Elisabeth Friedman et al.Download PDFPatent Trials and Appeals BoardNov 29, 201908836713 - (D) (P.T.A.B. Nov. 29, 2019) Copy Citation 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. 08/836,713 05/13/1997 ELISABETH FRIEDMAN CITI0060-US 6627 75127 7590 11/29/2019 DENTONS US LLP (CITI CUSTOMER NUMBER) ATTN: Eric Sophir P.O. BOX 061080 CHICAGO, IL 60606-1080 EXAMINER RETTA, YEHDEGA ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 11/29/2019 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): #sg.citi-docket@dentons.com eric.sophir@dentons.com patents.us@dentons.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ELISABETH FRIEDMAN, FRED IRWIN, MARK JOHNSON, ANDREAS T. LIEVEN, DIETER PFUNDT, NEIL POTTER, ANDREAS RASCHDORF, PETER RAYNER, and MARIA TORREMANTE ____________ Appeal 2018-002026 Application 08/836,713 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1–53. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Citibank, N.A. (Appeal Br. 1.) Appeal 2018-002026 Application 08/836,713 2 THE INVENTION Appellant claims a computer system for data management and to a method for operating said system, and more particularly to an automated warrant trading system. (Spec. 1.) Claim 1 is representative of the subject matter on appeal. 1. A computer system for data management including at least the management of data relating to the trading of warrants, stocks, bonds, derivatives or foreign exchanges, comprising: an input device; a display to present a first mask to receive an input from a user of a request for specific data via said input device from a data processing server, wherein the request for specific data includes a request for a price quote based on a specific warrant, stock, bond, derivative, or foreign exchange, the volume of a proposed transaction for that warrant, stock, bond, derivative, or foreign exchange, and whether to buy or sell the warrant, stock, bond, derivative, or foreign exchange, wherein a computer associated with the display sends the request for specific data to the data processing server to obtain the price quote based on a specific warrant, stock, bond, derivative, or foreign exchange, the volume of the proposed transaction for that warrant, stock, bond, derivative, or foreign exchange, and whether to buy or sell the warrant, stock, bond, derivative, or foreign exchange; the data processing server to obtain the specific data from a rate server to start a timer at a starting time when said display is displaying a second mask including said specific data based upon the request from the user and that satisfies the request, including the price quote and the volume, wherein the specific data shown in the second mask is presented as the proposed transaction; wherein said data processing server, after obtaining said requested data, holds the requested data for a predetermined time period Tset; wherein said computer system performs a transaction based on the requested data when at a current time a transaction request based upon the requested data is inputted via the input Appeal 2018-002026 Application 08/836,713 3 device before said timer has a time measurement that exceeds said predetermined time period Tset; wherein the time measurement is the difference between the starting time and the current time; and wherein the computer system releases the requested data and displays a time-out notice when the time measurement exceeds the predetermined time period Tset and the computer system no longer performs the transaction based on the requested data; wherein the computer system obtains an updated re- request via said input device from the data processing server after the time-out notice for displaying a third mask includes a second specific data based upon the re-request from the user comprising a second price quote based on a specific warrant, stock, bond, derivative, or foreign exchange, the volume of a proposed transaction for that warrant, stock, bond, derivative, or foreign exchange, and whether to buy or sell the warrant, stock, bond, derivative, or foreign exchange; and a message router to convey the requested data between the data processing server and the rate server. THE REJECTIONS Claims 1–53 are rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter (abstract idea) without significantly more. Claims 1–53 are rejected on the ground of nonstatutory obviousness- type double patenting as being unpatentable over claims 1–40 of U.S. Patent 7,130,823 B1. Claims 1–9, 14–35, and 39–53 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Broka (US 5,809,483; iss. Sept. 15, 1998) in view of Trojan (US 5,297,032; iss. Mar. 22, 1994) further in view of AOFEA (Supplement to Corporate Finance, Automation of foreign exchange activity, 20–23 (Sept. 1992)). Appeal 2018-002026 Application 08/836,713 4 Claims 10, 11, 36, and 37 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Broka in view of Trojan in view of AOFEA and further in view of Adamson (William A. Adamson et al., Joining Security Realms: A Single Login for NetWare and Kerberos, CITI Tech. Report 95-1, 3–13 (Feb. 7, 1995)). Claims 12, 13, and 38 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Broka in view of Trojan in view of AOFEA and further in view of Alsberg (US 4,672,572; iss. June 9, 1987). ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1–53 under 35 U.S.C. § 101. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat else is there in the claims before us?” . . . To answer that question, . . . consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. . . . [The Court] . . . described step two of this analysis as a search for an “‘inventive concept’”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Appeal 2018-002026 Application 08/836,713 5 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)) (citations omitted). