Ex Parte Lutnick et al

Patent Trial and Appeal Board

Jul 23, 2018

14263112 (P.T.A.B. Jul. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/263,112 04/28/2014
63710 7590 07/25/2018
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Howard W. Lutnick
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.
08-2236-Cl 1323
EXAMINER
SHRESTHA, BIJENDRA K
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
07/25/2018 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 HOWARD W. LUTNICK, DEAN P. ALDERUCCI,
ANDREW FISHKIND, BRIAN L. GAY, KEVIN FOLEY,
MARK MILLER, and CHARLES PLOTT
Appeal2017-001735
Application 14/263, 112
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(a) of the
Examiner's Final Rejection of claims 1-20, 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.
Appeal2017-001735
Application 14/263, 112
THE INVENTION
The Appellants' claimed invention is directed to trading relating to
fund compositions (Spec., page 1, line 1). Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A method comprising:
receiving, by an electronic marketplace, an indication of a
composition of an investment fund, in which the composition
includes a plurality of financial instruments that the fund targets
for ownership and respective percentages of the composition that
the fund targets for ownership in each financial instrument;
receiving, by the marketplace, an indication of an order, in
which the order defines a side of a trade for a financial
instrument;
determining, by the marketplace, that the financial
instrument is part of the composition of the fund based on the
received indication of the composition;
determining, by the marketplace, a change in price of the
financial instrument that includes an increase or decrease in the
price of the financial instrument;
based on the determination of the change in price of the
financial instrument and the determination that the financial
instrument is part of the composition of the fund, transmitting,
by the marketplace to an electronic device of the fund, a query
asking if an offer to enter into a trade that fulfills at least a portion
of the order is accepted;
determining that the offer to enter into the trade is accepted
based on a matching order to the order being in an order
management system associated with the fund; and
facilitating an execution of the trade without a negotiation
about a price of the trade and a quantity of financial instruments
in response to the determination that the offer is accepted.
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Application 14/263, 112
THE REJECTION
The following rejection is before us for review:
Claims 1-20 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 1.
ANALYSIS
Re} ection under 3 5 US. C. § 101
The Appellants argue that the rejection of claim 1 is improper because
have not been shown to be an abstract idea (App. Br. 6, 7, Reply Br. 2--4).
The Appellants also argue that the claim is "significantly more" than the
abstract idea and instead rooted in computer technology (App. Br. 7-10,
Reply Br. 4--6).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 4--6, Ans. 2-16).
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,
1 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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Appeal2017-001735
Application 14/263, 112
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bankint'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., 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" 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
performing a financial trade by matching orders. This is a fundamental
economic practice long prevalent in our system of commerce, and is an
abstract idea beyond the scope of§ 101.
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 using generic computer components. We conclude that it does
not. The Specification at pages 11-14 describes the claimed invention using
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Appeal2017-001735
Application 14/263, 112
generic computer components for their known functions in a conventional
manner.
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.
For these reasons the rejection of claim 1 is sustained. The Appellants
have provided the same arguments for dependent claims 2-19, which are
drawn to the same subject matter, and the rejection of these claims is
sustained as well.
We reach the same conclusion as to independent apparatus claim 20
and its dependent claims. 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,
132 S. Ct. at 1294).
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-20 under 35 U.S.C. § 101.
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Appeal2017-001735
Application 14/263, 112
DECISION
The Examiner's rejection of claims 1-20 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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