Ex Parte Weiss et al

Patent Trial and Appeal Board

May 29, 2018

13668811 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/668,811 11105/2012
63710 7590 05/31/2018
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Joel Weiss
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.
03-1069-C2 4510
EXAMINER
DONLON, RY AND
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
05/31/2018 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):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteJOEL WEISS and TIMOTHYH. HEATON
Appeal2017-002040
Application 13/668,811 1
Technology Center 3600
Before ALLEN R. MacDONALD, JON M. JURGOV AN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, 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 2-34. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants' Brief ("App. Br.") identifies BCG Partners, Inc. as the real
party in interest. App. Br. 3.
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Application 13/668,811
CLAIMED SUBJECT MATTER
Appellants describe their invention as "relat[ing] to the calculating
and displaying of commissions relating to the trading of financial
instruments." Spec. i-f 2. Claim 23, reproduced below, is illustrative of the
claimed subject matter:
23. A method comprising the steps of:
receiving into memory of a computerized device of a
computer transaction system data describing a transaction party's
order proposing a financial transaction, and based at least in part
on the order data, computing a commission to trade at least a part
of the order with a counterparty customer;
tradeably presenting the order to the counterparty
customer, the presentation including the computed commission
for the proposed trade, or a price for the proposed trade net of the
commlSSIOn;
receiving data representing an instruction from an order-
modifying customer of the electronic transaction system to
modify the order in a manner that influences the commission on
the proposed trade; and
computing an updated commission based on the
instruction received from the order modifying customer
modifying the order, and tradeably presenting electronic data
representing the modified order and the computed updated
commission to the counterparty customer, the updating and
presenting of the commission electronic data being performed in
computerized devices in substantially real time response to the
instruction.
App. Br. 13 (Claims Appendix).
REJECTIONS
Claims 2-34 are rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.
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OPINION
Legal Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bankint'l., 134 S.Ct. 2347 (2014). The Supreme Court
instructs us to "first determine whether the claims at issue are directed to a
patent-ineligible concept," Alice, 134 S. Ct. at 2355, and, in this case, the
inquiry centers on whether the claims are directed to an abstract idea. If the
initial threshold is met, we then move to the second step, in which 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. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The Supreme Court describes the second step 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. (quoting Mayo, 566 U.S. at
72-73).
The Examiner's Eligibility Analysis Under§ 101
In rejecting the claims under 35 U.S.C. § 101, the Examiner applies
the Alice test and determines at the first step that the claims are directed to
an abstract idea. More specifically, the Examiner finds Appellants' claims
are directed to the concept of trading and trading commission and fees.
Final Act. 3. The Examiner determines that the claimed concept is an
abstract idea because it is both a fundamental economic practice and a
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method of organizing human activities. Id. The Examiner further
determines the claims "describe the concept of computing commission for
counterparty transactions, which corresponds to concepts identified as
abstract ideas by the courts." Ans. 4. The Examiner further determines the
independent claims are substantially similar, and that "[t]he concept
described in method claim 23 (computerized device claim 2, system claim
12, system claim 34) is not meaningfully different than those economic
concepts found by the courts to be abstract ideas." Id.
that:
Turning to the second step of the Alice inquiry, the Examiner finds
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional computer elements such as: memory,
computerized device (specification i-f 34--36- laptop, mainframe,
etc.), and communication (network, internet), which are recited
at a high level of generality, provide conventional computer
functions that do not add meaningful limits to practice the
abstract idea.
Ans. 4--5. The Examiner further finds the method steps are performed
"using [g]eneric computer components recited as performing generic
computer functions that are well-understood, routine, and conventional
activities [which] amount to no more than implementing the abstract idea
with a computerized system." Ans. 5.
Appellants 'Arguments
Appellants challenge the Examiner's determination with respect to
both steps of the Alice inquiry. With respect to Alice step 1, Appellants
contend the Examiner has failed to make a prima facie case that the claims
are directed to an abstract idea. App. Br. 7. In support of this contention,
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Appellants argue "the Examiner makes a factual finding without any
evidence in clear violation of the administrative procedure acts [sic]
requirement for substantial evidence to make such factual findings." App.
