Ex Parte Weber et al

Patent Trial and Appeal Board

Dec 7, 2018

14212077 (P.T.A.B. Dec. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/212,077 03/14/2014
35811 7590 12/11/2018
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Clifford J. Weber
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.
MKT-14-1074R 1000
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
12/11/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLIFFORD J. WEBER and LYNN CHRISTINE MARTIN 1
Appeal2017-010706
Application 14/212,077
Technology Center 3600
Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN
Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's non-
final rejection of claims 1 through 27. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
INVENTION
The invention is a system to facilitate trades priced relative to a
reference benchmark value associated with an underlying index future.
Specification paragraph 4. Claim 1 is illustrative of the invention and is
reproduced below.
1 According to Appellants, NYSE MKT LLC is the real party in interest.
App. Br. 1.
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Application 14/212,077
1. A system for efficient data retrieval, comprising:
a computer processor;
a communication device that receives an indication of a
trade that is to be priced relative to a reference
benchmark value, the indication including
information associated with the trade and the trade
having a basis that is determined at least one day
prior to a determination of a final price and
quantity of the trade, and that transmits the
indication to the computer processor; and
a memory, coupled to the computer processor, storing an
interactive application for execution by the
computer processor,
wherein the interactive application causes the computer
processor to execute specialized program
instructions to:
generate a trade identifier and link the trade
identifier with the information associated with the
trade;
store the trade identifier and the linked
information associated with the trade in a data
table by mapping the trade identifier and the
information associated with the trade to predefined
fields in the data table;
retrieve the reference benchmark value from
an external data source via an electronic network;
determine the final price and the quantity for
the trade based on the reference benchmark value;
retrieve at least a portion of the information
associated with the trade by searching for the trade
identifier in a predefined field among the
predefined fields of the data table, such that
retrieval of the trade identifier also retrieves the at
least portion of information that is linked to said
trade identifier; and
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assign the final price and the quantity of the
trade to the at least portion of information retrieved
from the data table to create an executable trade.
EXAMINER'S REJECTI0NS 2
The Examiner has rejected claims 1 through 27 under 35 U.S.C.
§ 112(a) and 112(b) as there is no support in the Specification for the
retrieving, searching, linking or assigning steps or an electronic network as
recited in claims 1, 9, and 17. Final Act. 5---6.
The Examiner has rejected claims 1 through 27 under 35 U.S.C. § 101
as being directed to patent in-eligible subject matter. Final Act. 6-8.
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: "[l]aws 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). The Supreme Court sets
2 Throughout this Decision we refer to the Appeal Brief filed February 16,
2017 ("App. Br."); the Reply Brief filed August 14, 2017 ("Reply Br.");
Non-Final Office Action mailed October 5, 2016 ("Final Act."); and the
Examiner's Answer mailed June 20, 2017 ("Ans.").
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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." Alice, 134 S. Ct. 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 then ask, "[ what] else is there in the claims
before us?" Id., at [77-78]. To answer that question, 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., at [78-79]. We have 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].
Id. at 2355.
Although an abstract idea 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.
(quoting Mayo, 566 U.S. at 78-79). 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. (quoting Mayo, 566 U.S. at 72-73). 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
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(Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
The Federal Circuit also noted in that decision that "[E]xaminers 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.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. Appellants' arguments have persuaded us of error in the
Examiner's rejections of claims 1 through 27 under 35 U.S.C. § 112.
However, Appellants' arguments have not persuaded us of error in the
Examiner's rejection of claims 1 through 27 under 35 U.S.C. § 101.
Rejections under 35 U.S.C. § 112
Appellants argue on pages 6 and 7 of the Appeal Brief that the
Examiner's rejection of claims 1 through 27 under 35 U.S.C. § 112(a) is in
error. Appellants argue that the Specification in paragraphs 51 through 53
and Figures 15 and 16 of the originally filed Specification provide support
for the disputed limitations. App. Br. 6-7. Reply Br. 1-2.
The Examiner responds to Appellants' argument stating: "The
Appellant argues that there is no basis for the 112 rejections. In response, the
Appellant has no support in the specification for the retrieving, searching,
linking, or assigning steps or an electronic network. Therefore, the
rejections are maintained." Answer 2.
