Ex Parte VENKATARAMAN

Patent Trial and Appeal Board

Aug 22, 2018

13447463 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/447,463 04/16/2012
23117 7590 08/24/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Kandan VENKATARAMAN
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-4010-241 6131
EXAMINER
POE,KEVINT
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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 KAND AN VENKA TARAMAN
Appeal2017-005930
Application 13/447,463 1
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1, 3, 7, 8, 10, 11, 16, and 18. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellant's invention "relate[s] to a method and a computerized
exchange system for processing orders." (Spec. 1, 11. 6-7.)
1 According to Appellant, the real party in interest is Nasdaq
Technology AB. (Appeal Br. 3.)
Appeal2017-005930
Application 13/447,463
Claims 1 and 11 are the independent claims on appeal. 2 Claim 11 is
illustrative. It recites:
11. A computerized exchange system for processing data
order entry messages, comprising:
- a common sequencer compnsmg:
- a common sequencer hardware communication
interface;
- a common sequencer hardware processor; and
- a common sequencer memory configured to store a
computer program comprising computer program code which,
when run on the common sequencer hardware processor, causes
the common sequencer to:
- receive, via the common sequencer hardware
communication interface, a plurality of data order entry
messages from a plurality of order book hardware
processors coupled to the common sequencer hardware
interface by a data communications medium;
- sequence the received plurality of data order
entry messages by assigning status data including a time
stamp to each of the plurality of data order entry
messages to put incoming order entry messages assigned
with different status data in a sequenced order; and
- sending, via the common sequencer
communication hardware interface and the data
communications medium, the plurality of data order
entry messages in the sequenced order to the plurality of
order book hardware processors;
- a first one of the order book hardware processors, coupled by
the data communications medium to the common sequencer,
and comprising:
- a first hardware communication interface;
- a first data processor; and
- a first memory configured to store a computer program
comprising computer program code which, when run on
2 The claims in the Claims Appendix to Appellant's Appeal Brief differ
from the claims last entered by the Examiner. The latter, filed by Appellant
on June 8, 2015, are the claims we reference here.
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Appeal2017-005930
Application 13/447,463
the first data processor of the first order book hardware
processor, causes the first order book hardware processor
to:
- receive, via the data communications medium
and the first hardware communication interface, the
sequenced data order entry messages from the common
sequencer;
- process the sequenced data order entry messages
to create order management data that includes order
acceptance, rejection, execution, or cancellation
information corresponding to the data order entry
messages; and
- output the management data to one or more client
devices;
- a second one of the order book hardware processors, coupled
by the data communications medium to the common sequencer,
and comprising:
- a second hardware communication interface;
- a second data processor; and
- a second memory configured to store a computer
program comprising computer program code which, when run
on the second data processor of the second order book hardware
processor, causes the second order book hardware processor to:
- receive, via the data communications medium
and the second hardwre [sic] communication interface,
the sequenced data order entry messages from the
common sequencer; and
- process independently of the processing in the
first order book hardware processor and substantially in
parallel with the processing in the first order book
hardware processor the sequenced data order entry
messages to create data that includes status information
for multiple data orders entered in the computerized
exchange; and
- output the status information to one or more
client devices.
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Appeal2017-005930
Application 13/447,463
REJECTI0N3
Claims 1, 3, 7, 8, 10, 11, 16, and 18 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
ANALYSIS
"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." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, 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, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second step of the framework is applied to determine if "the
elements of the claim ... contain[] an 'inventive concept' sufficient to
3 The rejection of claims 1, 3, 7, 8, 10, 11, 16, and 18 under 35 U.S.C.
§ 112, first paragraph, was withdrawn. (Answer 5.)
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Application 13/447,463
'transform' the claimed abstract idea into a patent-eligible application." Id.
at 2357 (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that the claims are directed to "a method and system for
processing trade order entry messages" and that this "is a longstanding
commercial practice." (Answer 3.) More specifically, the Examiner
determines that the claims are directed to "the abstract idea of processing
data order entry messages." (Id. at 7.)4
Appellant disagrees and argues that "none of the claims recite 'trade
order entry messages"' and "the final action fails to offer any evidence that a