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. In so doing we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51-57 (Jan. 7, 2019) (“Guidance”). The Examiner determines that the claims are directed to buying and selling of warrants, stocks, etc. (Final Act. 2). The Examiner also determines that the claims are directed to a mental process that can be performed in the human mind or by using pen and paper and to comparing new and stored information and using rules to identify options. (Final Act. 2.) The Specification discloses that the invention is an automated warrant trading system. The Specification also discloses that in the prior art, the trading of warrants was done by a consumer by searching by telephone or in Appeal 2018-002026 Application 08/836,713 6 publications to find the best warrant for the consumer. This search and the determination that a particular warrant was the best for a customer necessarily involved evaluation, judgment, and opinion. The Specification also discloses that the invention is a computer system for data management including management of data relating to the trading of warrants. Specifically, the Specification discloses that specific data which relates to warrant rates is input, read, processed and held for a predetermined time period and then the transaction is performed relating to the data when a transaction is inputted before the timer exceeds a predetermined time period. As such, Appellant’s disclosure supports the Examiner’s determination that the claims are directed to buying and selling of warrants and a mental process that can be performed in the human mind or by using pen and paper and to comparing new and stored information and using rules to identify options. Consistent with this disclosure, claim 1 recites “a display to present a first mask to receive an input from a user of a request for specific data . . . wherein the request . . . includes a request for a price quote based on a specific warrant, stock, bond . . . ,” and “said computer system performs a transaction based on the requested data.” The buying and selling of warrants is a commercial interaction and thus is a certain method of organizing human activity, i.e., a fundamental economic practice which is a judicial exception. Guidance, 84 Fed. Reg. at 52. Claim 1 also recites “obtain[ing] . . . specific data . . . based upon the request from the user . . . including the price quote and the volume . . . the specific data shown . . . is presented as the proposed transaction.” These recitations relate to a user requesting data about a specific warrant including Appeal 2018-002026 Application 08/836,713 7 the price. The user upon receiving the data, determines whether to purchase the warrant and if so “a transaction request based upon the requested data is inputted.” This processing of data related to whether to purchase a warrant is a method that humans go through in their minds with the help of a pen and paper. In this regard, a human obtains the price of a warrant and decides based on the evaluation of the warrant and the price whether to purchase the warrant. Claim 1 constitutes “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving contractual relations are directed to abstract ideas). As such, claim 1 also recites a mental process which is also a judicial exception. We thus agree with the Examiner’s findings that the claims are directed to the judicial exceptions of a fundamental economic practice and a mental process. Turning to the second prong of the “directed to test,” claim 1 requires a “computer system,” “a server” and “a router.” The recitation of these does not impose “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53. We find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in independent claim 1 invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to Appeal 2018-002026 Application 08/836,713 8 perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). We also find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg. at 55. In this regard, the recitation does not affect an improvement in the functioning of the computer system, server or router or other technology, does not recite a particular machine or manufacture that is integral to the claims, and does not transform or reduce a particular article to a different state or thing. Id. Thus, claim 1 recites judicial exceptions that are not integrated into a practical application and thus claim 1 is directed to “abstract ideas.” Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas, the claims must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)). Appeal 2018-002026 Application 08/836,713 9 The introduction of a computer, a server and a router into the claims does not alter the analysis at Alice step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223–24 (alterations in original) (citations omitted). Instead, “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Id. at 225. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the Appeal 2018-002026 Application 08/836,713 10 trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis- access/display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. The claims do not, for example, purport to improve the functioning of the computer itself. As we stated above, the claims do not affect an improvement in any other technology or technical field. The Specification Appeal 2018-002026 Application 08/836,713 11 spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of information access under different scenarios. (See, e.g., Spec. 2, 6). Thus, the claims at issue amount to nothing significantly more than instructions to apply the abstract idea of information access using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent- eligible invention. See Alice, 573 U.S. at 226. We have reviewed all the arguments (Appeal Br. 12–15) Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of completeness, we will address various arguments in order to make individual rebuttals of same. We are not persuaded of error on the part of the Examiner by Appellant’s argument that the pending claims are eligible because they provide a graphical user interface to dynamically display stock prices and solve a problem that specifically arises due to the rapid, fickle, and volatile nature of trading transactions. (Appeal Br. 21.) We agree with the Examiner’s response to this argument found on page 2 of the Answer. Specifically, we agree that the user interface is not being used in any novel and unique way but performs functions of a graphical user interface typically found in any generic computer. The Specification supports this finding by disclosing that the user interface is one that is included in a personal computer and that the input unit can be realized by a key board, a mouse or any other input device and the display unit can be realized by a standard personal computer monitor. (Spec. 6.) Appeal 2018-002026 Application 08/836,713 12 Appellant also argues that the claims are similar to the claims in Trading Technologies International, Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017). (Appeal Br. 12–13.) The claims in Trading Technologies recited “dynamically displaying a second indicator in one of a plurality of locations in an ask display region, each location in the ask display region corresponding to a price level along the common static price axis.” Trading Techs., 675 F. App’x at 1003. No such dynamic positioning of data is recited in the claims at hand. In a related precedential Trading Technologies case, also reciting a graphical user interface, the Court held “[t]he claims are focused on providing information to traders in a way that helps them process information more quickly, not on improving computers or technology.