Ex Parte Colaio

Patent Trial and Appeal Board

Sep 25, 2018

13584437 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/584,437 08/13/2012
63710 7590 09/27/2018
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
MarkColaio
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.
Ol-1036-C3 9096
EXAMINER
PANDYA, SUNIT
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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 STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNE COLAIO and HOW ARD W. LUTNICK
Appeal2016-008483 1
Application 13/584,4372
Technology Center 3600
Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
TARA L. HUTCHINGS, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 35--45, 47-50, 52, 54, and 55 which constitute all the
claims pending in this application. Claims 46, 51, 53, and 56 have been
canceled. Appeal Br. 2. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b). An oral hearing was held on July 12, 2018.
We AFFIRM.
1 Our Decision refers to the Appellants' Appeal Brief filed Nov. 18, 2015
("Appeal Br.") and Reply Brief filed July 18, 2016 ("Reply Br."), and the
Examiner's Final Office Action mailed Feb. 23, 2015 ("Final Act.") and
Answer mailed May 17, 2016 ("Ans.").
2 According to Appellants, Cantor Fitzgerald, L.P. is the real party in
interest. (Appeal Br. 2).
Appeal2016-008483
Application 13/584,437
Introduction
Appellants' application "relates to a method and system for training
traders" "that enables students to trade simulated financial products -- i.e.,
financial products that have no intrinsic value and, therefore, that have no
real-world financial risk -- within the simulated market." (Spec. ,r,r 1, 6).
Claims 35 and 36, the independent claims on appeal, are reproduced
below:
35. A method comprising:
simulating, by at least one processor, a trading
market;
providing, by the at least one processor, a fixed
income product to be traded within the market;
assigning an amount of the fixed income product to a
first broker;
assigning an amount of simulated funds to a second
broker; and
providing, by the at least one processor, a medium
within the market to trade the fixed income product for an
amount of simulated funds determined by the first broker
and the second broker.
3 6. An apparatus comprising:
a processor; and
a memory having instructions stored thereon which,
when executed by the processor,
direct the at least one processor to:
cause a graphical user interface (GUI) to be displayed
to a first trader;
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Application 13/584,437
receive an indication to sell a simulated fixed income
product from a first trader;
receive an indication to buy the simulated fixed
income product from a second trader; and
coordinate the indications from the first and second
traders to exchange the simulated fixed income product,
wherein the act of exchanging the simulated fixed income
product comprises processing a transaction based on the
received indication to sell and the received indication to
buy.
Appeal Br. 16, Claims App.
Rejection on Appeal
The Examiner maintains, and Appellants appeal, the following
rejection:
Claims 35--45, 47-50, 52, 54, and 55 under 35 U.S.C. § 101 as
being directed to ineligible subject matter.
ANALYSIS
Claim 35
The Court in Alice emphasized the use of a two-step framework for
analysis ofpatentability under 35 U.S.C. § 101:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
"[ w ]hat else is there in the claims before us?" To answer that
question, we consider the elements of each 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.
See Alice Corp. Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72
(2012)).
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Application 13/584,437
The Examiner determines that claim 3 5 is directed to a method of
simulating a trading market providing a fixed income product to be traded in
the market utilizing brokers who are selling the fixed income product to
another broker who is buying the fixed income product using simulated
funds, and that this is a fundamental economic practice which is an abstract
idea. See Final Act. 6. The Examiner further determines that the physical
components including "at least one processor" considered individually and
as an ordered combination merely implement the abstract idea at a high level
of generality and fail to impose meaningful limitations to impart patent-
eligibility. Id. at 6-7.
Appellants argue that the Examiner does not provide tangible
evidence that "methods for creating a simulated market to trade fixed
income product" would constitute a fundamental economic principle or
abstract, and that the Examiner fails to compare the claims to the body of
case law. Appeal Br. 6-7, and 10. The Examiner compares the claimed
invention to a stock exchange such as the New York Stock Exchange
(NYSE), and relies on Bilski v. Kappas, 561 U.S. 593, 610 (2010) and
Ultramercial, Inc. v. Hulu, Inc., 772 F.3d 709 (Fed. Cir. 2014) for the
understanding that using general purpose software and generic computer
equipment to implement a market is abstract does not provide significantly
more than a fundamental economic practice. See Ans. 8-9, and 11. We
agree with the Examiner that the claimed invention resembles those at issue
in Bilksi and Ultramercial.
For example, in Bilski, claim 1 was directed to "a series of steps
instructing how to hedge risk" with examples "how hedging can be used in
commodities and energy markets." Bilski, 561 U.S. 599, 612. That claim
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Application 13/584,437
recited the steps of "initiating a series of transactions between said
commodity provider and consumers of said commodity ... at a fixed rate
based upon historical averages"; "identifying market participants for said
commodity"; and "initiating a series of transactions between said commodity
provider and said market participants at a second fixed rate." Id. at 599.
The Court in Bilski understood the claims to be directed to the basic concept
of hedging which is a fundamental economic practice long prevalent in our
system of commerce and taught in any introductory finance class. Id. at
611-12. We agree with the Examiner that the claims at issue are directed to
steps for conducting financial transactions, and that this is a fundamental
economic practice, similar to the claims at issue in Bilski. Ultramercial is
also in accord. In that case, the claims were directed to steps for displaying
an advertisement in exchange for access to copyrighted media, i.e., as an
exchange or currency, and was determined to be abstract. See Ultramercial,
772 F.3d at 714--15.
The claim language, which is intrinsic evidence, refers to a "trading
market," which is a fundamental economic practice. The method steps
variously recite "simulating" and "providing" the market and "providing"
and "assigning" a fixed income product to be traded, which are part of the
same fundamental economic practice.
Appellants argue that the claims require significantly more than an
abstract idea and that the Examiner fails to identify any additional elements
and fails to explain why each additional element does not add significantly
more to the alleged abstract idea. Appeal Br. 6-8 ( citing "US PTO Interim
Eligibility Guidance on Alice published in the Federal Register on December
16, 2014 (the 'IEG')," § LB.I, and Alice Corp., 134 S. Ct. at 2355-56).
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Appellants assert that, similar to the claims in DDR Holdings, the present
claims solve a problem rooted in computer technology to improve the
functionality of electronic trading by enabling simulated trading. Appeal
Br. 10-11 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014)). We are unpersuaded by Appellants' arguments. The
Examiner determines that the "processor" of claim 3 5 is claimed at a high
level of generality. Final Act. 6-7. Further, the Examiner determines that
claim 3 5 implements a market using general purpose software of the type
determined to be abstract in Bilski and Ultramercial. Ans. 10-11. The
Examiner determines that the claims at issue for simulating a fixed income
trading market do not resemble those at issue in DDR Holdings, in which a
business method involved the "look and feel" of a website. Id. at 11. We
agree. The claimed invention is the type of computer processing, applying
rules and algorithms, which was held to be abstract in Bilski and
Ultramercial. See, e.g., Spec. ,r 28 & Fig. 4 (and item 402), Fig. 6. See also
Bancorp Services v. Sun Life, 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("The
computer required by some of Bancorp' s claims is employed only for its
most basic function, the performance of repetitive calculations, and as such
does not impose meaningful limits on the scope of those claims."); Alice
Corp., 134 S. Ct. at 2352-53 (creating, updating, and reconciling shadow
records); Versata Development Group, Inc. v. SAP Am., Inc., 793 F.3d 1306,
1334 (Fed. Cir. 2015) (storing and retrieving price information); SAP
America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (use
of computers to perform mathematical calculations is "well-understood,
routine, [and] conventional").
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Application 13/584,437
Appellants argue that the claimed invention does not "tie up" the
alleged abstract idea or pre-empt others from using the alleged abstract idea.
Appeal Br. 9-10. However, a showing of pre-emption is not required for a
determination that an idea is directed to non-patentable subject matter.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) ("Where a patent's claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.").
Appellants further point to the following limitations of claim 35 for
additional subject matter:
simulating, by at least one processor, a trading market;
providing, by the at least one processor, a fixed income
product to be traded within the market;
assigning an amount of the fixed income product to a
first broker;
assigning an amount of simulated funds to a second
broker; and
providing, by the at least one processor, a medium within
the market to trade the fixed income product for an
amount of simulated funds determined by the first broker
and the second broker[.]
Appeal Br. 12-13. However, Appellants do not provide specific arguments
thereto, or explain why these limitations claim significantly more than a
fundamental economic practice. See 37 C.F.R. § 4I.37(c)(l)(iv) ("A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim."). In any
event, we are not persuaded that the aforementioned claim limitations
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provide significantly more than the use of a computer to trade funds based
on rules.
We, therefore, sustain the Examiner's rejection under 35 U.S.C. § 101
of independent claim 3 5.
Claims 36--45, 47-50, 52, 54, and 55
Appellants argue that the Examiner does not separately analyze the
remaining claims, but Appellants themselves do not provide specific
arguments with respect to the claims, except to reproduce the limitations of
claim 3 6 without providing argument explaining the significance thereof.
See Appeal Br. 11-12, and 14--15. With respect to claim 36, Appellants
reproduce the following claim limitations:
cause a graphical user interface (GUI) to be displayed to
a first trader;
receive an indication to sell a simulated fixed income
product from a first trader;
receive an indication to buy the simulated fixed income
product from a second trader; and
coordinate the indications from the first and second
traders to exchange the simulated fixed income product,
wherein the act of exchanging the simulated fixed
income product comprises processing a transaction
based on the received indication to sell and the received
indication to buy.
Appeal Br. 16, Claims App. As above, a statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim. 37 C.F.R. § 4I.37(c)(l)(iv). Claim 36 refers to a
graphical user interface, but the claims and Specification indicate that the
claimed invention relates to the trading of funds and not to an improvement
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in the technology of a graphical user interface. Rather, the database merely
collects information, as in Electric Power Group. See Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) ("The focus of the
asserted claims, as illustrated by claim 12 quoted above, is on collecting
information, analyzing it, and displaying certain results of the collection and
analysis.").
We, therefore, sustain the Examiner's rejection under 35 U.S.C. § 101
of claims 36-45, 47-50, 52, 54, and 55, for similar reasons as for
independent claim 3 5.
DECISION
The Examiner's decision to reject claims 35--45, 47-50, 52, 54, and
55 under 35 U.S.C. § 101 is affirmed.
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)(l )(iv).
AFFIRMED
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