Ex Parte Weber et al

Patent Trial and Appeal Board

Feb 19, 2019

14542701 (P.T.A.B. Feb. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/542,701 11/17/2014
35811 7590 02/21/2019
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Clifford J. Weber
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.
MKT-14-1074CON 1944
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
02/21/2019 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLIFFORD J. WEBER and LYNN C. MARTIN 1
Appeal2017-010776
Application 14/542,701
Technology Center 3600
Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN
Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1 through 27.
We AFFIRM.
INVENTION
The invention is a system to facilitate trades priced relative to a
reference benchmark value associated with an underlying index future.
Specification, paragraph 5. Claim 1 is illustrative of the invention and is
reproduced below:
1 According to Appellants, NYSE MKT LLC is the real party in interest.
App. Br. 1.
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1. A system for efficient data retrieval, comprising:
a communication device that receives an indication of a
trade when the trade is initiated that is priced relative to a
reference benchmark value, the indication including
information associated with the trade and the trade having a
basis that is determined at least one day prior to a determination
of a final price and a quantity of the trade;
a database having an index structured data table storing
trade information for a plurality of trades indexed by respective
trade indications;
a computer processor executing program instructions;
and
a memory, coupled to the computer processor, storing the
program instructions that when executed by the computer
processor cause the system to:
store the received indication in an indexed format
according to a trade indication corresponding to the received
indication;
retrieve at least a portion of information associated with
the trade by searching the index structured data table for a trade
indication associated with the respective received trade, when
the final price and the quantity for the trade is determined, the
final price determined being based on a reference benchmark
value; and
automatically generate and report the trade, based on the
retrieved portion of information, the determined final price and
the determined quantity.
REJECTIONS AT ISSUE
The Examiner rejected claims 1 through 27 under 35 U.S.C. § 101 for
being directed to patent-ineligible subject matter. Final Act. 6-8. 2
2 Throughout this Opinion, we refer to the Appeal Brief, filed April 3, 2017
("App. Br."), the Reply Brief, filed August 17, 2017 ("Reply Br."), the
Examiner's Answer, mailed June 27, 2017 ("Answer"), and the Final Office
Action, mailed November 14, 2016 ("Final Act.").
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The Examiner rejected claims 1 through 27 on the ground of
nonstatutory, obviousness-type, double patenting, for being unpatentable
over claims 1 through 27 of copending application 14/212,077. Final Act. 5.
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: "[l]aws of
nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 573 U.S. 208,216 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217-18 (citing Mayo, 566 U.S. 66, 75-77
(2012)). In accordance with that framework, we first determine what
concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their
face, the claims before us are drawn to the concept of intermediated
settlement, i.e., the use of a third party to mitigate settlement risk."); see also
Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners'
application explain the basic concept of hedging, or protecting against
risk.").
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.").
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If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (internal quotation marks
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Memorandum"). Under that guidance, we first look to whether the claim
is directed to a judicial exception because:
( 1) the claim recites a judicial exception, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice,
or mental processes); and
(2) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a}-( c ), ( e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
ANALYSIS
Abstract Idea
The Examiner finds that the claims are not patent eligible as they are
directed to a judicial exception without reciting significantly more. Final
Act. 4--6. Specifically, the Examiner finds that the claims are directed to
"the abstract idea of 'electronic trading systems and in particular to
facilitating trades priced relative to a reference benchmark value associated
with an underlying index.'" Final Act. 7.
Appellants argue the Examiner's rejection is in error as the Examiner
impermissibly overgeneralized the claimed invention and did not consider
the specific and detailed limitations. App. Br. 5. Appellants argue the
claims yield a mechanism for improved data handling that provides faster
execution. App. Br. 6.
Appellants' arguments have not persuaded us of error in the
Examiner's conclusion that the claims are directed to an abstract idea.
Claim 1 recites limitations setting forth steps relating to managing and
recording commercial transactions between people. Specifically, claim 1
recites . . . "receiving" indication of a trade, "storing" the indication of the
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trade in an indexed format, "retrieving" the information associating with a
trade when the final price and quantity for the trade, and "generating" a
report of the trade based upon the received information.