Appellants' arguments have persuaded us of error in the Examiner's
rejection. Initially, we note that the Examiner's rejection has not identified
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if the rejection is based upon the Appellants' disclosure not meeting the
written description or the enablement requirement. Further, the Examiner
has not addressed the Appellants' proffered explanation of how the
originally filed Specification provides evidence of possession and an
enabling disclosure. Accordingly, we do not sustain the Examiner's
rejection of claims 1 through 27 under 35 U.S.C. § 112(a).
Appellants argue on page 7 of the Appeal Brief that the Examiner's
rejection of claims 1 through 2 7 under 3 5 U.S. C. § 112 (b) is in error,
providing the same rationale as discussed above with respect to the rejection
under 35 U.S.C. § 112(b).
The Examiner has not separately addressed Appellants' arguments
with respect to the rejection under 35 U.S.C. § 112(b), nor has the Examiner
explained how the limitations of the claims are ambiguous. Accordingly, we
do not sustain the Examiner's rejection of claims 1 through 27 under
35 U.S.C. § 112(b ).
Rejection under 35 U.S.C. § 101
Appellants argue on pages 7 through 1 7 of the Appeal Brief and pages
2 and 3 of the Reply Brief that the Examiner's rejection under 35 U.S.C.
§ 101 is in error. Appellants argue that the claims represent a technological
improvement as the Examiner has admitted they are allowable over the art
and the claimed system provides the ability to "provide automatic yet
accurate results [which] is clearly a computer functioning improvement that
is patent-eligible." App. Br. 10 (emphasis omitted). Appellants argue that
the claims recite structures for leveraging external data sources to obtain
improved price information and faster more efficient indexing, which
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improves speed and accuracy of the trade which is a technological
improvement. App. Br. 10-12. Appellants conclude that clearly the claims
are directed to a network architecture problems not financial problems and
"no financial business person would be skilled to modify or restructure
conventional network architecture to be able to perform the functions recited
in the claims. Thus, the claimed invention, which solves network
architecture problems, must necessarily be a technical (and patent eligible)
solution." App. Br. 12-13. Further, Appellants argue that claims are similar
to those at issue in Enfzsh, LLC v. Microsoft Corporation, 822 F.3d 1327,
1335 (Fed. Cir. 2016), BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016), McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) and Amdocs.
App. Br. 13-17.
The Examiner finds that the claims are directed to an abstract concept
of facilitating pricing of trades, a fundamental economic practice which is
similar to the concept at issue in buySAFE, Inc. v. Google, Inc., 765 F.3d
1350 (Fed. Cir. 2014) and Bilski v. Kappas, 130 S. Ct. 3218 (2010) which
dealt with creating contractual relationship and hedging risk. Answer 2-3,
Non-Final 7-8. Further, the Examiner considers that the additional elements
merely amount to the recitation of using generic computer elements to
perform the abstract concept. Answer 3--4, Non-Final 7-8 (citing
paragraphs 27 and 47 of Appellants' Specification which discloses using
variety of generic computer devices and networks to convey and manipulate
the data used in the abstract concept of facilitating trades).
We concur with the Examiner that representative claim 1 is directed to
an abstract concept. Representative claim 1, recites a system for retrieving
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data relative to a trade, that generates a trade identifier, stores the
information ( data) with the trade identifier, determines a final price and
assigns a final price. Thus, the claim is directed to generating a price (which
is essential part of a contractual relationship) based upon gathered
information. See also Appellants' Specification which identifies the
invention is to facilitate pricing. Spec. para. 4.
In OIP Techs our reviewing court found claims directed to concepts of
price optimization to be similar to other fundamental economic concepts and
as such constitute an abstract concept. OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362-1363 (Fed. Cir. 2015). See also buySAFE, in which
our reviewing court concluded claims directed to the creation of a
contractual relationship were directed to an abstract idea. buySAFE, 7 65
F.3d 1350. Further, the steps of gathering, organizing and analyzing data are
also abstract. Our reviewing court has concluded that abstract ideas include
the concepts of "collecting, displaying, and manipulating data." Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir.
2017). See also Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); and Electric Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) 1354 (holding that
claims directed to a process of gathering and analyzing information of a
specific content are directed to an abstract idea); and Smart Sys. Innovations,
LLC v. Chi Transit Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017) (holding
that claims directed to data collection and a financial transaction in a
particular file, are directed to an abstract idea. Further, merely combining
several abstract ideas does not render the combination any less abstract.
