Michael M. Sroka et al.

Patent Trials and Appeals Board

Sep 19, 2019

13751242 - (D) (P.T.A.B. Sep. 19, 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.
13/751,242 01/28/2013 Michael M. SROKA 07-8070-C1 2199
63710 7590 09/19/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
GREENE, DANIEL LAWSON
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
09/19/2019 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 MICHAEL M. SROKA and
PHILLIP DRAYER1
__________

Appeal 2018-006293
Application 13/751,242
Technology Center 3600
__________

Before MICHAEL L. HOELTER, JAMES P. CALVE, and
BRETT C. MARTIN, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a Decision on Appeal, under 35 U.S.C. § 134(a), from the
Examiner’s Final Rejection of claims 23–25, 27–30, 32, and 35–44. App.
Br. 11. “Claims 1–22, 26, 31, 33, and 34 were previously cancelled.” App.
Br. 11. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons explained below, we AFFIRM the Examiner’s
rejection of these claims under 35 U.S.C. § 102(b).

1 “The real party in interest of the present application is Cantor
Entertainment Data, L.P.” App. Br. 3. We refer to the appealing party as
“Appellant.”
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Application 13/751,242

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CLAIMED SUBJECT MATTER
As expressed by Appellant, “[c]ertain embodiments of the present
invention relate to acquiring, purchasing and selling of synthetic assets.”
Spec. ¶ 16. Apparatus claims 23 and 32, and method claims 43 and 44, are
independent. Claim 23 is illustrative of the claims on appeal and is
reproduced below.
23. An apparatus comprising:
at least one processor; and
at least one non-transitory medium having stored thereon
a plurality of instructions that when executed by the at least one
processor cause the apparatus to:
receive from a first computing device a request to create
interests in an intangible representation of a person, wherein the
request comprises a number of the interests to create and an
initial price of each of the interests;
transmit a first web-based graphical user interface to the
first computing device;
display via the first web-based graphical user interface an
indication that interests in the person are available for purchase
at the initial price;
receive an acquisition request from the first computing
device indicating a desire to acquire at least one of the interests
in the person at the initial price;
responsive to the acquisition request, determine whether
a first electronic account has enough available funds to fulfill
the acquisition request;
when the first electronic account has enough available
funds to fulfill the acquisition request, transfer to the first
electronic account at least one of the interests in the person and
reduce the available funds in the first electronic account based
on a number of interests acquired;
responsive to the transfer, display via the first web-based
graphical user interface an indication of the number of acquired
interests in the person and an amount of the available funds in
the first electronic account;
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subsequent to acquiring interests in the person, receive
from the first computing device a request to sell a number of
interests in the person, wherein the request to sell indicates a
number of interests to sell and a sales price at which to sell the
interests;
transmit a second web-based graphical user interface to a
second device;
display via the second web-based graphical user interface
in the second computing device an indication of the request to
sell;
receive from the second computing device a request to
buy interests in the person, wherein the request to buy indicates
a number of interests to buy and a purchase price;
responsive to the request to buy, determine whether a
second electronic account has enough available funds to fulfill
the request to buy;
determine whether a selling price of the request to sell
and a purchase price of the request to buy match;
responsive to determining that the selling price and the
purchase price match, transfer interests in the person from the
first electronic account to the second electronic account,
wherein the transfer includes to remove from the first electronic
account interests in the person sold via the first computing
device and to add to the second electronic account interests in
the person purchased via the second computing device; and
responsive to the transfer, display via the first web-based
graphical user interface an indication of the number of interests
in the person contained in the first electronic account and
display via the second web-based graphical user interface an
indication of the number of interests in the person contained in
the second electronic account.
REFERENCE RELIED ON BY THE EXAMINER
Lee US 2005/0187866 A1 Aug. 25, 2005
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THE REJECTIONS ON APPEAL
Claims 23–25, 27–30, 32, and 35–44 are rejected under 35 U.S.C.
§ 101 because they are held to claim an abstract idea.
Claims 23–25, 27–30, 32, and 35–44 are rejected under pre-AIA
35 U.S.C. § 102(b) as anticipated by Lee.
ANALYSIS
The rejection of claims 23–25, 27–30, 32 and 35–44
as anticipated by Lee
We address the anticipation rejection of all the claims on appeal first.
Appellant argues claims 23–25, 27–30, 32, and 35–44 together. See App.
Br. 20–23. We select independent claim 23 for review, with the remaining
claims (i.e., 24, 25, 27–30, 32, and 35–44) standing or falling therewith. See
37 C.F.R. § 41.37(c)(1)(iv).
Claim 23 includes the limitation of the creation of interests, and
particularly, “to create interests in an intangible representation of a person.”2
Appellant acknowledges, “the Examiner argues that the securities in
paragraph [0003] of Lee correspond to the interests recited in claim 23.”
App. Br. 21. However, Appellant argues, “the debt, equity, and so-called
‘non-standard’ instruments discussed in Lee do not amount to ‘interests in
an intangible representation of a person’ as recited in claim 23.” App. Br.
22. The Examiner responds stating, “Appellants own specification
paragraph [0016] defines synthetic assets to include stocks and bonds which
has been established that Lee teaches in at least paragraphs [0003]–[0006].”
Ans. 21.

2 Similar language is found in the other independent claims 32, 43, and 44.
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Paragraph 16 of Appellant’s Specification states, “[a] synthetic asset
is an intangible representation of a real or fictitious person, place, thing, or
object, or any combination or grouping of the foregoing.”3 Emphasis added.
We note claim 23’s recitation of interests “in an intangible representation of
a person,” and not that of a “place, thing, or object” as above. Lee, as
indicated above, addresses “securities” (analogous to a “thing” or “object”)
by which “companies raise capital through the issuance” thereof. Lee ¶ 3.
Addressing this discrepancy, the Examiner acknowledges, “the claim
contains statements of intended or desired use” and that such statements
“do not serve to patentably distinguish the claimed structure over that
of the references.” Final Act. 7 (numerous citations omitted). Suffice it to
say, our reviewing court, in a similar situation, provided guidance that “the
absence of a disclosure relating to function does not defeat [a] finding of
anticipation. It is well settled that the recitation of a new intended use for an
old product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (referencing In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990)).
Here, it is not disputed that Appellant’s device can likewise be
employed with respect to “stocks, bonds” as discussed in Lee. See Spec.
¶ 16; Lee ¶¶ 3, 6, 21 and Fig. 21. Thus, Appellant’s focus on an intended
use with respect to “an intangible representation of a person,” as patentably
distinguishable over Lee’s device, which addresses securities, is not

3 Appellant’s Specification provides numerous examples of synthetic assets,
which include “stocks, bonds.” Spec. ¶ 16. Thus, Appellant’s device is
capable of addressing the claimed “intangible representations of a person,”
as well as that of “stocks, bonds.”
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persuasive. In other words, as expressed above, “the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.”
Moreover, even if we accord patentable weight to this intended use,
Lee discloses this feature. Appellant’s Specification describes an example
of creating fractional interests in a celebrity named “Rock Star” which may
be a faux celebrity. Spec. ¶¶ 30–35. The fractional interests may be initial
public offering (IPO) fractional interests (shares). Id. ¶ 36, Figs. 2, 5. Lee
similarly creates fractional interests (shares) in an “entity” by issuing
instruments such as equity or debt instruments, i.e., stocks or bonds. Lee ¶¶
3, 6, 19–21. Appellant’s Specification describes such instruments as
synthetic assets. See Spec. ¶ 16. Furthermore, Appellant does not ascribe
different structure or function for different synthetic assets and intangible
representations but instead lumps them together, e.g., athletes, celebrities,
news, actors, animals, and sports players are listed along with stocks and
bonds. See Spec. ¶ 16. Like the claimed intangible representations, Lee’s
fractional interests, stocks and bonds are intangible representations of
companies or other “legal entities.” See Lee ¶¶ 51, 173, 178. We find no
principled distinction between the legal entities in Lee and “a person” as
claimed. Indeed, Lee describes its legal entity as having a name, address,
and country (see Lee ¶ 179) just like a legal entity called a person.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 23–25, 27–30, 32, and 35–44 as anticipated
by Lee.
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The rejection of claims 23–25, 27–30, 32, and 35–44
as being directed to an abstract idea under 35 U.S.C. § 101
37 C.F.R. §41.50(a)(1) states, “[t]he affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim.” In the matter before us, the
Examiner rejected all the claims on appeal as anticipated by Lee (see supra),
and additionally rejected all these same claims because they are “held to
claim an abstract idea.” Final Act. 5. In view of 37 C.F.R. § 41.50(a)(1)
above, we decline to further address the additional rejection of these same
claims, whose rejection has already been affirmed.
DECISION
In summary:
Claims
Rejected
Basis  Affirmed Reversed
23–25, 27–30, 32,
and 35–44
35 U.S.C. § 102(b)
Lee 
23–25, 27–30,
32, and 35–44

Overall Outcome 23–25, 27–30,
32, and 35–44

We do not reach the additional rejection of these same claims under
35 U.S.C. § 101 as expressed above.
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