The Examiner finds that the claims are directed to an abstract idea
similar to those held to be abstract by the courts in buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (finding an abstract idea where
the claims recited a "transaction performance guaranty," and Diamond v.
Diehr, 450 U.S. 175, 192 (1981) (claim directed to using the Arrhenius
equation). We concur with the Examiner that claim 1 is directed to a method
of facilitating trades priced relative to a reference benchmark ( an abstract
idea of a fundamental economic activity). We agree with Appellants'
argument that the Examiner's cite to Diehr' s claim using the Arrhenius, is
inappropriate. Reply Br. 2-3. Nonetheless, we are unpersuaded by
Appellants' argument that the abstract concept recited in Appellants'
representative claim 1 is unlike the abstract concept at issue in buySAFE,
which dealt with a transaction performance guaranty, i.e. a fundamental
economic practice. We further note that the abstract concept is similar to
that at issue in Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873
F.3d 1364, 1371 (Fed. Cir. 2017) which held that claims relating to methods
of paying subway fare via bankcard including receiving a record,
maintaining a balance in memory, and accounting for a fare by applying a
fare to a balance are abstract ideas. Our reviewing court has further stated,
"claims directed to the performance of certain financial transactions ... must
be categorized as involving abstract ideas." Smart Sys. Innovations, 873
F.3d at 1371. Additionally, we note that our reviewing court has held that
use of an index to classify data is also an abstract idea. See In re TL!
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Commc'ns LLC Patent Litig., 823 F.3d 607,613. Accordingly, Appellants'
arguments have not persuaded us the Examiner erred in finding the claims
recite an abstract idea.
Practical Application/Significantly more than Abstract Idea
The Examiner finds that the claims do not include additional elements
that are sufficient to amount to significantly more than the judicial
exception, as the additional elements of the claim "are simply a generic
recitation of a computer and a computer network performing their generic
computer functions." Final Act. 7; App. Br. 8; Answer 3, 4 (citing page 26
of Appellants' Specification). The Examiner finds the claimed invention to
provide "no specific improvement to the way computers operate." Ans. 8.
The Examiner further disagreed that the claims focused on a specific way of
improving another relevant technology. Ans. 4--5. As such the Examiner
concludes the claims do not amount to significantly more than the abstract
idea. Final Act. 8; Ans. 4.
Appellants argue that the Examiner's rejection is in error as being
inconsistent with the controlling case law. App. Br. 6-7. Furthermore,
Appellants argue that the Examiner is overlooking the concept of a new and
unconventional mechanism for improved data handling that provides
improvements to the functioning of the computer itself and focuses on a
"specific computer implementation of a solution in the computerized trading
field" through "specific rules and perform[ing] specific functions." App. Br.
6-10. Appellants point to the claim as providing an "indexed data table"
and "initiating transaction processing ... before final prices are determined,"
alleging these features improve the data speed in the computerized trading.
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App. Br. 8-10. Appellants allege error in the Examiner's finding that the
claims recite using general purpose computers to perform generic, routine,
and conventional functions as unduly reliant upon a single paragraph of
Appellants' Specification, and that claims may be eligible despite their
implementation on otherwise generic computer components. App. Br. 6-7.
Appellants argue that when considered in light of the decisions in Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), Bascom Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016),
and Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
2016) the claims are patent eligible. App. Br. 6-7.
We are not persuaded of error in the Examiner's finding that the
claims are not directed to an improvement in the functioning of the computer
or in another technical field. As identified by the Examiner, on page 4 of
Answer, Appellants' claims are unlike the claims at issue in Enfish that were
directed to a solution to a problem in the software arts. The court in Enfish
held that the claims at issue focused "on an improvement to computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity." Enfish, 822 F.3d 1327, 1338. We note that
paragraphs 2 through 4 and 7 of Appellants' Specification discuss problems
in making trades in markets located in different time zones, and that the
"effect of some embodiments of the disclosure is an improved and
computerized method of executing trades priced relative to a reference
benchmark value associated with an underlying index future." Specification
paras. 2--4, 7. Appellant's reference to "initiating processing ... before final
prices are determined" (App. Br. 9) is likewise concerned with the
requirement that the trade have a basis that is determined before the final
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price determination, which concerns the financial concept rather than any
particular technological implementation. In view of Appellants' arguments
and Specification, the solution provided by Appellants' claimed device is not
to improve the computer, or any other specific device, but rather to facilitate
trade.
