Jason Wiener et al.

Patent Trials and Appeals Board

Sep 18, 2019

11924287 - (D) (P.T.A.B. Sep. 18, 2019)

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.
11/924,287 10/25/2007 Jason Wiener 01-1042-1 1986
63710 7590 09/18/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/18/2019 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):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JASON WIENER and JOSEPH SACERDOTE 1
____________

Appeal 2017-001437
Application 11/924,287
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MATTHEW S. MEYERS, 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(a) of the final
rejection of claims 1 and 3–23 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.

1 According to Appellants, the real party in interest is BGC Partners, Inc.
(App. Br. 2).
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THE INVENTION
The Appellants’ claimed invention is directed to “systems and
methods for electronically assigning and tracking assets and post trade
attributes for trades in markets in which the assets or liabilities delivered in a
transaction are unknown at the point of purchase or sale” (Spec., page 1,
lines 11–14). Claim 1, reproduced below with the italics added, is
representative of the subject matter on appeal.

1. A method comprising:
receiving, by a computer processor of an electronic
trading system, an indication that a first party and a second
party have entered into an agreement for a sale and purchase
of at least one asset, the agreement having a plurality of terms
including:
a total value of the at least one asset; and
at least one criterion for qualifying at least one asset to
be assigned to the agreement as the at least one asset of the
agreement, wherein the identity of the asset to be assigned to
the agreement is not specified in the agreement;
transmitting, from a computer processor of the electronic
trading system, to the first party a request to select one or more
assets to be assigned to the agreement as the at least one asset
of the agreement, determining, by the computer processor of the
electronic trading system, whether a selection of one or more
assets has been received from the first party; and
in a case where it is determined that no selection has
been received, automatically assigning to the agreement an
available quantity of at least one default asset of the first party
that satisfies the at least one criterion as the at least one asset
of the agreement, the at least one default asset having been pre-
determined for default assignment to agreements in the
electronic trading system by the first party, the first party's pre-
determination having been received by a
computer processor of the electronic trading system prior to
receiving the indication that the first party and the second party
have entered into the agreement.
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THE REJECTIONS
The following rejections are before us for review:
1. Claims 1 and 3–23 are rejected under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter.
2. Claims 1 and 3–23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mosler (US 2002/0010670 A1; Jan. 24, 2002) and SIFMA
Master Repurchase Agreement (September 1996).

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 evidence2.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (App. Br. 10, 13; Reply Br. 3–5).
The Appellants argue further that the claim is “significantly more” than the
alleged abstract idea (App. Br. 11, 12).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 3, 4; Ans. 2–8).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted

