Ex Parte Acuña-Rohter et al

Patent Trial and Appeal Board

Mar 26, 2018

13281782 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/281,782 10/26/2011
12684 7590 03/28/2018
Lempia Summerfield Katz LLC/CME
20 South Clark Street
Suite 600
Chicago, IL 60603
FIRST NAMED INVENTOR
Jose A. Acufia-Rohter
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.
4672/l 1012AUS 6015
EXAMINER
OYEBISI, OJO 0
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
mail@lsk-iplaw.com
docket-us@lsk-iplaw.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE A. ACUNA-ROHTER, PAUL CALLAWAY,
PEARCE PECK-WALDEN, and BARRY L. GALSTER
Appeal2017-000302
Application 13/281, 782
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-000302
Application 13/281,782
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-36. Claim 37 has been withdrawn from consideration pursuant to
37 C.F.R. § 1.142(b) as being drawn to a nonelected Species. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Representative Claims
Representative claims 1 and 35 under appeal read as follows;
1. A computer implemented system for improving
efficiency of a trading system, the trading system comprising a
processor and a match engine coupled therewith, the match
engine being operative to match an order for an instrument with
another order counter thereto to at least partially satisfy one or
both of the order or the other order, the system comprising
computer executable program codes stored in a non-transitory
memory and executable by a processor coupled therewith to
cause the processor to:
disable, by the processor, the processor from identifying
to the match engine, a first set of orders, each order of the first
set of orders being for a different instrument at an associated
order price, wherein if identified to the match engine, one or
more of the orders of the first set of orders would be used by
the match engine to at least partially satisfy, at an associated
match price, the remaining orders of the first set of orders;
receive, by the processor, each order of the first set of
orders;
determine, by the processor subsequent to the receiving
of all of the orders of the first set of orders, that an event has
occurred and, based thereon further determining by the
processor whether the associated match price for any order of
the first set of orders would be better than the associated order
price thereof; and
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enable, by the processor when the associated match price
for each order of the first set of orders would not be better than
the associated order price thereof, identification to the match
engine, upon receipt of a subsequent order for a same
instrument associated with any of the orders of the first set of
orders, of a second set of orders comprising the subsequent
order and a subset of orders of the first set of orders wherein, if
identified to the match engine, one or more of the orders of the
second set of orders would be used by the match engine to at
least partially satisfy the remaining orders of the second set of
orders.
35. A system for improving efficiency of a trading
system comprising a match engine operative to match an order
for an instrument with another order counter thereto to at least
partially satisfy one or both of the order or the other order, the
system comprising:
means for disabling identification to the match engine, a
first set of orders, each order of the first set of orders being for a
different instrument at an associated order price, wherein if
identified to the match engine, one or more of the orders of the
first set of orders would be used by the match engine to at least
partially satisfy, at an associated match price, the remaining
orders of the first set of orders;
means for receiving each order of the first set of orders;
means for determining, subsequent to the receiving of all
of the orders of the first set of orders, that an event has occurred
and, based thereon further determining whether the associated
match price for any order of the first set of orders would be
better than the associated order price thereof; and
means for enabling, when the associated match price for
each order of the first set of orders would not be better than the
associated order price thereof, identification to the match
engine, upon receipt of a subsequent order for a same
instrument associated with any of the orders of the first set of
orders, of a second set of orders comprising the subsequent
order and a subset of orders of the first set of orders wherein, if
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identified to the match engine, one or more of the orders of the
second set of orders would be used by the match engine to at
least partially satisfy the remaining orders of the second set of
orders.
App. Br. 10, 18 (Claims Appendix).
Rejection on Appeal
The Examiner rejected claims 1-36 under 35 U.S.C. § 101 for being
directed to patent-ineligible subject matter. See Final Act. 2. 1
Issue on Appeal
Did the Examiner err in rejecting claims 1 and 35 as being directed to
patent-ineligible subject matter?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
contention that the Examiner erred. Instead, we concur with the conclusions
reached by the Examiner. Except as noted below, we adopt as our own the
reasoning set forth by the Examiner in the Final Office Action and
Examiner's Answer.
1 We select claims 1 and 35 as representative. Separate patentability, in
compliance with 37 C.F.R. § 41.37(c)(iv), is not argued for claims 2-34 and
36. See App. Br. 5-9. Except for our ultimate decision, the rejection of
claims 2-34 and 36 is not discussed further herein.