'computerized exchange system for processing data order entry messages' is
'a fundamental practice of commerce."' (Appeal Br. 12.)
Under step one of the Alice framework, we "look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that Appellant's
invention "relate[ s] to a method and a computerized exchange system for
processing orders." (Spec. 1, 11. 6-7.) Claim 11 provides further evidence.
Claim 11 recites an "exchange system for processing data order entry
4 The Examiner also states that "the claim is directed to the abstract idea of
filter-out item(s) based on criteria." (Final Action 9; Answer 4.) Because
this statement appears to be inapplicable to Appellant's claims, we treat the
statement as a typographical error.
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Appeal2017-005930
Application 13/447,463
messages comprising," a "sequencer comprising," a "sequencer ...
communication interface," a "sequencer ... processor," and a "sequencer
memory" that causes the sequencer to "receive ... data order entry messages
from a plurality of order book ... processors coupled to the ... sequencer,"
"sequence the received ... data order entry messages," "send[] ... data
order entry messages in the sequenced order to the ... order book ...
processors," and "a first one of the order book ... processors ...
comprising," "a first ... communication interface," "a first data processor,"
and "a first memory" that causes the first data processor to "receive ... the
sequenced data order entry messages from the ... sequencer," "process the
... messages," and "output ... data," and "a second one of the order book
... processors ... comprising," "a second ... communication interface," "a
second data processor," and "a second memory" that causes the second data
processor to "receive ... the sequenced data order entry messages from the
"" th "d" t t tt ... sequencer, process . . . e ... messages, an ou pu ... s a us
information."
In this case, "the claims and their specific limitations do not readily
lend themselves to a step-one finding that they are directed to a nonabstract
idea. We therefore defer our consideration of the specific claim limitations'
narrowing effect for step two." See BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
Step two of the Alice framework has been described "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."' Alice, 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 72-73). In addressing step two, we ask
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Application 13/447,463
"' [ w ]hat else is there in the claims before us?' To answer that question, we
consider the elements of the claims 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. (citations
omitted) ( quoting Mayo, 566 U.S. at 78, 79).
Appellant argues that "[ w ]hen applying the second prong of the
Mayo/Alice analysis, all of the recited claim elements must be considered as
an ordered combination." (Appeal Br. 15.) Appellant further argues that
"claim 11 ... recites a common sequencer having a common sequencer
hardware communication interface, a common sequencer processor, and a
common sequencer memory." (Id. at 16.) Appellant further argues:
Claim 11 also recites first and second order book
hardware processors, coupled by the data communications
medium to the common sequencer. . . . The first processor
receives and processes the sequenced data order entry messages
from the common sequencer . . . . The second processor
receives the sequenced data order entry messages from the
common sequencer but processes them independently but
substantially in parallel with the processing in the first hardware
processor ....
(Id. at 17.) Additionally, Appellant argues that "[ c ]omputerized exchanges,
at the time this application was filed, use a central server and a plurality of
gateway servers .... The claimed ... solution to this problem is a new
computer exchange architecture." (Id. at 19; see also Spec. p. 1, 11. 17-19, p.
2, 1. 12-p. 3, 1. 25.)
The Examiner answers that
[b ]eyond the abstract idea of processing data order entry
messages, the claims merely recite "well-understood, routine
conventional activit[ies]," either by requiring conventional
computer activities or routine data-gathering steps ....
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Appeal2017-005930
Application 13/447,463
Applicant claims recite a common sequencer having a common
sequencer hardware communications interface, a common
sequencer processor, and a common sequencer memory[]. ...
[T]he claims are not significantly more than an abstract idea
because the application does not disclose the specific technical
components that would make this claimed sequencer an
improvement over the prior art. Considered individually or
taken together as an ordered combination, the claim elements
fail []to []make[] the claimed abstract idea into a patent eligible
application.
(Answer 7-8.)
The Examiner does not, however, sufficiently address the claimed
configuration of the sequencer with the first and second order book
processors, i.e., the ordered combination of claim elements recited in
claim 11. In view of the above, we find that the Examiner has not provided
sufficient reasoning for us to fully evaluate the Examiner's position in view
of Appellant's argument. Therefore, we reverse the rejection of claim 11
under § 101. Claim 1 contains similar language and for similar reasons we
reverse the rejection of claim 1, and dependent claims 3, 7, 8, 10, 16, and 18
under§ 101.
DECISION
The Examiner's rejection of claims 1, 3, 7, 8, 10, 11, 16, and 18 under
35 U.S.C. § 101 is reversed.
REVERSED
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