2 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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35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 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. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
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 (Gottschalk v. Benson, 409 U.S. 63, 69 (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 waterproof 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
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mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“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. (internal citation omitted) (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.”).
The PTO recently published revised guidance on the application of §
101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, 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) 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:
(3) adds a specific limitation beyond the judicial exception that
is 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 Guidance.
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If the claim is “directed to” an abstract idea, we turn 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 (citation 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. (alterations in original) (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.
Here, the Examiner has determined that the claim recites “a) an
agreement between two parties for the sale and purchase of at least one asset
of value; b) the identity of at least one asset not specified in the agreement;
c) a request to a trading system to select an asset to be assigned to the
agreement; d) assign to the agreement at least one pre-determined default
asset” (Ans. 2). The Examiner has determined that the claim is directed to
an abstract idea because it encompasses fundamental economic practices
(“sale and purchase agreements”, “default assets”), organizing human
activities (“indication of entering into agreement”); and/or a mathematical
relationship/formula (“value of an asset”). We substantially agree with the
Examiner in this regard as claim 1 is directed to the steps in italics in the
claim above. These steps are directed to electronically assigning and
tracking assets in a trading system in which the assets or liabilities delivered
in a transaction are unknown at the point of purchase or sale which is
fundamental economic practice. In buySAFE, Inc. v. Google, 765 F.3d 1350
at 1355 it was held that claims drawn to creating a contractual relationship
and long-familiar commercial transactions was held to be directed to an
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abstract idea. In Int. Ventures I LLC v. Capital One Financial, 850 F.3d
1332, 1340 (Fed. Cir. 2017) it was held that collecting, displaying, and
manipulating data was directed to an abstract idea. In Versata Development
Group, Inc. v. SAP America, Inc., (CAFC) ,793 F. 3d 1306, 1333 it was held
that determining a price, using organizational and product group hierarchies
was held to be an abstract idea. See Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016) (collecting information, analyzing it, and
displaying results from certain results of the collection and analysis was held
to be an abstract idea).
Thus, we consider the claim to be directed to a judicial exception as
identified above.
The claims do not improve computer functionality, improve another
field of technology, utilize a particular machine, or effect a physical
transformation. Rather, we determine that nothing in the claims imposes a
meaningful limit on the judicial exception, such that the claims are more
than a drafting effort to monopolize the judicial exception.
For example, in claim 1 the steps of [1] “receiving…an indication that
a first party and a second party have entered into an agreement for a sale”;
[2] “transmitting . . . to the first party a request to select one or more assets
to be assigned to the agreement”; [3] “determining . . . whether a selection
of one or more assets has been received from the first party”; [4]
“automatically assigning to the agreement . . . as the at least one asset of the
agreement” are merely conventional steps performed by a generic computer
that do not improve computer functionality. That is, these recited steps [1]–
[4] “do not purport to improve the functioning of the computer itself” but are
merely generic functions performed by a conventional processor. Likewise,
these same steps [1]–[4] listed above do not improve the technology of the
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technical field and merely use generic computer components and functions
to perform the steps. Also, the recited method steps [1]–[4] above do not
require a “particular machine” and can be utilized with a general purpose
computer, and the steps performed are purely conventional. In this case the
general purpose computer is merely an object on which the method operates
in a conventional manner. Further, the claim as a whole fails to effect any
particular transformation of an article to a different state. The recited steps
[1]–[4] fail to provide meaningful limitations to limit the judicial exception
and rather are mere instructions to apply the method to a generic computer.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application. See Guidance,
84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
The claim fails to add a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field. Rather the
claim uses well-understood, routine, and conventional activities previously
known in the art and they are recited at a high level of generality. The
Specification at page 11 for example describes using conventional computer
components such as processors, local area network, and workstations in a
conventional manner. The claim specifically includes recitations for
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computers to implement the method but these computer components are all
used in a manner that is well-understood, routine, and conventional in the
field. The Appellants have not shown these claimed generic computer
components which are used to implement the claimed method are not well
understood, routine, or conventional in the field. The Appellants have not
demonstrated that the computers described in the Specification at paragraphs
page 11 for instance are not general purpose computer components known to
perform similar functions in a well-understood manner. Here, the claim has
not been shown to be “significantly more” than the abstract idea.
The Appellants cite to DDR Holdings, LLC v. Hotels, L.P., 773 F. 3d
1245 (Fed. Cir. 2014) and argue that the claim is “rooted in computer
technology” (App. Br. 14). We disagree as the Appellants have not shown
how the claimed subject matter is rooted in technology given that the
Specification describes only the use of generic computer equipment used in
routine, conventional, and generic manner.
We note the point about pre-emption (App. Br. 13). While pre-
emption “might tend to impede innovation more than it would tend to
promote it, ‘thereby thwarting the primary object of the patent laws’” (Alice,
134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012)), “the absence of complete preemption
does not demonstrate patent eligibility” (Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (2015)(“[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.”).
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For these reasons the rejection of claim 1 is sustained. The remaining
claims are directed to similar subject matter and the rejection of these claims
is sustained for the same reasons given above. For example, in claim 5, the
selection of the asset for assignment after the first and second parties reach
an agreement does not substantially alter the abstract nature of the base
claim 1 as identified above despite the Appellants arguments made at page
15 of the Appeal Brief.
Rejection under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 1 is improper because
the prior art fails to disclose the claim limitations for:
receiving, by a computer processor of an electronic
trading system, an indication that a first party and a second
party have entered into an agreement for a sale and purchase
of at least one asset, the agreement having a plurality of terms
including:
a total value of the at least one asset; and
at least one criterion for qualifying at least one asset to
be assigned to the agreement as the at least one asset of the
agreement, wherein the identity of the asset to be assigned to
the agreement is not specified in the agreement;
transmitting, from a computer processor of the electronic
trading system, to the first party a request to select one or more
assets to be assigned to the agreement as the at least one asset
of the agreement,
determining, by the computer processor of the electronic
trading system, whether a selection of one or more assets has
been received from the first party
(App. Br. 18, 19).
In contrast, the Examiner has determined that the cited recitation is
found in Mosler in the Abstract, Figures 1–11, and paragraphs 42–45, 53,
58, 59, and 112–114, 216, and 217 (Final Action 5, 6; Ans. 9, 10).
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We agree with the Appellants. Here, the above citations made in the
rejection of record do not specifically disclose all the cited claim limitations
above. Accordingly, this rejection is not sustained. The remaining claims
contain similar limitations and the rejection of these claims is not sustained
as well.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1 and 3–23 under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1 and 3–23 under 35 U.S.C. § 103(a) as unpatentable over
Mosler and SIFMA Master Repurchase Agreement

DECISION
The Examiner’s rejection of claims 1 and 3–23 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)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED