solution, with insufficient detail for how a computer
accomplishes it.").
Second, we are not persuaded by Appellant's arguments that the
claims are detailed and specific and, therefore, are not anticipated or
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obvious. App. Br. 31. A finding of novelty or non-obviousness does not
automatically lead to the conclusion that the claimed subject matter is
patent-eligible. 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 upon the [ineligible
concept] itself."' Alice Corp., 134 S. Ct. at 2355. "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90;
see also Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) ("The '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.").
Third, we are not persuaded by Appellant's argument that claim 1 is
like the claims at issue in Trading Technologies, 9 where the district court
held the claims required substantially more than placing an order for a
commodity on an electronic exchange. App. Br. 33. In Trading
Technologies International, Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir.
2017), 10 the patents in suit "describe[ d] and claim[ ed] a method and system
9 Trading Techs. Int'!, Inc. v. CQG, Inc., No. 05-CV-4811, 2015 WL
774655, at *4 (N.D. Ill. Feb. 24, 2015) (hereinafter "Trading Technology").
10 Trading Technologies International, Inc. v. CQG, Inc., 675 F. App'x
1001 (Fed. Cir. 2017) (hereinafter "Trading Techs.").
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for the electronic trading of stocks, bonds, futures, options and similar
products" where a graphical user interface displayed the "market depth of a
commodity traded in a market," including a dynamic display of bids and
asks for the commodity and a static display of prices. Trading Techs.,
675 F. App'x at 1002---03. The claimed method and system "reduc[ed] the
time ... for a trader to place a trade when electronically trading on an
exchange, [and] thus increas[ed] the likelihood that the trader will have
orders filled at desirable prices and quantities." Id. at 1003. The Federal
Circuit accepted the district court's findings with respect to step two of Alice
that the claims provided "an inventive concept that allows traders to more
efficiently and accurately place trades using this electronic trading system."
Id. at 1004. In discussing the district court's opinion, the Federal Circuit
noted "[t]he court distinguished this system from the routine or conventional
use of computers or the Internet, and concluded that the specific structure
and concordant functionality of the graphical user interface are removed
from abstract ideas, as compared to conventional computer implementations
of known procedures." Id. Accordingly, the distinguishing feature under
Alice step two for the claims in Trading Technologies was an advance in
efficiency as compared to other computer processes. Thus, contrary to
Appellant's argument, the claims here are unlike those in Trading
Technologies because Appellant's claims do not recite a graphical user
interface. In addition, as discussed supra, Appellant has not provided
persuasive evidence or technical reasoning that the method of claim 1
produces an advance in efficiency or technological improvement to the
computer data processing system.
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Thus, we see nothing in the limitations of claim 1, considered "both
individually and as an ordered combination," that transforms the claimed
abstract idea into patent-eligible subject matter.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection of claim 1 under § 101. For the same reasons, we
sustain the rejection of independent claim 11, and dependent claims 2-10
and 12-21, which are not separately argued.
Rejection of Claims 1-21 Under§ 112, First Paragraph
The Examiner finds there is no definition of a "numerical value" in
the Specification, and "the references to value all refer to a best-bid-offer
(BBO) value which is much more narrow than a numerical value." Final
Act. 3; Ans. 30. The Examiner also determines the terms "data message
type identifier" and "specified data message type identifier" are not defined
in the Specification. Final Act. 3--4. The Examiner further finds the term
"dynamically determined numerical value" is not defined in the
Specification, and there is no apparent possession of the "dynamically
calculated numerical value." Final Act. 4; Ans. 31.
We are persuaded by Appellant's arguments that the Examiner
erred, 11 except with respect to the limitation of "dynamically calculated
numerical value." Appellant provides a detailed and complete response to
the Examiner's rejection setting forth the portions of the Specification and
drawings supporting the claim terms "numerical value," "data message type
11 We are not, however, persuaded by Appellant's argument that the
rejection fails to set forth a prima facie case because the Examiner provided
adequate explanation of the rejection under§ 112, first paragraph, to satisfy
the notice requirement of 35 U.S.C. § 132.
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identifier," "specified data message type identifier," and "dynamically
determined numerical value." See App. Br. 13-18. For the reasons argued
by Appellant, we find the Specification reasonably conveys to those of
ordinary skill in the art that the inventor had possession of these claim
limitations as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane).
In regard to the "dynamically calculated numerical value" limitation
in claim 1, which is not recited in independent claim 11, Appellant initially
argued "there is no requirement in the claims for a method of dynamic
calculation," as set forth in the Final Office Action. See App. Br. 18.
Subsequently, Appellant argued the limitation was a typographical error and
should read "the dynamically determined numerical value." Reply Br. 3.
Appellant also stated this "minor typographic error" would be corrected after
completion of this appeal. Reply Br. 3. We agree with the Examiner that
there is no support in the Specification for the "method and manner" in
which a numerical value is calculated. See Ans. 31. We also note that the
claimed dynamically "determined" numerical value is broader than, and
does not support, the dynamically "calculated" numerical value. Thus, we
find the Specification does not reasonably convey to those of ordinary skill
in the art that the inventor had possession of the claimed "dynamically
calculated numerical value" as recited in claim 1 as of the filing date. See
Ariad, 598 F.3d at 1351.
