Scott H. Kurland et al.

Patent Trials and Appeals BoardAug 15, 2019

11311885 - (D) (P.T.A.B. Aug. 15, 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. 11/311,885 12/19/2005 Scott H. Kurland 107945.000009 5426 145584 7590 08/15/2019 Prince Lobel Tye LLP One International Place Suite 3700 Boston, MA 02110 EXAMINER LEMIEUX, JESSICA ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 08/15/2019 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): docketing@princelobel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SCOTT H. KURLAND, IAN P. L. HOENISCH, ROBERT L. SHER, and DAVID H. SHER ____________ Appeal 2018-0015871 Application 11/311,8852 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL 1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed June 21, 2017). 2 Appellants identify “ITG SOFTWARE SOLUTIONS, INC., Culver City, California” as the real party in interest. App. Br. 2. Appeal 2018-001587 Application 11/311,885 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–8. An oral hearing was held on August 8, 2019. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED INVENTION Appellants describe that the claimed invention “relates generally to electronic trading of financial instruments” and, more particularly, to “an improved system and method for financial instrument order processing which facilitates equity street-side trade compression for institutional investors” (Spec. 1, ll. 2–5). Claim 1, reproduced below, is the sole independent claim and representative of the claimed subject matter: 1. A financial instrument trading system comprising: means for electronically receiving a pre-trade order from an order management system for managing a complete trade order, wherein said complete trade order comprises a pre-trade order and a post-trade order, said pre-trade order to be executed by an executing broker on behalf of a customer; means for apportioning the pre-trade order into a plurality of smaller orders; and means for routing and allocation to receive electronically the plurality of smaller orders and electronically communicate the plurality of smaller orders to a plurality of order destinations, to compress individual executions for the plurality of smaller orders from the plurality of order destinations into an average- priced block, and to manage the post-trade order, wherein said post-trade order comprises a post-trade allocation and accounting event of the complete transaction. Appeal 2018-001587 Application 11/311,885 3 REJECTION Claims 1–8 are rejected under 35 U.S.C. § 101 as directed to patent ineligible subject matter. ANALYSIS As set forth below, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 1–8 as indefinite under 35 U.S.C. § 112, second paragraph. In light of this new rejection, we do not reach the merits of the rejection of claims 1–8 under 35 U.S.C. § 101. Before a proper review of the rejection under § 101 can be conducted, the scope of claims 1–8 must be reasonably understood, without resort to speculation, to determine whether the claims are “directed to” patent ineligible subject matter. Because the claims fail to satisfy the requirements of 35 U.S.C. § 112, second paragraph, we reverse, pro forma, the Examiner’s rejection of claims 1–8 under 35 U.S.C. § 101. Cf. In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Examiner and the Board erred in relying on what, at best, were speculative assumptions as to the meaning of the claims and in basing a prior-art rejection thereon). It should be understood that our decision is based solely on the indefiniteness of claims 1–8, and does not reflect on the merits of the § 101 rejection. New Ground of Rejection We enter the following new ground of rejection of claims 1–8 under 35 U.S.C. § 112, second paragraph, pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2018-001587 Application 11/311,885 4 Indefiniteness The patent statute requires that a claim “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as the invention.” 35 U.S.C. § 112, ¶ 2. As such, a claim is invalid for indefiniteness if a person of ordinary skill in the art would not understand the scope of the claim, when the claim is read in light of the specification. In the context of a means-plus-function limitation under 35 U.S.C. § 112, sixth paragraph, if a person skilled in the art would be able to identify the structure, material, or acts for performing the claimed function, then the requirements of 35 U.S.C. § 112, second paragraph, are satisfied. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999). Independent claim 1, reproduced above, is directed to a financial instrument trading system, and recites that the system comprises various “means for” elements, including a “means for routing and allocation.” Appellants and the Examiner agree that these “means for” recitations invoke 35 U.S.C. § 112, sixth paragraph (see App. Br. 4 (“Claim 1 recites ‘means for’ elements, thereby incorporating the structure, algorithms and steps disclosed in the specification for performing the recited functions, and their equivalents as described in more detail, surpa [sic].”)). It also clearly appears from the Specification that these are computer-implemented limitations (see, e.g., Spec. 5, ll. 13–23 (disclosing that “the routing and allocation middleware . . . [is] preferably hosted on a computer based information handling system of the buy-side executing broker and may be implemented in software, hardware, firmware, or combinations thereof”)). Therefore, the relevant inquiry is whether Appellants’ Specification discloses sufficient corresponding structure, i.e., an algorithm for performing Appeal 2018-001587 Application 11/311,885 5 the recited functions. In other words, Appellants’ Specification must sufficiently disclose an algorithm to transform the general purpose computer or processor into a special purpose processor programmed to perform the disclosed algorithm. See Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1338 (Fed. Cir. 2008). Otherwise, an indefiniteness rejection under § 112, second paragraph, is appropriate. Id. at 1337–38. See also Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) (holding that a computer-implemented means-plus-function limitation is indefinite because the specification failed to disclose the specific algorithm used by the computer to perform the recited function); Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009) (finding Blackboard’s means-plus-function claims indefinite because the patent describes an undefined component, i.e., a black box, that performs the recited function but does not disclose how the component performs the function); Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340–41 (Fed. Cir. 2008) (“Simply reciting ‘software’ without providing some detail about the means to accomplish the function is not enough.”). In the “Summary of Claimed Subject Matter” section of the Appeal Brief, Appellants cite pages 6–8 of the Specification and Figures 1–6 as disclosing the structure that corresponds to the claimed “means for routing and allocation” (App. Br. 3–4). That portion of the Specification, however, focuses on what the “means for routing and allocation” does, not on how it does it. For example, the Specification discloses that the routing and allocation middleware routes smaller orders (apportioned from the pre-trade order) to destination brokers, receives individual executions back from the Appeal 2018-001587 Application 11/311,885 6 destination brokers, and compresses the individual executions to a single volume-weighted, average priced block (see Spec. 6–8). But, that “simply describes the function to be performed, not the algorithm by which it is performed.” Aristocrat, 521 F.3d at 1334. Figures 1–6 likewise depict boxes describing functionality without adequate disclosure of the structure for implementing that functionality. Figure 1, for example, discloses the “Routing and Allocation Middleware” as a generic “black box” that performs the recited functions. “But how it does so is left undisclosed.” Blackboard, 574 F.3d at 1383. See also ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 518 (Fed. Cir. 2012) (holding that a “black box” labeled “[P]urchase [O]rders” was insufficient disclosure of structure to perform the “purchase-order-generation” function); Aristocrat, 521 F.3d at 1337 (“It is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function.”). Figures 2–5 similarly depict block diagrams of the modules participating in the order processing, including indications of the input and output of the routing and allocation middleware. However, neither Figures 2–5 nor the high-level flow chart in Figure 6 provides any disclosure that would constitute an algorithm or specific structure for performing the functions of the “means for routing and allocation.” We also find no such disclosure from our review of the remaining portions of the Specification. Appellants’ Specification contains inadequate disclosure of the structure corresponding to the recited “means for routing and allocation” and, therefore, fails to particularly point out and distinctly claim the invention that Appellants regard as the invention. Accordingly, we enter a Appeal 2018-001587 Application 11/311,885 7 new rejection of independent claim 1, and claims 2–8, which depend therefrom, under 35 U.S.C. § 112, second paragraph, as indefinite. DECISION The Examiner’s rejection of claims 1–8 under 35 U.S.C. § 101 is reversed pro forma. A NEW GROUND OF REJECTION of claims 1–8 under 35 U.S.C. § 112, second paragraph, has been entered. 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the Examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. Further guidance on responding to a new ground of rejection can be found in the MANUAL OF PATENT EXAMINING PROCEDURE § 1214.01. REVERSED; 37 C.F.R. § 41.50(b)