2020006168 (P.T.A.B. Aug. 24, 2021)

Chicago Mercantile Exchange Inc.

Patent Trials and Appeals BoardAug 24, 2021

2020006168 (P.T.A.B. Aug. 24, 2021)

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. 15/049,836 02/22/2016 John Scheerer 4672-16002AUS 3077 12684 7590 08/24/2021 Lempia Summerfield Katz LLC/CME 20 South Clark Street Suite 600 Chicago, IL 60603 EXAMINER OYEBISI, OJO O ART UNIT PAPER NUMBER 3697 NOTIFICATION DATE DELIVERY MODE 08/24/2021 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): docket-us@lsk-iplaw.com mail@lsk-iplaw.com pair_lsk@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN SCHEERER Appeal 2020-006168 Application 15/049,836 Technology Center 3600 Before MICHAEL R. ZECHER, JENNIFER S. BISK, and BETH Z. SHAW, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing (“Request”) under 37 C.F.R. § 47.52(a)(1) of our Decision on Appeal mailed June 9, 2021 (“Decision”). The Decision affirmed the Examiner’s rejection of claims 1, 3–6, 8–13, 15, 16, 20, 22–25, 27–32, 34–37, 39, and 40 under 35 U.S.C. § 101. We reconsider our Decision in light of Appellant’s Request for Rehearing. In light of Appellant’s Request, we address Appellant’s purported points of error as follows. Appeal 2020-006168 Application 15/049,836 2 CONTENTIONS AND ANALYSIS In the Request for Rehearing, Appellant contends that the act of halting processing is not a function that can be performed in the human mind or pen and paper. Request 4. Yet, in our Decision, we concluded that the italicized steps of claim 1 (including the “halting” step) fall under the umbrella of fundamental economic practices, and we did not address the halting processing function as being a mental process. See Decision 7–8. Appellant also contends generally that halting processing is not a fundamental economic concept. Request 4. A Request for Rehearing, however, is not an opportunity to merely express disagreement with a Decision. In the Decision, we additionally concluded—in response to Appellant’s arguments that halting processing is a technical solution—that the “halting” step of claim 1 is a conditional limitation. See Decision 11. In the Request for Rehearing, Appellant contends the “halting” step is not optional. Request 3–4. Yet, as noted above, a Request for Rehearing is not an opportunity to merely express disagreement with a Decision, and in this case, disagreement with the analysis provided in the Decision. Nonetheless, even assuming without agreeing that the “halting” step limits claim 1, the claim, as a whole, still does not integrate the abstract idea into a practical application for the reasons discussed in the Decision. See Decision 9–12. In particular, we concluded that the “processor” was the only recited element beyond the abstract idea, and that the additional element (i.e., the processor) did not integrate the abstract idea into a practical application. Id. at 9. Appellant also argues in the Request that the claims are integrated into a practical application and are subject matter eligible, but when presenting Appeal 2020-006168 Application 15/049,836 3 this argument, Appellant does not direct us to any arguments that we misapprehended or overlooked in the Briefs. See Request 4–8. By regulation, “[t]he request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1). Putting aside that the Request does not comply with this rule, we are not persuaded that we overlooked or misapprehended any arguments in the Appeal Brief or Reply Brief. Rather, the Decision specifically addressed the arguments in Appellant’s Appeal Brief and Reply Brief. Accordingly, Appellant does not persuade us of error in our Decision. CONCLUSION We have reconsidered our Decision in light of Appellant’s arguments in the Request, and we have granted Appellant’s Request for Rehearing to the extent that we have reviewed our Decision and considered the arguments made in the Request. We, however, are not persuaded of error in our previous Decision. In summary: Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 3–6, 8– 13, 15, 16, 20, 22–25, 27–32, 34– 37, 39, 40 101 Eligibility 1, 3–6, 8– 13, 15, 16, 20, 22–25, 27–32, 34– 37, 39, 40 Appeal 2020-006168 Application 15/049,836 4 Final Outcome of Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–6, 8– 13, 15, 16, 20, 22–25, 27–32, 34– 37, 39, 40 101 Eligibility 1, 3–6, 8–13, 15, 16, 20, 22–25, 27–32, 34–37, 39, 40 DECISION Appellant’s request for rehearing is denied. DENIED