Further, Appellants' assertion that "[u]nder Trading Technologies,
these are precisely the types of improvements that render claims directed to
trading platforms eligible" is not well taken. App. Br. 8. In Trading
Technologies the court stated:
the claimed subject matter is "directed to a specific
improvement to the way computers operate," id. for the claimed
graphical user interface method imparts a specific functionality
to a trading system "directed to a specific implementation of a
solution to a problem in the software arts.
Trading Technologies 675 Fed. Appx. 1006 (citing Bascom). Here as
discussed above, we do not find that the claims recite a solution to a problem
in the software arts thus we are unpersuaded by Appellants' analogy to
Trading Technologies.
Appellants argue that the inclusion of "specific, automated and unique
processing functions that yield improvements" provides eligibility according
to the decision in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016). App. Br. 7, 10. Specifically, Appellants argue that
the claims use an indexed data table and a mechanism for initiating
transaction processing ahead of time at improve data handling in computer
trading related to speed and accuracy. App. Br. 8-9. As such, Appellants
argue the claimed invention solves a technological deficiency and improves
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a "critical technical problem in the field of computer network architectures
in this art" and as such are directed to improving a technological process.
App. Br. 9-10.
We are not persuaded of error by these arguments. Our reviewing
court has remarked that "specific technologic modifications to solve a
problem or improve the functioning of a known system generally produce
patent-eligible subject matter," whereas "ineligible claims generally lack
steps or limitations specific to" such solutions or improvements. Trading
Technologies Int'!. v. CQG Inc. 675 Fed. Appx. 1001, 1004---05 (Fed. Cir.
2017) (collecting cases). Appellants have not identified, nor does the
Specification describe, any specific technical attributes of the claimed
"index structured data table" in the manner characteristic of claims found to
directed to a technological improvement rather than to the recited abstract
idea.
The data structure of Enfish was "not simply directed to any form of
storing tabular data," but instead, required a very specifically defined means
for configuring a logical data table that involved a four-step algorithm to
render the table self-referential. Enfish, 822 F.3d at 1336. The invention of
McRO went beyond "merely organizing existing information into a new
form," but instead, used "a combined order of specific rules" in which "a
relationship between sub-sequences of phonemes, timing, and the weight to
which each phoneme is expressed visually at a particular timing." McRO,
837 F.3d at 1314--15.
The Federal Circuit again illustrated this distinction in Data Engine
Technologies, LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018). In Data
Engine Technologies, the court addressed a set of claims directed to a
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specific method of navigating three-dimensional spreadsheets through the
use of tabs. Id. at 1008---09. The inventive tabs permitted easy access to
spreadsheet workspaces that previously required a user to "search through
complex menu systems" and "memorize frequently needed commands." Id.
at 1008. The claim "requires at least one user settable identifying character
to label the notebook and describes navigating through the various
spreadsheet pages that are identified by their tabs." Id. The court found the
claims to require a "specific interface and implementation for navigating
complex three-dimensional spreadsheets using techniques unique to
computers." Id. at 1009. The court distinguished the claimed invention
from one that would merely recite "a generic method of labeling and
organizing" spreadsheet data. Id. at 1008-09.
In Data Engine Technologies, the court further addressed claims that
recited "associating each of the cell matrices with a user-settable page
identifier" without "the specific implementation of a notebook tab
interface." Id. at 1012. The court held that these were claims not limited to
the "specific technical solution and improvement in electronic spreadsheet
functionality" set forth in the eligible tab claims, and were thus found
ineligible. Id.