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A. Section 101 Case Law
Under 35 U.S.C. § 101, a patent may be obtained "for any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66 (2012), "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. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. The Court
acknowledged in Mayo that "all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas." Mayo, 566 U.S. at 71. Therefore, we look to whether the claims
focus on a specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the abstract idea and
otherwise merely recite generic processes and machinery. See Enfzsh, LLC
v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). If the claims are
not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry
proceeds to the second step, in which the elements of the claims are
considered "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
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patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 79, 78).
B. Alice/Mayo - Step 1
The Examiner determines claim 1 is directed towards improving the
efficiency of a trading system, and improving the efficiency of a trading
system is a fundamental economic practice, and, thus, claim 1 is directed to
an abstract idea. See Final Act. 2-3. Appellants contend claim 1 is not
directed to an abstract idea under 35 U.S.C. § 101 because:
[T]he Examiner has not shown, e.g. by objective evidence [e.g.,
citation to a finance or banking textbook or standard], and a
person of ordinary skill in the art would not find, that the claims
are directed to a fundamental economic practice, such as the
operation of an economic market to buy and sell, nor directed to
methods of organizing human activities, an idea in and of itself
or a mathematical relationship or formula.
Furthermore, Applicants generally disagree with the Examiner's
unsupported assertion that the claims are directed to an
"abstract idea", "mathematical relationship", or "fundamental
economic practice" and even if it were, Applicants' claims do
not relate to, nor do they preempt, for example, mere trading of
financial instruments.
App. Br. 5---6 (emphasis added).
The Examiner responds:
[T]he recited steps describe the concept of "improving efficiency
of a trading system," which corresponds to concepts identified
as abstract ideas by the courts, such as formulation and trading
of risk in Alice; and as a result, claim 1 includes an abstract idea.
There are no improvements to the technical field or the
technology, nor are there improvements to the computer system
itself Consequently the claim is not patent eligible.
Ans. 3 (emphasis added).
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In response, Appellants continue to contend that claim 1 is not
directed to an abstract idea under 35 U.S.C. § 101 because:
[T]he Examiner has failed to clearly identify what abstract idea
they feel the claims are directed towards and instead are merely
reciting Appellants' claim preamble, without regard to the
actual limitations of Appellants' claims and without any
further support or analysis of those actual limitations of
Appellants' claims. The Examiner further provides [no]
explanation for how the supposed Abstract Idea corresponds to
concepts identified in the Alice decision. Primarily, Appellants
find no parallel between improving efficiency of a trading
system and "formulation and trading of risk."
In particular, Appellants' claims do not relate to, nor do they
preempt, the mere improving of efficiency of a trading system.
Instead, the claims are directed to a novel and patentable specific
application which identifies sets of orders to a match engine
which may use some of those orders to satisfy the remainder of
those orders. Contrary to the assertion of the Examiner, the
claims are highly specific to controlling the operation of the
claimed processor, under the specified conditions, in
conjunction with a match engine of a trading system where the
match engine is specifically operative to match an order for an
instrument with another order counter thereto to at least partially
satisfy one or both of the order or the other order. See Ex Parte
Ismail, Appeal No. 2014-005477 (Application No. 11/630,856),
PTAB, July 1, 2016.
Reply Br. 2 (emphasis added).
We are unpersuaded by Appellants' arguments. Upon review of
Appellants' claims and Specification, and consistent with the Examiner's
findings, the claims are directed to improving the efficiency of trading in a
commodities exchange, derivatives exchange, or similar business involving
trading items where orders from buyers are matched with orders for selling.
Such trading is substantially similar to the economic practices that were
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deemed to be patent-ineligible subject matter in Bilski v. Kappas, 561 U.S.
592 (2010) and Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S.Ct. 2347,
2014. See Bilski, 561 U.S. at 611-12 (holding that claims directed to the
concept of hedging in commodities and energy markets were unpatentable
abstract ideas); see also Alice, 134 S. Ct. at 2352 (holding that the claims
were drawn to the abstract idea of mitigating settlement risk associated with
a financial transaction and merely requiring generic computer
implementation failed to transform the abstract idea into a patent-eligible
invention). Similar to Alice, the fact that the claims recite that the matching
is implemented by a trading system comprising a processor and a match
engine is not sufficient to transform the recited abstract idea into a patent-
eligible invention.
Contrary to Appellants' argument that the Examiner is required to cite
to a finance textbook, or other type of standard, we conclude the Examiner is
merely required to provide Appellants reasonable notice as to the basis of
the§ 101 rejection. The notice requirement is set forth by 35 U.S.C. § 132.
