Ex Parte Annunziata

Patent Trials and Appeals BoardMar 15, 2019

13875723 - (D) (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/875,723 05/02/2013 35811 7590 03/19/2019 IP GROUP OF DLA PIPER LLP (US) ONE LIBERTY PLACE 1650 MARKET ST, SUITE 4900 PHILADELPHIA, PA 19103 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Vincent P. Annunziata 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. TC0-10-1367DIV 3572 EXAMINER WEISBERGER, RICHARD C ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 03/19/2019 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): pto. phil@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VINCENT P. ANNUNZIATA Appeal2018-002884 Application 13/875,723 Technology Center 3600 Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH and JAMES B. ARPIN, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 is appealing the final rejection of claims 1-20 under 35 U.S.C. Â§ 134(a). Appeal Brief 1. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. Introduction The invention is directed to "a system for trading commodities and the like over the Internet." Specification ,r 1. 1 Appellant identifies TRADECAPTURE OTC CORP. as the real party in interest. Appeal Brief 1. Appeal2018-002884 Application 13/875,723 Illustrative Claim 1. A system for efficient data retrieval comprising: a computer; a communications link between said computer and the Internet; an indication database, accessible by said computer, containing a plurality of indications associated with one or more submitters, said plurality of indications containing information corresponding to open bids or offers for commodities; a user database, accessible by said computer, containing a plurality of user files, wherein at least one user file among said plurality of user files is associated with at least one submitter among the one or more submitters, said at least one user file containing a plurality of transaction parameters corresponding to one or more indications among the plurality of indications associated with said at least one submitter, said transaction parameters governing presentation of said one or more indications to other users and acceptance of said one or more indications by said other users; software executing on said computer that causes the computer to: receive an indication selection by at least one of the other users over said communication link, search the indication database and retrieve an indication corresponding to said indication selection, identify the at least one submitter associated with the retrieved indication, search the user database for the at least one user file associated with the at least one submitter and retrieve at least one transaction parameter associated with the retrieved indication from said at least one user file, and process the retrieved indication corresponding to said indication selection for the at least one of the other users in accordance with the at least one transaction parameter retrieved from the at least one user file. 2 Appeal2018-002884 Application 13/875,723 Rejection on Appeal Claims 1-20 stand rejected under 35 U.S.C. Â§ 101 because the claimed invention is directed to non-statutory subject matter. Final Action 2-5. ANALYSIS Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief ( filed August 1, 2017), the Reply Brief ( filed January 18, 2018), the Final Action (mailed March 9, 2017) and the Answer (mailed November 30, 2017), for the respective details. 35 U.S.C. Â§ 101 rejection The Examiner determines the claims are patent ineligible under 35 U.S.C. Â§ 101 because the claims are directed to an abstract idea comprising a fundamental economic practice or organizing human activity, and do not include additional elements that are sufficient to amount to significantly more than the abstract idea. Final Action 2; see Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (describing the two- step framework "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts"). After the mailing of the Answer and the filing of the Briefs in this case, the US PTO published revised guidance on the application ofÂ§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the Office first looks to whether the claim recites: 3 Appeal2018-002884 Application 13/875,723 ( 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); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP Â§ 2106.0S(a}-(c), (e}-(h) (9th ed. 2018). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office 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 Â§ 2106.0S(d)); or (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 Memorandum. We are not persuaded the Examiner's rejection is in error. We adopt the Examiner's findings and conclusions as our own, and we add the following primarily for emphasis and clarification with respect to the Memorandum. Appellant argues the pending claims are not directed to an abstract idea because: [T]he Examiner alleges that Appellant's claim "recites a method trading physical and derivative commodities electronically." However, this initial characterization of Appellant's claims is completely incorrect. Instead, Claim 1 is directed to a "system/or efficient data retrieval." The fact that Appellant's claim may be related to ( or implemented in the field of) electronic trading does not make the claim any less directed to a system for efficient data retrieval. Appeal Brief 10. 