Ex Parte Wiener et al

Patent Trial and Appeal Board

Feb 21, 2017

11968914 (P.T.A.B. Feb. 21, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/968,914 01/03/2008 JASON WIENER 01-1042-2 9775
63710 7590
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
OYEBISI, OJO O
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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
lkoro vich @ c antor. com
phowe @ cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON WIENER, JOSEPH SACERDOTE, and
ARLENE SACERDOTE
Appeal 2014-003527
Application 11/968,9141
Technology Center 3600
Before HUBERT C. LORIN, BART A. GERSTENBLITH, and
BRUCE T. WIEDER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jason Wiener et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 2—18. We have jurisdiction under 35
U.S.C. § 6(b) (2012).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.
1 The Appellants identify BGC Partners, Inc., as the real party in interest.
App. Br. 3.
Appeal 2014-003527
Application 11/968,914
THE INVENTION
Claims 9, 17, and 18 are the independent claims on appeal. Claim 17,
reproduced below, is illustrative of the subject matter on appeal.
17. A method comprising the steps of:
at a computer of an electronic trading system, receiving a
selection of a pending offer to purchase at least one asset, the
asset not assigned to the offer at the time the offer was placed,
the pending offer including a plurality of terms from a first
counterparty that entered the offer, the first counterparty’s
terms comprising:
a value requested,
a time limit for assigning at least one asset to a
pending offer, and
at least one criterion for qualifying the at least one
asset to be assigned to the offer;
automatically by the electronic trading system, assigning
to the offer an available quantity of a first default asset of a
second counterparty that satisfies the at least one criterion, the
first default asset assigned automatically at least when a total
value of assets assigned to the offer at expiration of the time
limit does not meet or exceed the value requested.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kalmus US 4,674,044 June 16, 1987
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Appeal 2014-003527
Application 11/968,914
The following rejection is before us for review:
1. Claims 2—18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Background of the Applicant’s Invention and
Kalmus.
ISSUE
Did the Examiner err in rejecting claims 2—18 under 35 U.S.C.
§ 103(a) as being unpatentable over the Background of the Applicant’s
Invention and Kalmus?
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Examiner’s
Answer. Additional findings of fact may appear in the Analysis below.
ANALYSIS
The Examiner finds that
Kalmus discloses the pending offer including a plurality of terms
from a first counterparty comprising a value requested, a time
limit for assigning at least one asset to a pending order, and at
least one criterion for qualifying the at least one asset to be
assigned to the offer (see the abstract, also see fig.2)
automatically, by the electronic trading system assigning to the
offer an available quantity of a first default asset of a second
counterparty that satisfies the at least one criterion, the first
default asset assigned automatically at least when a total value of
assets assigned to the offer at the time limit does not meet or
exceed the value requested (See col.l line 55-col.2 line 25).
Final Act. 3^4.
All of the claims require assigning a first default asset to the offer
according to a criterion at least when “a total value of assets assigned to the
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Appeal 2014-003527
Application 11/968,914
offer at expiration of the time limit does not meet or exceed the value
requested.”2 The Examiner found said claim limitation disclosed at
column 1, line 55, to column 2, line 25, of Kalmus. Final Act. 4. Said
disclosure is reproduced below:
The above and other objects of the present invention are
realized in specific, illustrative data processing based apparatus
which makes an automated trading market for one or more
securities. The system retrieves the best obtaining bid and
asked prices from a remote data base covering the ensemble of
institutions or others making a market for the relevant
securities. Data characterizing each security buy/sell order
requested by a customer is supplied to the system. The order is
qualified for execution by comparing its specific content fields
with predetermined stored parameters. The stored parameters
include such as the operative bid and asked current market
prices, the amount of stock available for customer purchase or
sale as appropriate, and the maximum acceptable single order
size.
Once qualified, the order is executed and the appropriate
stored parameters are updated. The system provides inventory
(position) control and profit accounting for the market maker.
Finally, the system reports the executed trade details to the
customer, and to national stock price reporting systems. Upon
a change in the quoted price for a security, the system updates
all relevant order qualification parameters.
BRIEF DESCRIPTION OF THE DRAWINGS
The above and other features and advantages of the
present invention will become apparent from the discussion
hereinbelow of a specific, illustrative embodiment thereof
