NYSE MKT LLCDownload PDFPatent Trials and Appeals BoardJun 21, 20212021000850 (P.T.A.B. Jun. 21, 2021) Copy Citation 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. 14/542,701 11/17/2014 Clifford J. Weber MKT-14-1074CON 1944 35811 7590 06/21/2021 IP GROUP OF DLA PIPER LLP (US) ONE LIBERTY PLACE 1650 MARKET ST, SUITE 5000 PHILADELPHIA, PA 19103 EXAMINER HAMILTON, LALITA M ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 06/21/2021 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@us.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 C. MARTIN1 _____________ Appeal 2021-000850 Application 14/542,701 Technology Center 3600 ______________ Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1 through 30. 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 5. Claim 1 is illustrative of the invention and is reproduced below: 1 According to Appellant, NYSE AMERICAN LLC is the real party in interest. App. Br. 1. Appeal 2021–000850 Application 14/542,701 2 1. A system for automatically pricing trades based on benchmark values associated with multiple time zones, comprising: a processor; a communication device operatively coupled to the processor, the communication device configured to receive an indication of a trade to be priced relative to a reference benchmark value associated with multiple time zones when the trade is initiated in a first time zone, 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 a quantity of the trade; the communication device further configured to receive components of the reference benchmark value from at least one external data source via an electronic network, each of the components received at a specific time point associated with a respective one of the multiple time zones, the specific time point differing from a closing time of the first time zone; and a database operatively coupled to the processor, the database configured to store the information associated with the trade and a linked trade identifier in an index structured data table until a last of the components is received at a final specific time point, thereby delaying execution of the trade; upon determining the last of the components is received, the processor further configured to automatically: determine the reference benchmark value based on all of the received components, determine the final price and the quantity for the trade based on the reference benchmark value, assign the final price and the quantity for the trade to at least a portion of the information associated with the trade, generate an executable trade, and report the executable trade to a reporting platform. Appeal Br. 21 (Claims App.). Appeal 2021–000850 Application 14/542,701 3 REJECTIONS AT ISSUE The Examiner rejected claims 1 through 30 under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter. Final Act. 6–7.2 The Examiner rejected claims 1 through 30 on the ground of non- statutory, obviousness-type, double patenting, for being unpatentable over claims 1 through 27 of U.S. Patent 10,430,879. Final Act. 4–6. PRINCIPLES OF LAW In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101.3 The USPTO current eligibility guidance is found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), and particularly within Sections 2103 through 2106.07(c). “Because the MPEP now incorporates the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), October 2019 Patent Eligibility 2 Throughout this Opinion, we refer to the Appeal Brief, filed June 15, 2020 (“App. Br.”), the Reply Brief, filed November 16, 2020 (“Reply Br.”), the Examiner’s Answer, mailed September 17, 2020 (“Answer”), and the Final Office Action, mailed March 26, 2020 (“Final Act.”). 3 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1. Appeal 2021–000850 Application 14/542,701 4 Guidance Update (October 2019 Update), and the Berkheimer Memo,4 all references to those materials should now be directed to the MPEP.” See https://www.uspto.gov/patent/laws-and-regulations/examination- policy/subject-matter-eligibility (emphasis added). All references to the MPEP throughout this Decision are to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise indicated. Under MPEP § 2106, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (“Step 2A, Prong Two”).5 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or 4 Referring to Berkheimer v. HP, Inc., 881 F.3d. 1360, 1369 (Fed. Cir. 2018). 5 “Examiners evaluate integration into a practical application by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.” MPEP § 2106.04(d)II. Appeal 2021–000850 Application 14/542,701 5 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See MPEP § 2106.05(d)). ANALYSIS Patent eligibility under § 101 is a question of law that may contain underlying issues of fact. “We review the [Examiner’s] ultimate conclusion on patent eligibility de novo.” Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1342 (Fed. Cir. 2018) (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018)); see also SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo.”). We have reviewed Appellant’s arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to Appellant’s arguments. We concur with the Examiner’s findings and conclusions in the Final Rejection and the Answer. Appellant’s arguments have not persuaded us of error in the Examiner’s rejection of all the claims under 35 U.S.C. § 101 and we address them as they apply to the 2019 Revised Guidance. Abstract Idea The Examiner finds that the claims are not patent eligible as they are directed to a judicial exception without reciting significantly more. Final Act. 6–7. Specifically, the Examiner finds that the claims are directed to “to the abstract idea of trades that are priced to a reference benchmark value Appeal 2021–000850 Application 14/542,701 6 without significantly more,” which the Examiner finds is a method of organizing human activity. Id. Appellant argues the Examiner’s rejection is in error as the Examiner impermissibly overgeneralized the claimed invention and did not consider the specific and detailed limitations. Appeal Br. 8–11. Appellant argues that: Appellant's invention is not directed to any fundamental economic principal or practice, but is instead directed to a novel, system improving computer system having a specific hardware configuration and method to delay determination of a reference benchmark value and delay creation of executable trades until such time as reference benchmark value components come into existence across multiple time zones and are accordingly received. Appeal Br. 9. Further, Appellant argues that the limitations directed to: a) a trade indicator being received in a first time zone; b) the benchmark components being retrieved from external data sources in multiple time zones; c) delaying execution of the trade; and d) automatically executing the trade when the last benchmark component is receive, are “are all computer- specific features that cannot possibly be deemed as a human activity.” Appeal Br. 10. Additionally, Appellant argues that these limitations can be performed in the human mind. Appeal Br. 11 (citing SiRF Tech., Inc. v. Int’l Trade Comm’n,). We concur with the Examiner that the claims recite an abstract concept of organizing human activity as they recite a fundamental economic process of pricing trades and executing the trades. Specifically representative claim 1 in the preamble recites a system for “pricing trades based upon a benchmark values associated with multiple time zones.” Claim Appeal 2021–000850 Application 14/542,701 7 1 further recites receiving an indication of a trade to be priced relative to a benchmark value, receiving components of the benchmarked value from external sources at different times (receiving data concerning pricing) and upon determining that all the comments (all data) are received: determining the benchmark’s value, determining the price for the trade, executing the trade and reporting the trade. Thus, the claim recites a business process of receiving an order, valuing the order, placing a trade and posting the orders in a trading account, which is a fundamental economic activity. This is similar to other “fundamental economic concepts” found to be abstract ideas by the Supreme Court and this court. See, e.g., Alice, 573 U.S. at 220 (intermediated settlement); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (risk hedging); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (using advertising as an exchange or currency); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (data collection); Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1346 (Fed. Cir. 2013) (generating tasks in an insurance organization). The claim 1 steps of receiving an indication of a trade, receiving components of the benchmarked value from external sources at different times (receiving data concerning pricing) and upon determining that all the comments (all data) are received, determining the benchmarks value, price for the trade; are all steps of obtaining information for valuation of a trade. While these steps are part of a fundamental economic process, they also recite a concept of gathering data, analyzing it, and displaying the data, which is similar to the idea held to be abstract in in Electric Power Group. The claims at issue in Electric Power Group recited several steps of Appeal 2021–000850 Application 14/542,701 8 receiving data from various sources, detecting and analyzing the data, and displaying the data. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351–52 (Fed. Cir. 2016). The court stated “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.” Id. at 1353; see also Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (finding claims to collecting and comparing known information determined to be steps that can be practically performed in the human mind); In re TLI Communications 823 F3d 607, 613 (Fed. Cir. 2016) (finding the claims to classifying and storing digital images as reciting an abstract idea) Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The concept of data collection, recognition, and storage is undisputedly well- known. Indeed, humans have always performed these functions.”); October 2019 Update: Subject Matter Eligibility 7 (discussing Electric Power Group and mental processes), available at https://www.uspto.gov/sites/default/ files/documents/ peg_oct_2019_update.pdf. Further, Appellant’s argument that such steps could not be performed in the mind is not persuasive of error. Appeal Br. 11. The claim is not limited to an amount of data or a computation beyond what a person could perform in their mind. For example, because the claim is broad enough to receive a trade for a something with a benchmark value based upon components from two time zones, it would be easy for a person to accept the trade request and wait (delay the trade) until the pricing data from the components in those time zone become available and perform the pricing. Further, our reviewing court has said “[A] purportedly new arrangement of Appeal 2021–000850 Application 14/542,701 9 generic information that assists [users] in processing information more quickly” does not confer patent-eligibility. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019), cert. denied, 140 S. Ct. 954 (2020). We do not consider the recitation of a delay in execution of a trade does not make the concept less abstract, and is addressed further with respect to Appellant’s “practical application” argument. Thus, we consider representative claim 1 to recite elements of two abstract ideas: a mental process and a certain method of organizing human activity, such as a fundamental economic practice. 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) (“Adding one abstract idea (math) to another abstract idea . . . does not render the claim non-abstract.”); see also FairWarning 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). Thus, we conclude representative claim 1 recites an abstract idea. Practical Application The Examiner finds that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, as the additional elements of the claim, a processor, communication device, a database and memory; are components of a general purpose computer performing the steps of the claims. Final Act 6–7 (citing page 26 of Appellant’s Specification). The Examiner finds the claimed invention to provide “no specific improvement to the way computers Appeal 2021–000850 Application 14/542,701 10 operate.” Ans. 8. The Examiner further disagreed with appellants and finds that the claims are not focused on a specific way of improving a computer or another relevant technology. Ans. 4–5. Appellant argues that the claims integrate the abstract idea into a practical application. Appeal Br. 11–15; Reply Br. 4–7. Appellant argues that the claims “recite limitations that define a timing mechanism that holds trade data and delays for a period of time the creating of an executable trade that would otherwise automatically be executed” which draw the claim to a practical application. Appeal Br. 12 (citing Ex parte Smith (Appeal 2018- 000064, decided February 1, 2019 and designated as informative on March 19, 2019). Appellant argues that in In Re Smith: the Board concluded that under the 2019 PEG, Claim 1 amounts to a practical application of the judicial exception because the claim includes additional elements that “limit the conventional practice of automatically executing matching market orders by reciting a specific timing mechanism in which the execution of a matching order is delayed for a specific period of time. This delay allows for other matching orders to be received from the in-market participants so that the order can be allocated between the first and second and executed upon expiration of the delay period” Appeal Br. 12–13 (citing Ex parte Smith, p. 9). Appellant asserts that the claims at issue include a similar timing mechanism that delays automatic execution of trades and thus is a practical application of the abstract idea. Appeal Br. 14–15. Further, Appellant asserts the claims are an improvement to the prior systems as “participants have a better idea of the final price” which the claims address by delaying the execution of the trade until all components of the benchmark are received. Appeal Br. 14–15. Appeal 2021–000850 Application 14/542,701 11 We concur with the Examiner that the claims do not recite a practical application of the abstract concept and are not persuaded of error by Appellant’s arguments. We disagree with Appellant that the claims at issue are similar to our recent informative decision Ex Parte Smith.6 In Ex parte Smith the panel found that the representative claim “recites additional limitations which focus on addressing problems arising in the context of a hybrid derivatives trading system in which trades are made both electronically and on a trading floor (i.e., ‘in the pits’).” Ex Parte Smith p. 8. Further, the panel stated: The use of the recited “timer” does not occur with each and every trade. Rather, it is implemented in specific circumstances in a specific trading environment, namely when a matching market order is received from an in-crowd market participant in a hybrid trading system. As the Specification explains, the problem of inequitable access to information arises only in the context of hybrid trading platforms where trades occur both “in the pits” and electronically. Spec. ¶ 55. Thus, like the claim and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), Appellants’ claims “overcome a problem specifically arising in the realm of computer networks.” Id. at 1257. Ex Parte Smith p 9–10. Here the claims and facts are very different from those at issue in Ex 6 Appellant references Ex parte Smith (Appeal No. 2018-000064 issued March 19, 2019) as supporting the assertion that the Examiner's rejection be reversed Appeal Br. 11–15; Reply Br. 5–7. Appellant appears to rely on this decision for the general proposition that claims that are limited to a practical application and provide a technological improvement over the art are patent- eligible, a proposition with which we do not necessarily disagree. However, as explained infra, we are of the view that the instant claims are different from those at issue in Ex parte Smith and do not sufficiently meet these requirements. Appeal 2021–000850 Application 14/542,701 12 Parte Smith. Representative claim 1 recites