Ex Parte Lutnick et al

Patent Trial and Appeal BoardAug 15, 2017

12239804 (P.T.A.B. Aug. 15, 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. 12/239,804 09/28/2008 Howard W. Lutnick 08-2248 4162 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 08/17/2017 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 FISHKIND, BRIAN L. GAY, KEVIN FOLEY, MARK MILLER, and CHARLES PLOTT Appeal 2017-001798 Application 12/239,804 Technology Center 3600 Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and CYNTHIA L. MURPHY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is a decision on rehearing in Appeal Number 2017-001798. We have jurisdiction under 35 U.S.C. § 6(b). Requests for Rehearing are limited to matters misapprehended or overlooked by the Board in rendering the original decision, or to responses to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R. § 41.52. Appellants may also present a new argument based upon a recent relevant decision of either the Board or a federal court. 37 C.F.R. § 41.52(a)(2). Appeal 2017-001798 Application 12/239,804 ANALYSIS The Appellants argue that the Decision mailed January 30, 2017 has five points that were misapprehended or overlooked. The Appellants argue: 1) that the final rejection failed to make a prima facie showing of abstractness, 2) that the Decision made a new grounds of rejection in articulating the alleged abstract idea and fails to make a prima facie case, 3) that the claims are not directed to an abstract idea, 4) that there is no prima facie case for showing the claims “do not add significantly more” than the abstract idea, 5) that the claims do add “significantly more” than an abstract idea, and 6) that the dependent claims were not addressed (Req. 2—18). We have considered but are not persuaded by these arguments. With regard to the first argument, the Examiner’s Answer mailed September 14, 2016 has been reviewed and considered to have set out a prima facie case with regard to the issue of the claims being directed to an abstract idea (Ans. 2-4, 8—12). The Examiner considered the claims in light of Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) and set forth a prima facie case that claims are directed to a fundamental economic practice and method of organizing human activities, i.e., to an abstract idea (Ans. 3). The Examiner also considered other relevant cases in the analysis under 35 U. S. C. §101 (Ans. 8—12). The Appellants argue that the Examiner did not consider the Federal Circuit decision in Trading Technologies Inc. v. CQG, Inc. 675 Fed Appx. 1001 (Fed. Cir. 2017).1 The cited case was decided on January 18, 2017, which was after both the 1 The Appellants cite ‘Trading Tech v. CQG’ without a full legal cite in the Request. The case is assumed to be the one we reference by citation here. 2 Appeal 2017-001798 Application 12/239,804 Answer and Reply Brief were filed, and was designated as non-precedential. Regardless, the consideration of that case does not change the prima facie case established to show that the specific claims in this particular case at hand are directed to an abstract idea. The Appellants secondly argue that the Decision makes a new ground of rejection in stating that the claims are directed to the abstract idea of “executing a trade using multiple marketplaces” and further that a prima facie case was not established (Req. 5, 6). The Answer determined that the claimed “execution of the first or second trade” was a “fundamental economic practice” and, therefore, an abstract idea (Ans. 3). Here, the Decision also determined and affirmed the claim to be directed to a “fundamental economic practice” and an abstract idea (Dec. 4). Although the Decision uses slightly different language in stating that the claim’s abstract nature is directed to “executing a trade using multiple marketplaces,” this additional description of the claim does not change the thrust of the rejection to that of being a new ground of rejection. Note that the claim uses the different marketplaces in relation to the execution of the first or second trades. Abstract ideas can be characterized at different levels of abstraction. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (“An abstract idea can generally be described at different levels of abstraction.”). The Appellants again reference the non-precedential case, Trading Technologies here, but regardless as noted above the consideration of that case in the analysis does not change the prima facie case established to show that the specific claims in this particular case at hand are directed to an abstract idea. Although the Appellants argue that parallel cases were not considered as noted above, the Final Rejection took both Alice and other 3 Appeal 2017-001798 Application 12/239,804 decisions into account (Ans. 2—12). Regardless, in Chicago Board of Options Exchange v. International Securities Exchange, 640 Fed. Appx 986 (Mem) (Fed. Cir. 2016), the Federal Circuit affirmed the determination in three similar cases (CBM2013-00049, CBM2013-00050, CBM2013-00051) involving trading technologies that were held to not meet the requirements of 35 U.S.C. § 101. The Appellants thirdly argue that the claims are not directed to an abstract idea as they provide “an improvement to computer functionality” and also “do not preempt an entire area” (Req. 6—10). We have considered but reject both these arguments. The claims do not claim sufficient subject matter to take it from being in the realm of what is encompassed as an abstract idea into patentable subject matter and fail to add significantly more to “transform” the nature of the claim. We note the point about pre-emption in the Request at page 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” (Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193 (2015) (“[Tjhatthe 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.”). The Appellants make a fourth argument that a prima facie case has not been established based on the failure to show that the claim limitations, both 4 Appeal 2017-001798 Application 12/239,804 individually and as an ordered combination, “do not add significantly more” than the abstract idea (Req. 10-12). We have considered but reject this argument as well. Here, we again determine that the Examiner’s determination in this regard was proper. Also, note that the Decision at page 4 states that we considered the elements of the claim both individually and as an ordered combination in the analysis. The Appellants make a fifth argument that the claims are directed to more than an abstract idea because they are rooted in “computer technology” (Req. 12—15). We disagree and instead determine that the claims are directed to an abstract idea as outlined and of record in the case. Here, the claims are rooted in basic trading practices that are used in financial markets, not computer technology. The Appellants make a sixth argument that the rejection of record and Decision ignore the dependent claims (Req. 15—18). This argument is not well-taken as the Appellants failed to specifically argue for any of dependent claims in the Appeal Brief filed in this case. Only those arguments actually made by Appellants were considered in the Decision. Arguments which Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(vii). Regardless, after a review of the dependent claims, we determine that these rejections are proper as well. For these reasons, the request for rehearing is denied. 5 Appeal 2017-001798 Application 12/239,804 CONCLUSION The Appellants’ request for reconsideration has not convinced us that we have overlooked or misapprehended issues in the previous analysis in light of the arguments presented. DECISION REHEARING DENIED 6