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019). Similarly, the claims here are focused on providing information to users in a way that helps them process information more quickly, not on improving computers or technology. In this regard, the invention of claim 1, provides a system for traders to provide instantaneous data needed processing data transactions. (Spec. 2.) We also are unpersuaded of error on the part of the Examiner by Appellant’s argument that the pending claims provide a novel sequence of steps to provide a more enhanced computer system. (Appeal Br. 13.) We do not agree that claim 1 recites a more enhanced computer system because as we find above, the computer components recited in claim 1 are generic. Further, to the extent Appellant argues that the pending claims recite “significantly more” because the claimed invention includes a novel sequence of steps, Appellant misapprehends the controlling precedent. Although the second step in the Alice/Mayo framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or Appeal 2018-002026 Application 08/836,713 13 non-obviousness, but rather, a search for “‘an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 78–79. See, e.g., Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”). We are likewise not persuaded of error on the part of the Examiner by Appellant’s argument that the instant claims are similar to the claims in McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). (Appeal Br. 14.) Appellant contends that as in McRO, the instant claims recite a specific implementation of a technology- based solution with enough specificity that the claims do not preempt the idea of buying and selling warrants. We do not agree that the claimed invention is analogous to the claimed invention in McRO. The claims in McRO were directed to a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type. McRO, 837 F.3d at 1313. By contrast, the independent claims under appeal recite a system for obtaining data regarding a specific warrant, stock, etc., and placing a request for a transaction before a predetermined time period. Unlike McRO, the claims here are directed to actions that could be performed by a human operator, albeit in a time consuming fashion and involve no improvements to the computer system or any other technology. We also do not agree with Appellant that the claims recite a solution to a problem rooted in computer technology similar to the claims in Appeal 2018-002026 Application 08/836,713 14 773 F.3d at 1257 (Fed. Cir. 2014), where the Court noted that a claim may amount to more than any abstract idea recited in the claims when it addresses a business challenge, such as “retaining website visitors,” where that challenge is particular to a specific technological environment, such as the Internet. Appellant contends that the claim addresses technical challenges that existed and improves the functioning of known systems. (Appeal Br. 15.) In DDR, the court stated that “the . . . patent’s claims address the problem of retaining website visitors that, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after ‘clicking’ on an advertisement and activating a hyperlink.” DDR Holdings, 773 F.3d at 1257. This was done in the claim by serving a composite page with content based on the link that was activated to serve the page. In contrast, claim 1 addresses the problem created by a time difference between placing a buy/sell order and its implementation. Using a computer system to hold the price for a predetermined time period in order for the user to place a transaction request is a solution to a trading problem not a solution to a technical problem. That this may be assisted with a computer system is not pertinent to determining whether the claim itself provides a technical solution to a technical problem. A simple mathematical algorithm such as addition is equally useful in solving technical problems, but simply automating it is insufficient to make it not an abstract idea. And, unlike the situation in DDR, we find no indication in the record, nor does Appellant direct us to any indication, that a computer network, or the Internet, in particular, is used other than in its normal, expected, and routine manner, e.g., for receiving and transmitting information. Appeal 2018-002026 Application 08/836,713 15 In view of the foregoing, we will sustain this rejection as it is directed to claim 1. We will also sustain the rejection as it is directed to the remaining claims because Appellant has not argued the separate eligibility of these claims. NON-STATUTORY DOUBLE PATENING REJECTION The Appellant has not challenged this rejection. (Appeal Br. 12.) Therefore, this rejection is summarily sustained. 35 U.S.C. § 103 REJECTIONS We will not sustain the rejections under 35 U.S.C. §103(a) because we agree with Appellant that the prior art does not disclose “wherein the computer system obtains an updated re-request via said input device . . . after the time-out notice for displaying . . . second specific data based upon the re-request from the user” as required by claim 1 and the remaining independent claims. (Emphasis added.) The Examiner relies on AOFEA for teaching this subject matter. However, AOFEA discloses that the price is updated in real-time every 30 or 60 seconds, not based on a time-out or a re- request from the user as required by claim 1. In view of the foregoing, we will not sustain this rejection as it is directed to claim 1. We will not sustain the 35 U.S.C. §103(a) rejections directed to the remaining claims because each of the remaining claims recites the subject matter we have found missing in AOFEA and the Examiner relies on AOFEA for teaching this subject matter in rejecting each of the remaining claims. Appeal 2018-002026 Application 08/836,713 16 CONCLUSION The decision of the Examiner to reject claims 1–53 is affirmed. In Summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–53 101 Eligibility 1–53 1–53 Nonstatutory Double Patenting 1–53 1–9, 14–35, 39–53 103 Broka, Trojan, AOFEA 1–9, 14–35, 39–53 10, 11, 36, 37 103 Broka, Trojan, AOFEA, Adamson 10, 11, 36, 37 12, 13, 38 103 Broka, Trojan, AOFEA, Alsberg 12, 13, 38 Overall Outcome 1–53 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)(1)(iv) (2016). AFFIRMED Copy with citationCopy as parenthetical citation