Ex Parte Silverman et al

Patent Trial and Appeal Board

Mar 17, 2017

11124816 (P.T.A.B. Mar. 17, 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.
11/124,816 05/09/2005 Andrew F. Silverman 081786-8303 .US01 1341
98783 7590 03/21/2017
Perkins Coie LLP - DEN General
P.O. Box 1247
Seattle, WA 98111-1247
EXAMINER
AMELUNXEN, BARBARA J
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/21/2017 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):
patentprocurement @perkinscoie. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW F. SILVERMAN,
PING XIA, and
JOHN A. FANELLI
Appeal 2015-003965
Application H/124,8161
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
BRADLEY B. BAYAT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andrew F. Silverman, et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1—12 and 14—29. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify Redi Tech LLC as the real party in interest. App.
Br. 2.
Appeal 2015-003965
Application 11/124,816
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
1. A processor implemented risk visualization method, comprising:
receiving by the processor user input that indicates a desired
securities order to evaluate;
configuring by the processor a strategy set in accordance with at
least one attribute of the desired securities order;
receiving by the processor user input interactively through a
graphical mechanism that indicates a desired strategy selected from
the configured strategy set to apply to the desired securities order;
receiving by the processor a user input interactively through a
graphical mechanism that indicates a desired level of risk to associate
with the desired securities order;
calculating by the processor trade analytics for the desired
securities order in response to interactive inputs, based on a current
value of the desired strategy and a current value of the desired level of
risk; and
displaying and updating dynamically in response to interactive
inputs an information screen, the information screen depicting the
trade analytics associated with the desired securities order, and
providing a graphical representation of at least a portion of the trade
analytics prior to an execution of the desired securities order.
The Examiner relies upon the following as evidence of
unpatentability:
appeal.
THE REJECTIONS
Berskmans
Degraaf
Bomstein
US 6,876,981 B1
US 7,395,236 B2
WO 01/22266 A2
Apr. 5, 2005
July 1,2008
Mar. 29, 2001
2
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Application 11/124,816
The following rejections are before us for review:
1. Claims 1—12 and 14—29 are rejected under 35 U.S.C. §101 as being
directed to non-statutory subject matter.
2. Claims 1—5, 8—12, 14-25, 28, and 29 are rejected under 35 U.S.C.
§103 (a) as being unpatentable over Degraaf and Bomstein.2
3. Claims 6, 7, 26, and 27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Degraaf, Bomstein, and Berckmans.
ISSUES
Did the Examiner err in rejecting claims 1—12 and 14—29 under
35 U.S.C. §101 as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1—5, 8—12, 14-25, 28, and 29
under 35 U.S.C. § 103(a) as being unpatentable over Degraaf and Bomstein?
Did the Examiner err in rejecting claims 6, 7, 26, and 27 under
35 U.S.C. § 103(a) as being unpatentable over Degraaf, Bomstein, and
Berckmans?
ANALYSIS
The rejection of claims 1—12, 14 29 under 35 U.S.C. §101 as being
directed to non-statutory subject matter.
The Appellant argued these claims as a group. See Reply Br. 2—6.
We select claim 1 as the representative claim for this group, and the
remaining claims 2—12 and 14—29 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
2 Claim 13 was canceled.
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Application 11/124,816
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.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355. The Examiner found that “the
claims are directed to a processor implemented strategy for a risk
visualization method. Providing a strategy for risk visualization is a
fundamental economic practice and thus, the claims include an abstract
idea.” Ans. 4.
The Appellants challenge the Examiner’s finding on various grounds.
First, the Appellants argue that the Examiner failed to consider the
claims as a whole. Reply Br. 3. The Appellants criticize the Examiner for
stating that “the claims include an abstract idea” (Ans. 4, emphasis added)
when the question is whether the claims at issue are directed to an abstract
idea. See Alice, 134 S. Ct. at 2355. While the Appellants’ phrase the
question correctly, nevertheless the preamble of claim makes it plainly
evident that the subject matter claimed as a whole is directed to a “risk
visualization method” implementation. Albeit the Examiner stated that “the
claims include an abstract idea,” nevertheless the Examiner correctly
articulated the abstract idea as “providing a strategy for risk visualization”
(Ans. 4) and it is readily apparent that that is what claim 1 as a whole is
directed to.
Second, the Appellants criticize the Examiner for characterizing
“providing a strategy for risk visualization” (Ans. 4) as a fundamental
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Application 11/124,816
economic practice, and thus, an abstract idea, without reasoning or support.
Reply Br. 4. But it is “sufficient to compare claims at issue to those claims
already found to be directed to an abstract idea in previous cases.” Enflsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In that
regard, the “providing a strategy for risk visualization” which claim 1 is
focused on is simply a short-hand description for a combination of
collecting, analyzing and displaying steps being applied to certain types of
financially-related information. However, when “the focus of the asserted
claims” is “on collecting information, analyzing it, and displaying certain
results of the collection and analysis,” the claims are directed to an abstract
idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1343 (Fed. Cir.
2016). Accordingly, in this case, it is unnecessary to show “providing a
strategy for risk visualization” (Ans. 4) is a fundamental economic practice
and thereby an abstract idea because it has already been determined to be an
abstract idea.
Third, the Appellants argue that the claims are not directed to an
abstract idea. Reply Br. 4—5. The argument is unpersuasive for the reasons
already discussed with respect to the second argument.
The Appellants particularly point out that
the claimed solution provides a method to visualize risk by
graphically displaying trade analytics in order to "[guide] traders
through the veritable maze of possibilities that the current trading
environment offers" (Present Application, Para. [0006]). Thus, the