presented in conjunction with the accompanying drawings, in
which:
2 Claim 18 recites similar language, i.e., “a total value of assets assigned to
the offer at the time limit does not meet or exceed the value requested.”
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Appeal 2014-003527
Application 11/968,914
FIG. 1 is a block diagram of the system for effecting the
securities trading of the present invention;
FIG. 2 is a flow chart illustrating data processing for
qualifying an order for execution;
FIG. 3 is a flow chart illustrating data processing for
order execution and accounting;
FIGS. 4 and 4A are flow charts illustrating data
processing for inventory and profit updating; and
FIG. 5 is a flow chart of data processing upon a change in
insider market price of a security.
Kalmus, col. 1,1. 55—col. 2,1. 25.
We are unable to find in said cited disclosure assigning a first default
asset to the offer according to a criterion at least when “a total value of
assets assigned to the offer at [expiration of] the time limit does not meet or
exceed the value requested” as claimed. Also, we do not see, and the
Examiner does not explain, how said disclosure would lead one of ordinary
skill in the art to the subject matter as claimed.
Because a prima facie case of obviousness has not been made out in
the first instance by a preponderance of the evidence, the rejection is not
sustained.
NEW GROUND OF REJECTION
Claims 2—18 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101.
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Application 11/968,914
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
Taking claim 17 as representative of the claims on appeal, the claimed
subject matter is directed to asset purchase offering. Asset purchase offering
is a fundamental economic practice. As such, it is an abstract idea.
Step two is “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. (alteration in original) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
We see nothing in the subject matter claimed that transforms the
abstract idea of asset purchase offering into an inventive concept.
The method of claim 17 sets out two steps.
The first is a receiving step of a pending offer to purchase at least one
asset. The asset and pending offer are further limited in terms of the time of
assignment and included information, respectively.
The second is a step of assigning a first default asset to the offer
according to a criterion and when “a total value of assets assigned to the
offer at expiration of the time limit does not meet or exceed the value
requested.”
Neither of these individual steps, viewed “both individually and ‘as an
ordered combination,”’ transform the nature of the claim into patent-eligible
subject matter. See Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at
1297, 1298).
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Application 11/968,914
The receiving and assigning actions gather desired first information
and then assign a default asset under specific conditions that do not
patentably transform the asset purchase offering abstract idea.
Claim 17 calls for the use of “a computer of an electronic trading
system” to perform the receiving step and an “electronic trading system” to
automatically perform the assigning step. But a generic computer system
available at the time the application was filed would have satisfied these
limitations. The Specification supports that view. See Spec., paras. 1—5.
“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention. Stating an abstract
idea ‘while adding the words “apply if” is not enough for patent eligibility.”
Alice, 134 S. Ct. at 2358.
For the foregoing reasons, we find that claim 17 covers claimed
subject matter that is judicially-excepted from patent eligibility under § 101.
The other independent claims—computer-readable tangible memory
claims 9 and 18,which parallel claim 17—similarly covers claimed subject
matter that is judicially-excepted from patent eligibility under §101. See
Alice, 134 S. Ct. at 1360. The dependent claims describe various criterion
for assigning the default asset which do not patentably transform them from
an abstract idea to an inventive application. Claims 5 and 13 add “an
interface screen” to display certain information, but interface screens to
display information were known at the time the application was filed and,
thus, do not patentably transform the subject matter of these claims from an
abstract idea to an inventive application.
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Application 11/968,914
Therefore, we enter a new ground of rejection of claims 2—18 under
35 U.S.C. § 101.
CONCLUSION
The rejection of claims 2—18 under 35 U.S.C. § 103(a) as being
unpatentable over the Background of the Applicant’s Invention and Kalmus
is reversed.
Claims 2—18 are newly rejected under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
DECISION
The decision of the Examiner to reject claims 2—18 is reversed.
Claims 2—18 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
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Application 11/968,914
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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) (2011).
REVERSED; 37 C.F.R, $ 41.50(b)
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