Similarly, in Core Wireless, the claimed invention provided a display
interface that replaced prior interfaces requiring users to "scroll around and
switch views many times to find the right data/functionality." Core Wireless
Licensing SARL v. LG Electronics, Inc., 880 F.3d 1356, 1363 (Fed. Cir.
2018). The claimed invention specified particular technological
functionality in the form of "an application summary that can be reached
directly from [a] menu" such that the summary window "is displayed while
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the one or more applications are in an un-launched state." Id. at 1362-63.
The court in Data Engine Technologies characterized the claimed invention
in Core Wireless as not "merely directed to the abstract idea of indexing
information," but instead providing "an improved user interface for
electronic devices" such that the claim "was directed to an improvement in
the functioning of computers." Data Engine Techs, LLC v. Google LLC,
906 F.3d at 1009.
The claims at issue recite an "index structured data table" but do not
specify its structure. Claim 1 merely requires that the table store trade
information in an indexed format and that the index may be searched for a
trade indication. Appellants, in amending the claims to include that
limitation, described the "index structured data table" as "an indexing
technique (including the claimed trade identifier) and storage in a logical
table having logical rows (i.e. the claimed data table)." Appellants'
"Response" at 9, August 4, 2016. Appellants further explain that "the
claimed database effectively stores information in an organized (indexed)
manner." Id.; see also App. Br. 8. Appellants merely point to the existence
of an indexed table; i.e., an "organized" table, rather than any specific
structure or rules of the table that would cause the claimed index structured
data table to exhibit technical features improving either the computer or a
related technology in any manner analogous to Enfzsh, McRO, Data Engine
Technologies, Trading Technologies, or Core Wireless.
To the extent that Appellants are arguing that the claimed indexed
table provides a unique technological improvement, Appellants have failed
to persuasively distinguish the claimed table from the concept of indexing
present in any organized data collection ( e.g. alphabetizing a phone book,
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using the Dewey decimal system to index a library collection, using the
patent classification to classify patent application, etc.). See also In re TL!
Commc 'ns LLC Patent Litig., 823 F .3d 607, 613 and Intellectual Ventures I
LLC v. Erie Indemnity Co. 805 F.3d 1315 1328 (Fed. Cir. 2017). Following
the reasoning set forth in the aforementioned decisions, we do not find error
in the Examiner's conclusion that the claimed invention is directed to an
abstract idea and not to an improvement in computer or other technology.
Further, Appellants argue the claims do not preempt all procedures for
data handling and are thus patent eligible. We are not persuaded of error by
these arguments. A lack of complete preemption does not make the claims
any less abstract. See buySAFE, Inc., 765 F.3d at 1355; see also Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
("While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility."); see also
OIP Techs., Inc., 788 F.3d at 1362-1363 ("[T]hat the claims do not preempt
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.").
In summary, Appellants' arguments have not persuaded us of error in
the Examiner's determination that the claims recite an abstract idea, that of
facilitating trades in priced relative to a reference benchmark value
associated with an underlying index. Further, Appellants' arguments have
not persuaded us that the Examiner erred in finding that the claims are not
integrated into a practical application of that abstract idea, because the
claims are not: directed to an improvement in the functioning of the
computer or to other technology or other technical field; directed to a
particular machine; directed to performing or affecting a transformation of
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an article to a different state or thing; directed to using a judicial exception
in some meaningful way beyond linking the exception to a particular
technological environment such that the claim as a whole is more than a
drafting effort to monopolize the judicial exception. Nor have Appellants'
arguments persuaded us the Examiner erred in finding the additional
limitations of the claims simply append well-understood and conventional
activities such that the claim as a whole does not amount to significantly
more than the abstract idea itself. Accordingly, we sustain the Examiner's
rejection of claims 1 through 27 under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter.
Double Patenting Rejection
Appellants argue on page 11 of the Appeal Brief that the Examiner's
double patenting rejection is provisional and elects not to address the
rejection. We concur that the rejection is provisional and decline to reach
the provisional rejection. See Ex parte Moncla, 95 USPQ2d 1884, 1885
(BP AI 2010) (precedential).
DECISION
The decision of the Examiner to reject claims 1 through 27 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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