Accordingly, we sustain the rejection of claim 1, as well as dependent
claims 2-10, under§ 112, first paragraph, but we do not sustain the rejection
of claims 11-21 under§ 112, first paragraph.
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Rejection of Claims 1-21 Under§ 112, Second Paragraph
The Examiner finds the claim 1 limitation "to be operated on" fails to
distinguish the claims from the prior art and that it is unclear what the term
"operating" actually means in the context of the claims. Final Act. 5---6;
Ans. 31. The Examiner also finds the terms "numerical value," "message
type identifier," and "specified data message type" are broad terms that
render the claims unclear. Ans. 31.
We are persuaded by Appellant's arguments that the Examiner erred.
First, Appellant argues, and we agree, the use of "to be operated on" in the
preamble of claim 1 conveys that the claimed data messages are not just
stored, but will be operated on. App. Br. 21. Appellant also argues, and we
agree, the pending messages are "operated on" as set forth in the body of the
claim. Id. at 22. Second, Appellant argues that merely because "numerical
value," "message type identifier," and "specified data message type" are
broad terms, as the Examiner finds, does not mean they are unclear. Id. We
agree with Appellant because, as Appellant argues, "breadth is not to be
equated with indefiniteness." Reply Br. 3 (citing In re Miller, 441F.2d689,
693 ( CCP A 1971) ). In addition, Appellant argues, and we agree, the term
"specified" is used to refer to the data message type identifier of the
incoming message. App. Br. 23. Thus, we agree with Appellant's argument
that the claim terms at issue "clearly set forth the meets and bounds of the
claimed subject matter." Id. at 23; see In re Packard, 751 F.3d 1307, 1313
(Fed. Cir. 2014) ("[C]laims are required to be cast in clear-as opposed to
ambiguous, vague, indefinite-terms.").
Accordingly, we do not sustain the Examiner's rejection of claims
1-21 under§ 112, second paragraph.
18
Appeal2016-008051
Application 13/600,805
Rejection of Claims 1-21 Under§ 103 (a)
The issue raised by Appellant's arguments is whether the combination
of Carone and Altius teaches or suggests for each determined participant
identity parameter, determining "a collective time that pending data
messages ... have spent on at least one dynamically determined numerical
value that is associated with the specified data message type identifier," as
set forth in claim 1 and similarly recited in claim 11. 12 App. Br. 10-11. The
Examiner finds that Altius teaches "time priority as a factor." Ans. 27-29
(citing Altius i-fi-126-28, 69, 72-74, 77, and 78, Figs. 3---6). The Examiner
also finds these portions of Altius show that "time priority is based on which
order came in first, thus the 'collective' time for the older order is
established to be longer than the 'collective' time for the order that was sent
at a later time." Id. at 29, 30.
We are persuaded by Appellant's arguments that the Examiner erred.
Appellant argues, and we agree, the portions of Altius cited by the Examiner
merely teach "tracking the individual amount of time that each electronic
order has been pending and then using conventional price/time ordering."
Reply Br. 2. Appellant also argues, and we agree, the claims require more
than determining an amount of time a single data message has been in the
order book because the claims require "determining a 'collective time' for a
group or multiple pending data message~." Id.; see also App. Br. 12. Thus,
12 We agree with Appellant that claim 11 similarly recites determining "a
collective time that pending data messages have spent" because claim 11
recites "determine ... a time that pending data messages with the
determined ... parameter and the specified ... identifier have spent on a
dynamically determined numerical value for said specified ... identifier."
See App. Br. 27 (Claims App'x).
19
Appeal2016-008051
Application 13/600,805
we agree with Appellant's argument that Altius does not teach or suggest
determining "a collective time that pending data messages ... have spent on
at least one dynamically determined numerical value that is associated with
the specified data message type identifier," as recited in claim 1 and
similarly recited in claim 11. Thus, we do not sustain the rejection of claims
1and11, and dependent claims 2-10 and 12-21, under§ 103.
DECISION
We affirm the Examiner's rejection of claims 1-21under35 U.S.C.
§ 101.
We affirm the Examiner's rejection of claims 1-10, and reverse the
Examiner's rejection of claims 11-21, under 35 U.S.C. § 112, first
paragraph.
We reverse the Examiner's rejection of claims 1-21 under 3 5 U.S. C.
§ 112, second paragraph.
We reverse the Examiner's rejection of claims 1-21under35 U.S.C.
§ 103(a).
Because we affirm at least one ground of rejection for each claim on
appeal, we affirm the Examiner's decision to reject all of the claims on
appeal. See 37 C.F.R. § 41.50(a)(l).
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 ). See 37 C.F.R.
§ 1.136(a)(l)(iv)(2016).
AFFIRMED
20