Br. 7. According to Appellants, "the Examiner provides no evidence at all,"
Reply Br. 2, and specifically argue that by failing to raise a prior art
rejection, the Examiner fails to present evidence that the claims are directed
to a fundamental economic practice. App. Br. 7. Appellants also contend
the rational of "certain methods of organizing human activities" is not a
valid rationale for supporting an abstract idea determination. App. Br. 8.
Appellants also analogize their claims to those found eligible in various
cases, including Eefzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016) and DDR Holdings LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014). Appellants contend their invention is rooted in computer technology
and that the claims "offer an improvement to that underlying computerized
order submission technology improving their operation and efficiency by
providing new commission pricing that reduces the number of calculations
(and time) needed by a trader to be responsive to market data." Reply Br. 3,
5.
Appellants also challenge the Examiner's Alice step 2 determination,
arguing that "the Examiner has failed to make a prima facie showing that the
claims do not add something more to this abstract idea." App. Br. 8.
Appellants argue "[t]he Examiner has provided no evidence or discussion
that these limitations are not substantially more" than the abstract idea. App.
Br. 9. Appellants further add that the lack of a prior art rejection
demonstrates that "these claims must then add something significantly
more" to the abstract idea. Id. Appellants also contend that the Examiner
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does not address the specific limitations recited in claim 34, and only
analyzes limitations recited in claim 23. Reply Br. 4.
Analysis
We are not persuaded by Appellants' arguments. With respect to
Alice step 1, Appellants first argue the Examiner has provided no evidence
in support of the abstract idea determination. We disagree because the
Examiner's determination that the claims are directed to an abstract idea is
consistent with the approach required by Alice and approved by our
reviewing court in several subsequent decisions. The Federal Circuit has
held that the "decisional mechanism" for determining whether a claim is
directed to an abstract idea compares the claim to those claims previously
found to have been directed to abstract ideas in other cases. Amdocs (Isr.)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) ("[T]he
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.").
Here, that is precisely what the Examiner has done. In determining
the claims are directed to an abstract idea, the Examiner finds Appellants'
invention "corresponds to concepts identified as abstract ideas by the
courts," and specifically identifies earlier cases having similarity to the
claims at issue here. Ans. 4 (citing Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1047 (Fed. Cir. 2017); Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 712 (Fed. Cir. 2014); Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Canada, 687 F.3d 1266, 1270-71 (Fed. Cir. 2012)). The
Examiner explains that the concept described in each independent claim "is
not meaningfully different than those economic concepts found by the courts
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to be abstract ideas." Ans. 4. We discern no error in the Examiner's
analysis, and Appellants do not present any argument or explanation as to
how the present claims differ from those found ineligible in the cases
identified by the Examiner. Without such explanation, Appellants do not
identify error in the Examiner's determination. Nor are we persuaded that
Appellants' claims are similar to those found eligible in DDR Holdings and
Enfzsh. Each case is easily distinguished from the Appellants' invention.
The finding of eligibility in DDR Holdings was based on the fact that the
claimed invention solved a problem that did not exist prior to the Internet-
preventing website visitors from being directed away to third party websites.
DDR Holdings, 773 F.3d at 1257 ("claims address the problem of retaining
website visitors that, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be instantly transported away from a
host's website after 'clicking' on an advertisement and activating a
hyperlink"). In contrast, Appellants' provide no persuasive argument or
explanation for why the pricing of counterparty commissions is a problem
unique to computer networks or that did not exist prior to the advent of
electronic trading.
Nor is Appellants' reliance on Enfzsh persuasive, as Enfish involved
the use of a self-referential database table which offered a specific
improvement in computer capabilities-namely improved storage efficiency,
reduced data modeling, and speedier indexing. Enfish, 822 F.3d at 1333.