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application." 3 5
U.S.C. § 132. That section "is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection." Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). We further conclude the
Examiner has met this requirement. See Final Act. 2-3.
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In light of the above, the Examiner correctly concluded that claim 1 is
directed to an abstract idea. Regarding Appellants' additional arguments, to
the extent that Appellants are arguing that claim 1 recites additional elements
that amount to "significantly more" than the abstract idea, that issue is
distinct from whether claim 1 is directed to an abstract idea. Appellants'
arguments that claim 1 is directed to "significantly more" are addressed
infra.
C. Alice/Mayo - Step 2
The Examiner determines claim 1 is not significantly more than the
abstract idea because:
[T[he claims do not include an improvement to another
technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations
beyond generally linking the use of an abstract idea to a
particular technological environment. Note that the limitations,
in the instant claims, are done by the generically recited
computer and communications network. The limitations are
merely instructions to implement the abstract idea on a computer
and require no more than a generic computer to perform generic
computer functions that are well-understood, routine and
conventional activities previously known to the industry.
Final Act. 3 (emphasis added).
Appellants contend claim 1 has sufficiently more to transform the
claim from an allegedly abstract idea into patent-eligible subject matter
because:
[T]he claims are directed to a specific, novel and patentable
system which can be used by an electronic trading system to
improve the transactional processing efficiency thereof by
reducing the number of transactions processed the system. This
is specifically accomplished by conditionally disabling and then
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reenabling the operation of the claimed processor which
identifies sets of orders to a match engine which may use some
of those orders to satisfy the remainder of those orders.
The claimed invention improves upon the technical field of
transaction processing systems by temporarily disabling the
generation of certain transaction under certain specific
conditions and re-enabling those transactions under other
specific conditions. This necessarily reduces the number of
transactions being submitted to the system enabling the system
handle other transactions.
This is a specific and patentable application and meaningful
limitation beyond generally linking the use of an abstract idea
to a particular technological environment.
App. Br. 6-7 (emphasis added).
The Examiner responds:
[T]he recited "computer processor" and "match engine" are
recited at a high level of generality to simply perform the
generic computer functions of receiving data, processing data,
determining specific data elements and transmitting data. . ..
Thus, generic computer components recited as performing
generic computer functions that are well-understood, routine
and conventional activities amount to no more than
implementing the abstract idea with a computerized system.
Thus, taken alone, the additional elements do not amount to
significantly more than the above-identified judicial exception
(the abstract idea). Looking at the limitations as an ordered
combination of elements add nothing that is not already present
when looking at the elements taken individually. There is no
indication that the combination of the elements improves the
functioning of a computer or improves any other technology.
Their collective functions merely provide conventional computer
implementation.
Ans. 3--4 (emphasis added).
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In response, Appellants continue to contend that claim 1 has
sufficiently more to transform the claim from an allegedly abstract idea into
patent-eligible subject matter because:
[T]he claimed invention improves upon the technical field of
data and transaction processing by providing a system which
provides a mechanism for disabling, according to specific
rules/conditions, implied order identification and
reenablement thereof pursuant to other specific
rules/conditions. This is neither a routine nor conventional
activity previously known in the industry, or a generic
computerization thereof, as evidenced by the lack of prior art, but
is instead a specific, patentable application and meaningful
limitation beyond generally linking the use of an abstract idea to
a particular technological environment.
[T]he disabling of identification to the match engine,
determination and conditional enablement as claimed by
Appellants, are not the mere patenting of a result but instead
are specific as to the process/machinery by which the result is
accomplished. And further, these [limitations] have NOT been
used before and therefore are not well understood, routine or
conventional in the art.
[A ]s with the invention at issue in the DDR case, which was
directed to solving an Internet-centric problem, Appellants'
claimed invention [is] similarly patentable, and directed to
solving a transaction/data processing-centric problem. As with
the invention of DDR, Appellants' claims do not generically
recite "use of a communications network" to perform a
business practice, but instead recites a specific way to process
transactions without having to modify the processing systems.
Reply Br. 4--5, 7 (emphasis added).