claimed solution overcomes the problem of information overload that
has arisen from the realm of electronic trading.
Reply Br. 5. But this shows the solution is rooted in a particular scheme for
managing information rather than in technology. Cf. DDR Holdings, LLC v.
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Application 11/124,816
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (“the claimed
solution is necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks.”) See also
Amdocs (Israel) Limited v. Openet Telecom, Inc, 841 F.3d 1288 (Fed. Cir.
2016).
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)). The Examiner found:
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 computer/processor
and trading system. The limitations are merely instructions to
implement the abstract idea on a computer and 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. 4—5.
The Appellants disagree. But the Appellants do no more than
reproduce claim 1 and state that “[i]n this way, the user can make sense of
the veritable maze of possibilities that the current trading environment offers
by graphically specifying a desired level of risk and graphically evaluating
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Application 11/124,816
trade analytics prior to executing an order.” Reply Br. 6. At best, the
Appellants are arguing that the invention is limited to a particular trading
environment. But that is insufficient to show the elements of claim 1, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application. See Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (citing Alice, 134 St.
Ct. at 2358; Mayo, 132 S. Ct. at 1294) (“Limiting the field of use of the
abstract idea to a particular existing technological environment does not
render any claims less abstract.”)
The Appellants further argue that
[e]ven assuming that presenting graphical representations of trade
analytics as presented in the claims are abstract concepts, which the
Appellant denies, the technology recited by the claims requires a
specific recitation and interaction of devices and performance of
specific steps. Many different ways of analyzing securities trades exist
that are not implicated by the current claims.
Reply Br. 5.
With respect to the pre-emption concern, “[w]hat matters is whether a
claim threatens to subsume the full scope of a fundamental concept, and
when those concerns arise, we must look for meaningful limitations that
prevent the claim as a whole from covering the concept’s every practical
application.” CLS Bank Intern, v. Alice Corp. Pty. Ltd., 717 F.3d 1269,
1281 (Fed. Cir. 2013) (Lourie, J., concurring). Here, there are no claim
limitations that root the solution in technology. They simply narrow the
abstract idea to a lower level of abstraction. They do not render the abstract
idea to which the claim is directed to any less an abstract idea. Pre-emption
is not a separate test.
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To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted with
every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather, the
animating concern is that claims should not be coextensive with a
natural law, natural phenomenon, or abstract idea; a patent-eligible
claim must include one or more substantive limitations that, in the
words of the Supreme Court, add “significantly more” to the basic
principle, with the result that the claim covers significantly less. See
Mayo 132 S. Ct. at 1294. Thus, broad claims do not necessarily raise
§ 101 preemption concerns, and seemingly narrower claims are not
necessarily exempt.
Id.; see also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (“[w]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”).
Finally, the Appellants criticize the Examiner for not establishing a
“prima facie case.” Reply Br. 2-3. We find instead that the Examiner fully
complied with the law and guidance in existence at the time the rejection
was made.
For the foregoing reasons, we are unpersuaded as to error in the
Examiner’s rejection.
The rejection of claims 1—5, 8—12, 14-25, 28, and 29 under 35 U.S.C.
§103 (a) as being unpatentable over Degraaf and Bornstein.
The rejection of claims 6, 7, 26, and 27 under 35 U.S.C. §103 (a) as being
unpatentable over Degraaf, Bornstein, and Berckmans.
All three independent claims — claims 1,10, and 21 — include a
limitation to receiving “a user input interactively through a graphical
mechanism that indicates a desired level of risk to associate with [a] desired
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Application 11/124,816
securities order.” The Examiner found this disclosed in Degraaf at column
5, lines 5—52, column 6, and column 7, lines 47-49. Final Act. 5. The
Appellants disagree. See App. Br. 5.
We find the Appellants have the better position. We have reviewed
the cited passages in Degraaf but do not see there receiving “a user input
interactively through a graphical mechanism that indicates a desired level of
risk to associate with [a] desired securities order.” As the Appellants point
out, Degraaf discloses retrieving values from a database for presentation to a
user. See col. 9, lines 20-21: “retrieving previously calculated riskvalues
from database 28”. The “Examiner notes the [Degraaf] graphical input
mechanism is clearly interactive as that is where the user enters
information.” Ans. 8. But that is a matter of speculation. Without more, the
fact that Degraaf s graphical input mechanism is interactive is insufficient to
lead one to receive user input “that indicates a desired level of risk to
associate with [a] desired securities order” as an alternative to being
presented with what is retrieved from a database as Degraaf expressly
discloses.
For the foregoing reasons, a prima facie case of obviousness for the
subject matter of the independent claims has not been made out in the first
instance by a preponderance of the evidence. We reach the same conclusion
as to the other claims on appeal, which claims depend from the independent
claims whose rejection has not been sustained.
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CONCLUSIONS
The rejection of claims 1—12 and 14—29 under 35 U.S.C. §101 as
being directed to non-statutory subject matter is affirmed.
The rejection of claims 1—5, 8—12, 14—25, 28, and 29 under 35 U.S.C.
§103 (a) as being unpatentable over Degraaf and Bomstein is reversed.
The rejection of claims 6, 7, 26, and 27 under 35 U.S.C. § 103(a) as
being unpatentable over Degraaf, Bomstein, and Berckmans is reversed.
DECISION
The decision of the Examiner to reject claims 1—12 and 14—29 is
affirmed.
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).
AFFIRMED
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