Ex Parte Lutnick et alDownload PDFPatent Trial and Appeal BoardJan 26, 201712239804 (P.T.A.B. Jan. 26, 2017) Copy Citation 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. 2 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). 3 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. 4 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 5 Copy with citationCopy as parenthetical citation