We do not agree with Appellants' argument. Instead, we agree with
the Examiner that the recited computer components (e.g., "processor" and
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"match engine") are recited at a high level of generality such that the claims
recite generic computer components performing generic computer functions
(i.e., receiving data, processing data, determining specific data elements and
transmitting data) that are well-understood, routine and conventional
activities, and the claims amount to no more than implementing the abstract
idea with a computerized system. Contrary to Appellants' argument that the
claimed invention improves upon the technical field of transaction
processing systems, we conclude that the claimed functionality of disabling
the matching of certain orders under certain business-related conditions and
re-enabling the aforementioned matching under other business-related
conditions merely improves the efficiency of the underlying economic
practice (i.e., order matching) implemented by the computer system by
omitting the matching of certain orders. In other words, the argued
improvement is really an improvement of the underlying economic practice
itself, rather than a technological improvement of the computerized trading
system that implements the underlying economic practice. Such an
improvement does not constitute an improvement to the functionality of the
underlying computer system or computer technology.
Regarding Appellants' argument that claim 1 is similar to the claims
in DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1257 (Fed. Cir. 2014),
this argument is also not persuasive. Appellants provide no persuasive
analysis as to why claim 1 is similar to the claims at issue in DDR. In DDR,
the court determined that the claims at issue were necessarily rooted in
computer technology in order to address the Internet-centric problem of how
to provide user access to computer-implemented applications over the
Internet. DDR, 773 F.3d at 1257. In contrast, the disabling of the matching
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of certain orders under certain conditions and the re-enabling of the
aforementioned matching under other conditions, as recited in claim 1, is
not necessary rooted in computer technology, as the recited disabling and re-
enabling of the matching could also occur outside the context of computer
technology (e.g., if the matching of certain orders is implemented using pen
and paper). In light of the above, the Examiner correctly concluded that
claim 1 does not amount to significantly more than an abstract idea.
D. Other 101 Arguments
Appellants further contend claim 3 5 recites means-plus-function
elements which impart a meaningful limitation or add significantly more to
an abstract idea itself. See App. Br. 8. More specifically, Appellants
contend:
[W]ith respect to claim 35, the Patent Trial and Appeal Board
recently found that a claimed "means for matching" could not
be performed by a generic computer and, rather, as a means-
plus-function limitation, the "means for matching"
encompassed the processing steps recited in the Specification
that, according to the Board, amounted to a "specific algorithm
that transforms an otherwise general purpose computer into a
special purpose computer programmed to perform the recited
function of 'matching.'" Thus, according to the Board, "when,
as here, a special purpose computer constitutes the structure
that performs the recited function of 'matching,' in practical
terms it imparts a meaningful limitation or adds significantly
more to the abstract idea, itself[.]" See Chicago Mercantile
Exchange, Inc. v. 5th Market, Inc., CBM2015-00061 (PTAB
July 16, 2015) (Paper 9), pages 37-38 (denying institution of the
request for covered business method post grant review and
finding that CME had not demonstrated that claims 1 and 2 of
the '387 patent lacked the limitations required for an inventive
concept).
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App. Br. 8 (emphasis added).
The Examiner responds:
[C]laim 35 uses a conventional, general purpose computer to
perform generic computer function i.e. accessing memory,
receiving and storing data, processing and matching data, and
outputting data. As the Examiner observes, a general purpose
computer is flexible; it can do anything it is programmed to do.
Programming a general purpose computer to perform a particular
function does not constitute an improvement to the computer
itself or an improvement to a technical field or technology.
Ans. 5 (emphasis added).
In response, Appellants reiterate their arguments that claim 3 5 recites
means-plus-function elements, which impart a meaningful limitation or add
significantly more to the abstract idea itself. See Reply Br. 9-10.
We are not persuaded by Appellants' arguments. As a threshold
matter, the cited decision of Chicago Mercantile Exchange was not
designated precedential by the Patent Trial and Appeal Board, and, thus, is
not binding on this panel. Further, the panel in Chicago Mercantile
Exchange did not hold that a means-plus-function claim element per se adds
something significantly more to the claim than an abstract idea itself.
Instead, the panel merely held that the petitioner failed to adequately address
a means-plus-function element of a claim, and thus, failed to establish that it
was more likely than not that the claim was directed to patent-ineligible
subject matter under§ 101. See Chicago Mercantile Exchange at 37-38.
In the present appeal, Appellants provide no arguments or evidence that
Appellants' Specification discloses an algorithm or any other type of
structure that adds something significantly more to the claim than the
abstract idea itself. Thus, the Examiner did not err in concluding that
claim 35 is also directed to patent-ineligible subject matter.
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In light of the above, we sustain the rejection of claims 1-36 under
35 U.S.C. § 101.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-36 under
35 U.S.C. § 101.
(2) Claims 1-36 are not patentable.
DECISION
We affirm the Examiner's rejections of claims 1-36 under
35 U.S.C. § 101.
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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