Although Appellants contend their invention provides similar benefits, the
benefits they describe are improvements to the business process, and not to
the operation of the computer itself. See Reply Br. 5 ("improving the
efficacy of trading entities"). Because the Examiner has correctly analyzed
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the claims under Alice step 1, we disagree with Appellants' argument that
the Examiner has not made sufficient findings to support the abstract idea
determination. Accordingly, we agree with the Examiner that the claims are
directed to an abstract idea, and we proceed to step 2 of the Alice inquiry.
As we noted above, in contesting the Examiner's step 2 determination,
Appellants argue the Examiner has failed to provide any evidence or
discussion. We disagree. In determining that Appellant's claims do not
include additional elements sufficient to amount to significantly more than
the abstract idea, the Examiner relies primarily on Appellants' specification
as evidence of the well-understood, routine and conventional nature of the
recited elements. In particular, the Examiner finds the recited method is
performed by well-known computer elements described in the Specification
at a high level of generality. Ans. 4--5 (citing Spec. 34--36). We agree with
the Examiner that the description in the Specification of the computerized
aspects of the invention weighs against eligibility under Alice step 2.
The Specification indicates the various processes described in
connection with Figures 3-7 "may be implemented on system 100 of FIGS.
1 and 2." Spec. i-fi-140, 45, 47, 53, 56. The system 100 of Figures 1 and 2 is
repeatedly described as a generic computer system comprised of generic
computer components. For example, the system 100 includes a server 104.
In describing the server, the specification states that "server 104 may be any
suitable server, processor, computer, a data processing device, or
combination of the same." Spec. i1 33. Similarly, computer network 103
forming part of system 100 is described as being "any suitable computer
network including the Internet, and Internet, a wide-area network (WAN), a
local-area network (LAN), a wireless network, a Digital to subscriber line
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(DSL) network, a frame relay network, an asynchronous transfer mode
(ATM) network, a virtual private network (VPN), or any combination of any
of the same." Spec. i-f 34. Computer workstations 101 and back office
clearing center 112 are also described as being generic computing devices.
Spec. 35-36. Given these descriptions in Specification, we are not
persuaded that the Examiner has failed to provide evidence in support of the
determination under Alice step 2, and we are not persuaded by Appellants'
evidentiary argument.
Appellants also contend the lack of prior art rejections is
determinative of the Alice step 2 inquiry. We do not agree. This argument
lacks merit because it presupposes that any claim found to be novel and non-
obvious over prior art cannot be found to be lacking an inventive concept in
the Alice/Mayo framework. We are aware of no authority or case supporting
this proposition, nor do Appellants cite to any. Patent-eligibility under
35 U.S.C. § 101 is a threshold requirement that must be satisfied in addition
to being novel, nonobvious, and fully and particularly described. See Bilski
v. Kappas, 561 U.S. 593, 602 (2010). A finding of novelty or non-
obviousness does not necessarily lead to the conclusion that subject matter is
patent-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). Appellants'
approach to the Alice step 2 search for an inventive concept is inconsistent
with the legal framework established in the Patent Act, as it would limit the
application of 35 U.S.C. § 101 to only those claims found to be otherwise
unpatentable under other sections of the Act (e.g., 35 U.S.C. §§ 102, 103,
and 112).
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Finally, we are not persuaded by Appellants' contentions that the
rejections must be reversed because the Examiner does not address the
specific limitations recited in claim 34, and only analyzes limitations recited
in claim 23. We are not persuaded for two reasons. First, although the
Examiner references claim 23 is more detail, the Examiner makes clear his
analysis pertains to each independent claim. Ans. 4 ("The concept described
in method claim 23 (computerized device claim 2, system claim 12, system
claim 34) is not meaningfully different than those economic concepts found
by the courts to be abstract ideas."). Second, the Examiner's reasoning for
why the limitations do not amount to significantly more is plainly applicable
to limitations in each of the independent claims. See Ans. 4--5 (explaining
that the recited steps can be performed by a generic computer and that the
Specification teaches the computer used to carry out the invention is generic
and described at a high level of generality). Accordingly, we are not
persuaded the Examiner has erred in rejecting Appellants' claims under 35
U.S.C. § 101, and we therefore sustain the rejection.
DECISION
We affirm the Examiner's rejection of claims 2-34.
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).
AFFIRMED
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