Ex Parte CLAUS et al

Patent Trial and Appeal BoardApr 3, 2018

13180010 (P.T.A.B. Apr. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/180,010 07 /11/2011 63710 7590 04/05/2018 INNOVATION DIVISION CANTOR FITZGERALD, L.P. 110 EAST 59TH STREET (6TH FLOOR) NEW YORK, NY 10022 FIRST NAMED INVENTOR MATTHEW W. CLAUS 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. 06-6261-Cl 1625 EXAMINER TRAN, HAI ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 04/05/2018 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): patentdocketing@cantor.com lkorovich@cantor.com phowe@cantor.com PTOL-90A (Rev. 04/07) UNITED ST ATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW W. CLAUS, JAMES R. DRISCOLL, and JAMES C. JOHNSON Appeal2016-006146 1 Application 13/180,010 Technology Center 3600 Before: HUBERT C. LORIN, BIBHU R. MOHANTY, and NINA L. MEDLOCK, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seekourreviewunder35 U.S.C. Â§ 134ofthe final rejection of claims 1-18, 20-23, 25, 26, 28, and43-50, which are all the claims pending in the application. We have jurisdiction under35 U.S.C. Â§ 6(b ). Oral arguments were presented on March 29, 2018 by telephone. SUMMARY OF THE DECISION We AFFIRM. 1 Appellants identify BGC Partners, Inc., as the real party in interest. App. Br. 2. Appeal2016-006146 Application 13/180,010 THE INVENTION The Appellants' claimed invention is directed to optimizing the execution of trading orders (Spec., para. 1). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for processing trading orders, comprising: receiving, by at least one processor, a first trading order; receiving, by the at least one processor, a second trading order after receiving the first trading order; receiving, by the at least one processor, market data associated with at least one market center; and based at least in part on the received market data: causing, by the at least one processor, the second trading order to be transmitted to the at least one market center; and after causing the second trading order to be transmitted to the at least one market center, causing, by the at least one processor, the first trading order to be transmitted to the at least one market center. THE REJECTION The following rejection is before us for review:2 Claims 1-18, 20-23, 25, 26, 28, and 43-50 are rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. FINDINGS OFF ACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence. 3 2 In the Appeal Brief, Claims Appendix, claim 51 is listed as being cancelled (App. Br. 13, Claims App.). 3 See Ethicon, Inc. v. Quigg, 849F.2d1422, 1427 (Fed. Cir. 1988) (Explaining the general evidentiary standard for proceedings before the Patent Office.). 2 Appeal2016-006146 Application 13/180,010 ANALYSIS Rejection under 35 U.S. C. Â§ 101 The Appellants argue that the rejection of clam 1 is improper because the claim: has not been shown in the rejection to be directed to an abstract idea and is not an abstract idea; has not been shown in the rejection to not add "significantly more" to the alleged abstract idea and in contrast "adds significantly more"; does not preempt the alleged abstract idea; and is "rooted in computer technology" (App. Br. 6-10). In contrast, the Examiner has determined that the rejection is proper (Final Rej. 3---6, Ans. 3-16). We agree with the Examiner. Under 35 U.S.C. Â§ 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter" (35 U.S.C. Â§ 101). The Supreme Court, however, has long interpreted Â§ 101 to include an implicit exception: "laws of nature, natural phenomena, and abstract ideas" are not patentable (see, e.g., Alice Corp. Pty Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014)). In judging whether claim 1 falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court's two- step framework, described in Mayo and Alice (id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 76-77 (2012))). In accordance with that framework, we frrst determine whether the claim is "directed to" a patent-ineligible abstract idea. If so, we then consider the elements of the claim both individually and as "an ordered combination" to determine whether the additional elements "transform the nature of the claim" into a patent-eligible application of the abstract idea (id.). This is a search for an "inventive concept" an element or combination of elements 3 Appeal2016-006146 Application 13/180,010 sufficient to ensure that the claim amounts to "significantly more" than the abstract idea itself (id.). The Court also stated that "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention" (id. at 2358). Here, we find that the claim is directed to the concept of receiving and transmitting trading orders. This is a fundamental economic practice long prevalent in our system of commerce, and is an abstract idea beyond the scope of Â§ 101. The Specification at paragraph 1 indicates the invention relates to electronic trading and the execution of trading orders, which is directed to trading and a fundamental economic practice. Although the Specification at paragraph 5 does disclose placing first and second orders in a certain sequence based on market data, this is a method of organization of human activities and is also abstract in nature. We next consider whether additional elements of the claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application of the abstract idea, e.g., whether the claim does more than simply instruct the practitioner to implement the abstract idea over the using generic computer components. We conclude that it does not. For example the Specification at paragraph 18 discloses using any wireless and/or wireless network, Internet architecture, or "plain old telephone system." The Specification at paragraph 30 discloses using standard memory RAM, ROM, and CD-ROM devices. Considering each of the claim elements in tum, the function performed by the computer system at each step of the process is purely conventional. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. 4 Appeal2016-006146 Application 13/180,010 We note the point about pre-emption (App. Br. 9). Although pre- emption "might tend to impede innovation more than it would tend to promote it, 'thereby thwarting the primary object of the patent laws"' (Alice, 134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012)), "the absence of complete preemption does not demonstrate patent eligibility." Ari osa Di agnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.")). For these above reasons the rejection of claim 1 is sustained. Independent claim 43 is directed to similar subject matter and the rejection of this claim is sustained as well. We reach the same conclusion as to independent system claim 15. Here, as in Alice, "the system claims are no different in substance from the method claims. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea" (Alice 134 S. Ct. at 2351 ). "[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 it' is not enough for patent eligibility" (id. at 2358 (quoting Mayo, 566 U.S. at 72)). The dependent claims are directed to similar subject matter and the rejection of these claims is sustained as well. 5 Appeal2016-006146 Application 13/180,010 CONCLUSIONS OF LAW We conclude that Appellants have not shown that the Examiner erred in rejecting claims 1-18, 20-23, 25, 26, 28, and43-50under 35 U.S.C. Â§ 101. DECISION The Examiner's rejection of claims 1-18, 20-23, 25, 26, 28, and 43- 50 is sustained. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136. AFFIRMED 6