a database to store information until the last of the components is received, thereby delaying execution of the trade. Appellant’s Specification does not identify that this delay is related to solving a problem arising from the use of the computer. Rather, Appellant’s Specification identifies that the use of an index (claimed benchmark) which is based upon stocks (components of the index) sold in markets in various time zones requires a delay to obtain accurate pricing. (Specification ¶¶ 2–4, 7 and 25). Thus, the delay is not to overcome a problem specifically arising due to the user of computer, as in Ex Parte Smith, or DDR Holdings, LLC v. Hotels.com, L.P). Instead, the delay is to more accurately price the trade (i.e. the delay is solving a problem that exists regardless of whether a computer is used) and the use of a computer is just automating an abstract concept. As such, we consider representative claim 1 to be reciting the use of a computer system and user interface to implement the abstract idea, of pricing a trade with a benchmark based upon components from different time zones, which is insufficient to transform the abstract concept to patent eligible subject matter. FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (“[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.”) (Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). Accordingly, Appellant has not persuaded us the Examiner erred in not considering representative claim 1 to be reciting an improvement in the operation of the computer or another technology. Appeal 2021–000850 Application 14/542,701 13 Thus, Appellant’s arguments have not persuaded us the Examiner erred in not finding the claims recite a practical application of the abstract idea. Significantly more than Abstract Idea If a claim: (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, we then look to whether the claim adds a specific limitation beyond the judicial exception that is not “well- understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or, simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Appellant restates the claim and asserts that “all of these features, including those highlighted in bold above, certainly go well beyond any abstract idea, particularly when considered as a whole. Further, the collection of claimed elements cannot possibly be construed as well- understood, routine, and conventional in this art.” Appeal Br. 16. These arguments have not persuaded us of the claim recites limitations in addition to the abstract concept that are more than well- understood, routine, and conventional activities. As discussed supra, the Examiner has found that the claims recite the additional limitations of: a processor, communication device, a database and memory; which are components of a general purpose computer (a well known device) performing the steps of the claims. Final Act 6–7 (citing page 26 of Appellant’s Specification). We have reviewed Appellant’s Specification, and concur that Appellant’s specification recites using well-known Appeal 2021–000850 Application 14/542,701 14 computers, processors, databases and communication systems to perform the fundamental economic activity of receiving an order, valuing the order, placing a trade and posting the orders in a trading account. See ¶¶ 26–29. Thus, Appellant’s arguments have not persuaded us the Examiner erred in concluding representative claim 1 does not recite additional elements beyond those that are well understood, routine, and conventional. In summary, Appellant’s arguments have not persuaded us of error in the Examiner’s determination that the claims recite an abstract idea, or receiving an order, valuing the order, placing a trade and posting the orders in a trading account. Further, Appellant’s arguments have not persuaded us that the Examiner erred in finding that the claims are not integrated into a practical application of that abstract idea, because the claims are not: directed to an improvement in the functioning of the computer or to other technology or other technical field; directed to a particular machine; directed to performing or affecting a transformation of an article to a different state or thing; directed to using a judicial exception in some meaningful way beyond linking the exception to a particular technological environment such that the claim as a whole is more than a drafting effort to monopolize the judicial exception. Nor have Appellant’s arguments persuaded us the Examiner erred in finding the additional limitations of the claims simply append well- understood and conventional activities such that the claim as a whole does not amount to significantly more than the abstract idea itself. Accordingly, we sustain the Examiner’s rejection of claims 1 through 30 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. Appeal 2021–000850 Application 14/542,701 15 Double Patenting Rejection Appellant argues on pages 19 and 20 of the Appeal Brief that the Examiner’s double patenting rejection should be held in abeyance pending resolution of the other rejections. As such, Appellant has not identified an error in the Examiner’s double patenting rejection and there are no issues for us to decide with respect to this rejection, thus, we sustain it pro forma. DECISION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–30 Double Patenting, Bares 1–30 1–30 101 Eligibility 1–30 Overall Outcome 1–30 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation