Ex Parte Lutnick et al

Patent Trial and Appeal Board

Jan 26, 2017

12237941 (P.T.A.B. Jan. 26, 2017)

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.
12/237,941 09/25/2008 Howard W. Lutnick 08-2233 1745
63710 7590
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
SHRESTHA, BIJENDRA K
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
01/30/2017 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
lkoro vich @ c antor. com
phowe @ cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD W. LUTNICK, DEAN P. ALDERUCCI,
ANDREW EISHKIND, BRIAN L. GAY, KEVIN FOLEY,
MARK MILLER, and CHARLES PLOTT
Appeal 2016-008171
Application 12/237,941
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 13—15, 17, 22, 24, 26—28, 32—36, and 38-44, which are
all the claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2016-008171
Application 12/237,941
THE INVENTION
The Appellants’ claimed invention is directed to a trading platform
and trading method (Spec. 185). Claim 13, reproduced below, is
representative of the subject matter on appeal.
13. A method of operating an electronic trading exchange
comprising:
receiving, by a processor of the electronic trading exchange, a
first order from a submitter, in which the first order defines a side for
trading in a first financial instrument;
determining, by the electronic trading exchange, that a
matching order to the first order is stored in an order management
system of a buy-side participant of the electronic trading
exchange and that an offer to enter into a trade that fulfills at least a
portion of each of the first order and the matching order is accepted, in
which the matching order defines an opposite side for trading in a
second financial instrument, in which the first financial instrument is
substituted for the second financial instrument, and in which the order
management system stores trading interests of the buy-side participant
that make up a dark pool of liquidity;
receiving, by the electronic trading exchange, an acceptance of
the at least the portion of the first order from the buy-side participant;
and in response to receiving the acceptance, facilitating, by the
electronic trading exchange, execution of the trade fulfilling at least
the portion of each of the first order and the matching
order;
in which the second financial instrument includes a financial
instrument with at least one similar characteristic to the first financial
instrument;
in which the order management system identifies whether a
financial instrument is substituted for another financial instrument;
and in which a quantity of the first financial instrument to be traded in
the trade is based on at least one of an exchange rate determined by
the order management system between the first financial instrument
and the second financial instrument, and an exchange rate determined
from
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Application 12/237,941
a market price of the first financial instrument compared to a
market price of the second financial instrument.
THE REJECTIONS
The following rejections are before us for review:1
Claims 13—15, 17, 22, 24, 26—28, 32—36, and 38-44 are rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2
ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the rejection fails to show that the claim is directed to an abstract idea (App.
Br. 6, 7, Reply Br. 2, 3). The Appellants also argue that even taking the
claim to be directed to an abstract idea, that the limitations of the claim “add
significantly more” to any abstract idea, and that the claim is rooted in
technology (App. Br. 7—9, Reply Br. 4—6).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 2—13).
1A double patenting rejection was made in the Final Rejection at page 2
which involved Serial Numbers 12/239,803 and 12/015,990 (see preceding
Non-Final Action). As Serial Number 12/239,803 is still co-pending, we
will not address this rejection as it would be premature. The Appellants
have presented no arguments in this regard in the Appeal Brief.
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2016-008171
Application 12/237,941
We agree with the Examiner.
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 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
BankInt7, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 13 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., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first 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,” i.e., an element or combination
of elements 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 determine that the claim is directed to the concept of a
trading exchange that receives and matches orders and substitutes financial
instruments. This is a fundamental economic practice long prevalent in our
system of commerce, and is an abstract idea beyond the scope of § 101.
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Application 12/237,941
We next consider whether additional elements 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 using generic computer components. We conclude that it does
not. Here, the trading exchange can be performed using conventional
computer components.
The Appellants have also argued that the claims are rooted in
computer technology to overcome a problem arising in computer networks
(App. Br. 8, 9, Reply Br. 5, 6). We disagree with this contention. Here, the
claims are rooted in trading and matching orders and substituting financial
instruments in an economic process that can be implemented using only a
generic computer system performing generic functions.
For these reasons the rejection of claim 13 is sustained. The
Appellants have provided the same arguments for the remaining claims and
the rejection of these claims is accordingly sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims 13—15, 17, 22, 24, 26—28, 32—36, and 38-44 under
35U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 13—15, 17, 22, 24, 26—28, 32—36,
and 38—44 is sustained.
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Appeal 2016-008171
Application 12/237,941
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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