Ex Parte Mackay

Patent Trial and Appeal BoardJan 31, 2017

12769049 (P.T.A.B. Jan. 31, 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. 12/769,049 04/28/2010 ANTHONY MACKAY 20044.0004 6817 104043 7590 02/02/2017 Tarter Krinsky & Drogin LLP 1350 Broadway New York, NY 10018 EXAMINER CAMPEN, KELLY SCAGGS ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 02/02/2017 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): patentdocket@tarterkrinsky.com sformicola@tarterkrinsky.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTHONY MACKAY Appeal 2014-009963 Application 12/769,0491 Technology Center 3600 Before HUBERT C. LORIN, ANTON W. FETTING, and BIBHU R. MOHANTY, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL An oral hearing was held on Jan. 26, 2017. STATEMENT OF THE CASE Anthony Mackay (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 31—35. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We REVERSE. 1 The Appellants identifies Instinet Europe Limited as the real party in interest. App. Br. 3. Appeal 2014-009963 Application 12/769,049 THE INVENTION Claim 31, reproduced below, is illustrative of the subject matter on appeal. 31. An anonymous block trade matching system, comprising: a server configured to receive order data for an order of a security by a first user; a core database having stored therein said order data; an alert generator configured to use said order data to transmit to at least a second user an alert anonymously describing said order; and a two-way messaging interface that enables said second user to initiate a negotiation communication between said first user and said second user, said two-way messaging interface restricting said communication from at least one of said first user and said second user to a finite set of phrases. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Srivastava US 2004/0111356 A1 Jun. 10,2004 Huang US 2008/0015965 A1 Jan. 17,2008 The following rejections are before us for review: 1. Claims 31—35 are rejected under 35U.S.C. §101 as being directed to non-statutory subject matter. 2. Claims 31—35 are rejected under 35 U.S.C. §103(a) as being unpatentable over Srivastava and Huang. 2 Appeal 2014-009963 Application 12/769,049 ISSUES Did the Examiner err in rejecting claims 31—35 under 35U.S.C. §101 as being directed to non-statutory subject matter? Did the Examiner err in rejecting claims 31—35 under 35 U.S.C. §103 (a) as being unpatentable over Srivastava and Huang? ANALYSIS The rejection of claims 31—35 under 35 U.S.C. §101 as being directed to non-statutory subject matter. Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under § 101. Step two is “a search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice, 134 S. Ct. at 2355 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). In keeping with the second step of Alice, the Examiner states that The claims do not include limitations that are "significantly more" than the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Note that the limitations, in the instant claims, are done by the generically recited server and anonymous block trade matching system. The limitations are merely instructions to implement the abstract idea on a computer and 3 Appeal 2014-009963 Application 12/769,049 require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Ans. 3 (emphasis added). The Appellant emphasizes, inter alia, that “[c]laim 31 includes an anonymous block trade matching system which comprises a server, a core database, an alert generator and a two-way messaging interface.'1'’ Reply. Br. 4 (emphasis added). In light of the question of judicially-excepted patent-eligible subject matter being a question of law, we have taken a fresh look at the subject matter being claimed. Ultimately, we need to determine whether the claimed subject matter entails an unconventional technological solution to a technological problem. Cf. Amdocs (Israel) Limited v. Openet Telecom, Inc., No. 2015-1180, 2016 WL 6440387, *10 (Fed. Cir. Nov. 1, 2016): [Tjhis claim entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases). The solution requires arguably generic components, including network devices and “gatherers” which “gather” information. However, the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality. The enhancing limitation depends not only on the invention’s distributed architecture, but also depends upon the network devices and gatherers—even though these may be generic—working together in a distributed manner. The Specification explains that Instinet Systems and other matching engines which provide for block trading are limited in several respects. While they have provided a 4 Appeal 2014-009963 Application 12/769,049 means for continuous off- exchange crossing, they have not provided a sufficient capability to submit orders using market peg benchmarks or future price cross benchmarks via a web based terminal application. While such systems have provided a means for transmitting alerts to subscribers to advise them of potential trading opportunities, no means has existed for permitting the user to control which users or types of users will receive such alerts. Additionally, systems that provide for block trading have typically provided only limited means for negotiation between the parties, and such negotiations were only available to customers utilizing proprietary trading platforms on a proprietary data network. Spe. Para. 6. A solution is to include a two-way messaging interface. This is shown in Fig. 5 and discussed in detail in the associated disclosure at paras. 36-40 of the Spec. The solution is a technological one and one that is reflected in the claims. The claimed combination of a server, a database, an alert generator, and a two-way messaging interface that enables said second user to initiate a negotiation communication between said first user and said second user, said two-way messaging interface restricting said communication from at least one of said first user and said second user to a finite set of phrases work together so as to “faciltat[e] block trade securities transactions.” Spec. para 2. We do not find that said claimed combination is simply a “generically recited server and anonymous block trade matching system” as the Examiner has described it. Rather, it provides a solution rooted in technology specifically arising in the realm of the systems in use at the time the application was filed. Cf DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (“[T]he claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”) 5 Appeal 2014-009963 Application 12/769,049 When considering the elements of the claim “both individually and ‘as an ordered combination’ [we] determine [that] the additional elements ‘transform the nature of the claim’ into a patent-eligible application,” Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., 132 S.Ct. at 1297-98). Accordingly, the record better supports finding the claimed subject matter is not judicillay-excepted from patent-eligibility. For that reason, the rejection is not sustained. The rejection of claims 31-35 under 35 U.S.C. §103 (a) as being unpatentable over Srivastava and Huang. Sole independent claim 1 requires “an alert generator configured to use said order data to transmit to at least a second user an alert anonymously describing said order.” The Examiner found said alert generator disclosed in both Srivastava and Huang. Non-final act. 4. Regarding Srivastava, the Examiner found said alert generator disclosed at para. 7. Non-final act. 4. Para. 7 is reproduced below: [0007] As mentioned above, existing financial institutions do have e- commerce solutions, or websites, where investors, for example, can place an RFQ (request for a quote) on almost any amount. Yet, none offer the ability to execute FX transactions in a manner guaranteed to avoid any impact in the market and in a way designed to ensure that market participants do not know that a transaction has occurred. We do not see there the alert generator as claimed. Regarding Huang, the Examiner found said alert generator disclosed at Fig. 1 and para. 53. Non-final act. 4. Para. 53 states: “The alert generating engine 103 also provides an alert to the first subscriber when there is a contra-side interest.” Fig. 1 depicts an oval marked as “103” and 6 Appeal 2014-009963 Application 12/769,049 inside it are the words “Alert Generating Engine.” We do not see in this disclosure “an alert generator configured to use said order data to transmit to at least a second user an alert anonymously describing said order” as claimed. A preponderance of the evidence does not support the finding that the claimed alert generator is disclosed in the cited prior art. Accordingly, a prima facie case of obviousness has not been made out in the first instance. As a result the rejection is not sustained. CONCLUSIONS The rejection of claims 31—35 under 35 U.S.C. §101 as being directed to non-statutory subject matter is reversed. The rejection of claims 31—35 under 35 U.S.C. § 103(a) as being unpatentable over Srivastava and Huang is reversed. DECISION The decision of the Examiner to reject claims 31-35 is reversed. REVERSED 7