Bok, Tomas et al.

Patent Trials and Appeals Board

Sep 6, 2019

13668566 - (R) (P.T.A.B. Sep. 6, 2019)

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.
13/668,566 11/05/2012 Tomas Bok 107945.000013 3476
145584 7590 09/06/2019
Prince Lobel Tye LLP
One International Place
Suite 3700
Boston, MA 02110
EXAMINER
GAW, MARK H
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
09/06/2019 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):
docketing@princelobel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte TOMAS BOK
and DAVID CUSHING
________________

Appeal 2018-003795
Application 13/668,5661
Technology Center 3600
________________

Before: JOHN A. JEFFERY, JOHN P. PINKERTON, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants filed a paper under 37 C.F.R. § 41.52 requesting
reconsideration of our June 3, 2019, Decision (“Dec.”) in which we affirmed
the Examiner’s rejections of claims 1–8 under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter and 35 U.S.C. § 112, first
paragraph. Req. Reh’g 3–10.
For the reasons stated below, however, we deny the request to modify
our Decision.

1 According to Appellants, ITG Software Solutions, Inc. is the real party in
interest. App. Br. 2.
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APPLICABLE REQUEST FOR REHEARING RULES
Appellants “may file a single request for rehearing within two months
of the date of the original decision of the Board.” 37 C.F.R. § 41.52(a)(1).
“Arguments not raised, and Evidence not previously relied upon . . . are not
permitted in the request for rehearing except as permitted by paragraphs
(a)(2) through (a)(4).” Id. Permitted new arguments are limited to: (a) new
arguments based upon a recent relevant decision of either the Board or a
Federal Court; (b) new arguments responding to a new ground of rejection
designated pursuant to § 41.50(b); or (c) new arguments that the Board’s
decision contains an undesignated new ground of rejection. See
37 C.F.R. § 41.52(a)(2)–(4).
I. Appellants’ Argument and Our Analysis Pertaining To 35 U.S.C.
§ 101
Appellants argue the Decision overlooks that the present claims
integrate a judicial exception into a practical application because they
require specialized computer hardware with software communicating with
an electronic network and reading an electronic order automatically without
human intervention. Req. Reh’g 2–3. Appellants argue that our analysis on
pages 7 through 8 of our Decision is tantamount to an undesignated new
ground of rejection. Req. Reh’g 2 (citing Dec. 7–8). We disagree with
Appellants.
As noted in our Decision, the present claims are directed to
fundamental economic practices (i.e., an abstract idea). Dec. 3–7.
We disagree with Appellants’ argument that the present claims
integrate a judicial exception into a practical application because they
require specialized computer hardware with software communicating with
an electronic network and reading an electronic order automatically without
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human intervention. Req. Reh’g 2–3. The Specification indicates what
Appellants’ argue are specialized computer hardware elements (i.e., “data
processing device comprising a processor” and “electronic communication
network”) recited in the present claims are generic tools used to implement
the abstract idea. Spec. ¶ 54 (“data processing device 602 (e.g., a general
purpose computer . . . or other data processing device)” and “network 610”
is described at a high level of generality).
We disagree with Appellants’ argument that our analysis in our
Decision is tantamount to an undesignated new ground of rejection. Req.
Reh’g 2 (citing Dec. 7–8). The new USPTO 35 U.S.C. § 101 Guidance is
not “new precedent,” as Appellants allege (Req. Reh’g 2). Rather, the
Guidance merely synthesizes the case law on § 101 that existed at the time
the Briefs were filed. Moreover, our Decision did not change the thrust of
the rejection; therefore, our Decision is not an undesignated new ground of
rejection.
Appellants do not make any other arguments pertaining to 35 U.S.C.
§ 101. Accordingly, we have considered Appellants’ argument raised in the
Request, but this argument does not persuade us that the Decision pertaining
to 35 U.S.C. § 101 was in error. We are still of the view that the invention
set forth in claims 1–8 is patent ineligible under 35 U.S.C. § 101 for the
reasons stated above and in our Decision.
II. Appellants’ Argument and Our Analysis Pertaining To 35 U.S.C.
§ 112, first paragraph
Appellants argue the Decision overlooks that the disclosure from
paragraph 54 of the Specification (i.e., “The instructions may be used to
program a data processing device 602 to perform the processes described
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above”) provides sufficient support to meet the written description
requirement. We disagree with Appellants.
As noted in our Decision, Appellants added the limitation “without
human intervention” recited in claim 1 in the Amendment filed on January
11, 2017––i.e., after the filing date of November 5, 2012. Dec. 9–10. And
we noted that, although the Specification provides support for the limitation
“automatically” (Spec. ¶ 6), we find it does not provide adequate support for
the limitation “without human intervention.” Dec. 9–10. Stated differently,
the cited portions of the Specification relied upon by Appellants are broader
than the “without human intervention” limitation. Req. Reh’g 4–5 (citing
Spec. ¶ 54).
Moreover, the Specification does not support the limitation “an
electronic order to trade X shares of security, to create, automatically
without human intervention, an initial set of electronic order to trade Y
shares of security, wherein Y is less than or equal to X” (emphasis added)
inherently because there are different interpretations of the Specification a
person having ordinary skill in the art at the time of the invention would
take. For example, the Specification is broad enough such that a human can
break up X shares of security into a smaller order of Y shares by using a
computer input device (i.e., with human intervention by clicking on a
mouse); then, the computer software creates Y shares (after the human
intervention of clicking on the mouse to initiate the creation of Y shares) and
trades the Y shares automatically.
It is well settled that a description that merely renders the invention
obvious does not satisfy the written description requirement. See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en
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banc). As such, we discern no error in our finding that Appellants lacked
possession of the limitation “without human intervention” recited in claim 1
at the time of filing the application. Dec. 9–10.
Accordingly, we have considered Appellants’ arguments raised in the
Request, but these arguments do not persuade us that the Decision pertaining
to 35 U.S.C. § 112, first paragraph was in error.
CONCLUSION
For the reasons discussed above, Appellants’ arguments do not
persuade us of error in our June 3, 2019 Decision.
Accordingly, Appellants’ Request for Rehearing is granted to the
extent the Decision is reconsidered, but is denied with respect to modifying
the Decision.

DENIED