Ex Parte Lutnick et al

Patent Trial and Appeal Board

Jan 26, 2017

12239804 (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.
12/239,804 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
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 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 APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—15, 59, and 61, 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 2017-001798
Application 12/239,804
THE INVENTION
The Appellants’ claimed invention is directed to a trading method
(Spec. 114). Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. An apparatus comprising:
a processor of a first marketplace configured to execute a
plurality of instructions stored on a machine readable medium; and
the machine readable medium having stored thereon a plurality
of instructions that, when executed by the processor, cause the
processor to:
receive respective indications of a plurality of orders;
store information about the orders in an order book of the
first marketplace;
transmit an indication of a first order of the plurality of
orders to a second marketplace, in which the first order
defines a side of a trade for a financial instrument;
receive, from the second marketplace, an indication of an
acceptance of an offer to enter into a first trade that
fulfills at least part of the first order;
if the acceptance is identified before a matching order to
the first order is identified by the first marketplace,
execute the first trade; and
if the matching order to the first order is identified by the
first marketplace before the acceptance is identified,
execute a second trade that fulfills at least part of the
matching order and the first order.
THE REJECTION
The following rejection is before us for review:
Claims 1—15, 59, and 61 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
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Appeal 2017-001798
Application 12/239,804
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
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. 4—7; Reply Br. 2 4). 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—7).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 2—17).
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: “[ljaws 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
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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Appeal 2017-001798
Application 12/239,804
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
executing a trade using multiple marketplaces. This is a fundamental
economic practice of trading long prevalent in our system of commerce, and
is an abstract idea beyond the scope of § 101.
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 computer components used are conventional and generic.
The Appellants have also argued that the claims are rooted in
computer technology to overcome a problem arising from computer
networks (App. Br. 8, 9; Reply Br. 6, 7). We have considered but disagree
with this contention. Here, the claim is rooted in the concept of executing a
trade using multiple marketplaces and that does not require more than a
generic computer system.
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Appeal 2017-001798
Application 12/239,804
For these reasons the above rejection of claim 1 is sustained. The
Appellants have provided the same arguments for the remaining claims and
accordingly, the rejection of these claims is sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims 1—15, 59, and 61 under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1—15, 59, and 61 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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