4 Appeal2018-002884 Application 13/875,723 We agree with the Examiner's determination that the claims are directed to an abstract idea. See Final Action 3--4. The Abstract discloses that the invention is: A system for trading commodities and the like comprising a computer, a communications link between the computer and the Internet, a database, accessible by the computer, containing a plurality of user files wherein each of the user files contains a plurality of transaction parameters corresponding to one or more indications associated with the user file. The Specification discloses: Accordingly, it is an object of the invention to provide a system for facilitating commodity transactions. Another object of the present invention is to provide a system that permits the user to control how any bids or ofÂ±ers submitted are acted upon and viewed by other users. Yet another object of the present invention is to provide such a system that pennits users to operate within specific exchanges having specific commodities. It is a further object of the present invention to provide such a system that enables various exchanges to create and share commodities within a unified database. It is another object of the present invention to provide such a system that permits the user to rapidly peruse a variety of available transactions. It is yet another object of the present invention to provide such a system that operates over the Internet Specification ,r,r 6-11. Claim 1 recites "an indication database, accessible by said computer, containing a plurality of indications associated with one or more submitters, said plurality of indications containing information corresponding to open bids or offers for commodities," "at least one user file containing a plurality 5 Appeal2018-002884 Application 13/875,723 of transaction parameters corresponding to one or more indications among the plurality of indications associated with said at least one submitter," and wherein the software executes on the computer, a process upon "the retrieved indication corresponding to said indication selection for the at least one of the other users in accordance with the at least one transaction parameter retrieved from the at least one user file." These steps comprise fundamental economic principles or practices and/or commercial or legal interactions; thus, the claim recites the abstract idea of "certain methods of organizing human activity." Memorandum, Section I (Groupings of Abstract Ideas); see Specification ,r 13. Our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter. See Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk .... "); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (claims directed to abstract idea of processing loan information through a clearinghouse); Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (claims reciting "generalized software components arranged to implement an abstract concept [of generating insurance-policy-related tasks based on rules to be completed upon the occurrence of an event] on a computer" not patent eligible). Appellant argues: Similar to the claims in Enfzsh, the Appellant's claims are patent-eligible under Â§ 101 at least because the claims are also directed to a specific improvement to the way computers in this art operate, embodied in an architecture and search functionality for the efficient retrieval of data. For example, the claims define two dedicated and independent databases, each specifically 6 Appeal2018-002884 Application 13/875,723 purposed for storing and retrieving different types of information. Of note, conventional systems in this art do not segregate the data in this manner, nor do they implement separate dedicated databases, as claimed. Appeal Brief 5. We do not find Appellant's arguments persuasive because the claims utilize a computer system as merely a tool to create and share commodities. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016) ("[W]e find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea ... the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool."). The claims do not recite an additional element or elements that reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field. See Final Action 5 ("The combination of elements is no more than the sum of their parts, and provides nothing more than mere automation of verification steps. Mere automation of an economic business practice does not provide significantly more (i.e., provide an inventive concept.")); Alice, 573 U.S. at 222 ("In holding that the process was patent ineligible, we rejected the argument that 'implement[ing] a principle in some specific fashion' will 'automatically fal[l] within the patentable subject matter ofÂ§ 101."' (alterations in original) (quoting Parker v. Flook, 437 U.S. 584, 593 (1978))). Accordingly, we determine the claim does not integrate the judicial exception into a practical application. See Memorandum, Section III(A)(2) 7 Appeal2018-002884 Application 13/875,723 (Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application). Nor do we find the claim includes a specific limitation or a combination of elements that amounts to significantly more than the judicial exception itself. See Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept); see also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (Moore, J., concurring) ("the 'inventive concept' cannot be the abstract idea itself'); see Answer 5-7; see also Specification ,r,r 5, 13 and 49. Other than the abstract idea itself, the remaining claim elements only recite generic computer components that are well-understood, routine, and conventional. See Final Action 5---6; Specification ,r,r 13, 25 and 27; Alice, 573 U.S. at 226. Accordingly, we agree with the Examiner's determination that claims 1-20 are patent ineligible. See Final Action 4--5. DECISION The Examiner's non-statutory subject matter rejection of claims 1-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l ). See 37 C.F.R. Â§ 1.136(a)(l )(v). AFFIRMED 8