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
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("Adding one abstract idea (math) to another abstract idea ... does not
render the claim non-abstract."); see also Fair Warning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (determining the
pending claims were directed to a combination of abstract ideas). While the
claims before us recite elements such as a processor, communication device,
and memory; as the Examiner has shown Appellants' Specification identifies
that these elements are merely generic computer components performing
their known functions. (See Specification, 25, 27, 47, 48, and 51).
Appellants' arguments, which focus on the claims being directed to a
technological improvement, are not persuasive of error. Appellants'
argument, on page 10 of the Answer, that the absence of an art rejection
demonstrates that the claims are directed to a patent eligible subject matter is
not persuasive. The question in step two of the Alice framework is not
whether an additional feature is novel but whether the implementation of the
abstract idea involves "more than [the] performance of 'well-understood,
routine, [and] conventional activities previously known to the industry."'
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n,
776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2359).
A finding of novelty or non-obviousness does not necessarily lead to the
conclusion that subject matter is patentable eligible. "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 133 S.
Ct. 2107, 2117 (2013).
Further, Appellants' argument that the claims recite a more accurate
and faster system is not persuasive. Appellants argue the leveraging of an
external data source provides the most up to date and accurate price
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information. App. Br. 10. Thus, Appellants identify the source and content
of the received data is responsible for the accuracy price not the process
itself. As discussed above, our reviewing court has said "we have treated
collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas." Elec. Power, 830 F.3d at 1353 (holding that claims directed to a
process of gathering and analyzing information of a specific content are
directed to an abstract idea). Nor does "merely selecting information, by
content or source, for collection, analysis, and display" provide significantly
more for purposes of finding patent eligibility. Id. at 1355. Further, the use
of an index, which Appellants assert increases speed, is a similarly step of
organizing data, which is an abstract concept. See Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d at 1341 (organizing, and
manipulating data from particular documents is an abstract idea).
Additionally, Appellants' arguments that the claims recites a technological
process as they speed up the pricing, is unpersuasive as it is merely attorney
arguments and not directed to a disclosure in Appellants' Specification or
any evidence to support the assertion. It is well settled that mere attorney
arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997). Thus, Appellants' arguments have not persuaded us
the claims are directed to a technological improvement.
Appellants' arguments asserting the claims are patent eligible in light
of the decisions in Enfish, BASCOM, McRO, and Amdocs are similarly
unpersuasive. App. Br. 14--17. Appellants argue that the claims are similar
to those at issue in Enfish, Bascom, and Amdocs as they improve the
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computer network functionality and improve on the prior art. App. Br. 14--
17. These arguments rely upon assertions similar to those discussed above
that the claims leverage external data and causes the network to operate
faster. App. Br. 14. As discussed above, we are not persuaded that these
features demonstrate a technological improvement, the source of data neither
makes the receiving of data any less abstract nor adds significantly more to
the claimed abstract idea. Further, there is no evidence to support the
assertion that claimed steps cause the trading system to operate faster.
Further, as discussed above, a finding of novelty or non-obviousness does
not necessarily lead to the conclusion that subject matter is patentable
eligible. Thus, we are not persuaded of error by Appellants' arguments that
the claims are patent eligible in light of the decisions in Enfish, BASCOM,
and Amdocs.
We are similarly not persuaded by Appellants' arguments based upon
McRO, asserting that the claims do not preempt all procedures involving
pricing strategy and are thus patent eligible. App. Br. 15. A lack of
complete preemption does not make the claims any less abstract. See
buySAFE, Inc., 765 F.3d at 1355; see also Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility."); see also OIP Techs.,
Inc., 788 F.3d at 1362-1363 ("[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract."). Thus, Appellants' arguments
have not persuaded us of error in the Examiner's rejection of representative
claim 1 under 35 U.S.C. § 101. As Appellants' arguments group claims 1
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through 27 together, we sustain the Examiner's rejection of claims 1 through
27 under 35 U.S.C. § 101.
DECISION
We reverse the Examiner's rejections of claims 1 through 27 under
35 U.S.C. § 112.
We affirm the Examiner's rejection of claims 1 through 27 under
35 U.S.C. § 101.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1 through 27
is affirmed. See 37 C.F.R. § 4I.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 )(iv).
AFFIRMED
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