Ex Parte Amaitis et al

Patent Trial and Appeal Board

Jul 19, 2018

14027955 (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/027,955 09/16/2013
63710 7590 07/23/2018
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
LeeAmaitis
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
04-6186-C3 8351
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
07/23/2018 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):
patentdocketing@cantor.com
lkorovich@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 LEE AMAITIS, CHRISTOPHER JOHN DA VIE, and
GUY IAN OLIVER RICHES
Appeal 2016-006299
Application 14/027 ,955
Technology Center 3700
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
KENNETH G. SCHOPPER, 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 of the final
rejection of claims 1-1 7, 20, and 21 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.
Appeal2016-006299
Application 14/027 ,955
THE INVENTION
The Appellants' claimed invention is directed to a system and method
for wagering in a financial market environment (Spec., para. 2). Claim 11,
reproduced below, is representative of the subject matter on appeal.
11. A method comprising:
causing, by at least one processor, an electronic display to
display:
a first value of a financial indicator, the first value comprising a
value determined based on a current value of the financial indicator;
a first icon for selecting a first bet that the financial indicator
will be greater than the first value at a designated future time;
a second icon for selecting a second bet that the financial
indicator will be less than the first value at the designated future time;
receiving, by the at least one processor from a first user, a
selection of ( 1) the first bet and (2) a wager amount for the first bet;
tracking, by the at least one processor, a current value of the financial
indicator until the designated future time;
determining, by the at least one processor, whether a value of
the financial indicator at the designated future time is greater than the
first value; and
settling, by the at least one processor, the first bet based on the
act of determining whether a value of the financial indicator at the
designated future time is greater than the first value.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-17, 20, and 21 are rejected on the grounds of
nonstatutory double patenting as being unpatentable over claims 1-20 of
U.S. Patent No. 8,535,138
2. Claims 1-17, 20, and 21 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
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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 evidence 1.
ANALYSIS
Rejection under Nonstatutory Double Patenting
The Appellants argue that the rejection of claims 1-17, 20, and 21 is
improper because it "does not show how any specific claim of the present
application corresponds to any specific reference claim" (Appeal Br. 6).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2-4, Ans. 5-8).
We agree with the Examiner. The rejection of record has stated that
"[a]lthough the claims at issue are not identical, they are not patentably
distinct from each other because the claims are virtually identical- except for
two minor limitations ( which appear in claims 3 & 13 of the instant
application rather than claims 1 & 11 of the patent), the claims are identical"
(Final Act. 4). Here, the rejection is not so uninformative that it prevents the
Appellants from recognizing and seeking to counter the grounds of rejection.
See In re Jung, 637 F.3d 1356 at 1362. The Appellants have provided no
specific arguments related to the actual claim language at hand. Regardless,
a review of the rejection of claim 1, for instance, finds the Examiner's
determination for rejection under double patenting to be proper. As the
1 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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Application 14/027 ,955
Appellants have provided no specific arguments related to the actual claim
language at hand, this rejection of record is sustained.
Rejection under 35 U.S.C. § 101
The Appellants argue that the rejection of claim 11 has not been
properly identified as an abstract idea (Appeal Br. 9, 10). The Appellants
also argue that the claim is directed to "significantly more" than the alleged
abstract idea (Appeal Br. 10, 11, Reply Br. 2-4).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Rej. 2, Ans. 2-5, 8-10).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a "new and useful process, machine, manufacture,
or composition of matter." 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 11 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
This is a search for an "inventive concept" an element or combination of
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Application 14/027 ,955
elements sufficient to ensure that the claim amounts to "significantly more"
than the abstract idea itself. Id. The Court also stated that "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention". Id at 2358.
Here, we determine that the claim is directed to the concept of the
placement and settling of a bet on a financial indicator. This is a
fundamental economic practice long prevalent in our system of commerce
and is an abstract idea beyond the scope of§ 101. The Specification
indicates at para. 2 that the invention is directed to a method for wagering in
a financial environment.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function. The Specification
at paras. 36, 40, and 43 for instance discloses using conventional computer
components including computer displays, cellular telephones, networks, and
processors for their known functions in a conventional manner.
We note the point about pre-emption (Appeal. Br. 12). 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,
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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.").
For these above reasons, the rejection of claim 11, and its dependent
claims which are drawn to similar subject matter, is sustained. Claim 20 and
its dependent claim 21 are directed to similar subject matter and the rejection
of these claims is sustained as well.
We reach the same conclusion as to independent system claim 1 and
its dependent claims. Here, as in Alice, "the system claims are no different
in substance from the method claims. The method claims recite the abstract
idea implemented on a generic computer; the system claims recite a handful
of generic computer components configured to implement the same idea."
Alice 134 S. Ct. at 2351. "[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." Id. at 2358 (quoting Mayo, 132 S. Ct. at
1294).
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CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-17, 20, and 21 on the ground of nonstatutory double
patenting.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-17, 20, and 21 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
DECISION
The Examiner's rejection of claims 1-17, 20, and 21 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). See 37 C.F.R. §
1.136(a)(l )(iv).
AFFIRMED
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