Ex Parte Annunziata

Patent Trials and Appeals Board

Mar 15, 2019

13875723 - (D) (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/875,723 05/02/2013
35811 7590 03/19/2019
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Vincent P. Annunziata
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.
TC0-10-1367DIV 3572
EXAMINER
WEISBERGER, RICHARD C
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/19/2019 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VINCENT P. ANNUNZIATA
Appeal2018-002884
Application 13/875,723
Technology Center 3600
Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH and
JAMES B. ARPIN, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 is appealing the final rejection of claims 1-20 under
35 U.S.C. § 134(a). Appeal Brief 1. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Introduction
The invention is directed to "a system for trading commodities and the
like over the Internet." Specification ,r 1.
1 Appellant identifies TRADECAPTURE OTC CORP. as the real party in
interest. Appeal Brief 1.
Appeal2018-002884
Application 13/875,723
Illustrative Claim
1. A system for efficient data retrieval comprising:
a computer;
a communications link between said computer and the
Internet;
an indication database, accessible by said computer,
containing a plurality of indications associated with one or
more submitters, said plurality of indications containing
information corresponding to open bids or offers for
commodities;
a user database, accessible by said computer, containing
a plurality of user files, wherein at least one user file among
said plurality of user files is associated with at least one
submitter among the one or more submitters, said at least one
user file containing a plurality of transaction parameters
corresponding to one or more indications among the plurality of
indications associated with said at least one submitter, said
transaction parameters governing presentation of said one or
more indications to other users and acceptance of said one or
more indications by said other users;
software executing on said computer that causes the
computer to:
receive an indication selection by at least one of
the other users over said communication link,
search the indication database and retrieve an
indication corresponding to said indication selection,
identify the at least one submitter associated with
the retrieved indication,
search the user database for the at least one user
file associated with the at least one submitter and retrieve
at least one transaction parameter associated with the
retrieved indication from said at least one user file, and
process the retrieved indication corresponding to
said indication selection for the at least one of the other
users in accordance with the at least one transaction
parameter retrieved from the at least one user file.
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Appeal2018-002884
Application 13/875,723
Rejection on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final Action
2-5.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief ( filed August 1, 2017), the Reply Brief ( filed
January 18, 2018), the Final Action (mailed March 9, 2017) and the Answer
(mailed November 30, 2017), for the respective details.
35 U.S.C. § 101 rejection
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101 because the claims are directed to an abstract idea
comprising a fundamental economic practice or organizing human activity,
and do not include additional elements that are sufficient to amount to
significantly more than the abstract idea. Final Action 2; see Alice Corp.
Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (describing the two-
step framework "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts").
After the mailing of the Answer and the filing of the Briefs in this
case, the US PTO published revised guidance on the application of§ 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the
Office first looks to whether the claim recites:
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Appeal2018-002884
Application 13/875,723
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.0S(a}-(c), (e}-(h) (9th
ed. 2018).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.0S(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, and we add the
following primarily for emphasis and clarification with respect to the
Memorandum.
Appellant argues the pending claims are not directed to an abstract
idea because:
[T]he Examiner alleges that Appellant's claim "recites a method
trading physical and derivative commodities electronically."
However, this initial characterization of Appellant's claims is
completely incorrect. Instead, Claim 1 is directed to a "system/or
efficient data retrieval." The fact that Appellant's claim may be
related to ( or implemented in the field of) electronic trading does
not make the claim any less directed to a system for efficient data
retrieval.
Appeal Brief 10.
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Appeal2018-002884
Application 13/875,723
We agree with the Examiner's determination that the claims are
directed to an abstract idea. See Final Action 3--4. The Abstract discloses
that the invention is:
A system for trading commodities and the like comprising
a computer, a communications link between the computer and
the Internet, a database, accessible by the computer, containing a
plurality of user files wherein each of the user files contains a
plurality of transaction parameters corresponding to one or more
indications associated with the user file.
The Specification discloses:
Accordingly, it is an object of the invention to provide a
system for facilitating commodity transactions.
Another object of the present invention is to provide a
system that permits the user to control how any bids or of±ers
submitted are acted upon and viewed by other users.
Yet another object of the present invention is to provide
such a system that pennits users to operate within specific
exchanges having specific commodities.
It is a further object of the present invention to provide
such a system that enables various exchanges to create and share
commodities within a unified database.
It is another object of the present invention to provide such
a system that permits the user to rapidly peruse a variety of
available transactions.
It is yet another object of the present invention to provide
such a system that operates over the Internet
Specification ,r,r 6-11.
Claim 1 recites "an indication database, accessible by said computer,
containing a plurality of indications associated with one or more submitters,
said plurality of indications containing information corresponding to open
bids or offers for commodities," "at least one user file containing a plurality
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Appeal2018-002884
Application 13/875,723
of transaction parameters corresponding to one or more indications among
the plurality of indications associated with said at least one submitter," and
wherein the software executes on the computer, a process upon "the
retrieved indication corresponding to said indication selection for the at least
one of the other users in accordance with the at least one transaction
parameter retrieved from the at least one user file." These steps comprise
fundamental economic principles or practices and/or commercial or legal
interactions; thus, the claim recites the abstract idea of "certain methods of
organizing human activity." Memorandum, Section I (Groupings of
Abstract Ideas); see Specification ,r 13. Our reviewing court has found
claims to be directed to abstract ideas when they recited similar subject
matter. See Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk .... "); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed.
Cir. 2012) (claims directed to abstract idea of processing loan information
through a clearinghouse); Accenture Glob. Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (claims reciting
"generalized software components arranged to implement an abstract
concept [of generating insurance-policy-related tasks based on rules to be
completed upon the occurrence of an event] on a computer" not patent
eligible).
Appellant argues:
Similar to the claims in Enfzsh, the Appellant's claims are
patent-eligible under § 101 at least because the claims are also
directed to a specific improvement to the way computers in this
art operate, embodied in an architecture and search functionality
for the efficient retrieval of data. For example, the claims define
two dedicated and independent databases, each specifically
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Application 13/875,723
purposed for storing and retrieving different types of
information. Of note, conventional systems in this art do not
segregate the data in this manner, nor do they implement separate
dedicated databases, as claimed.
Appeal Brief 5.
We do not find Appellant's arguments persuasive because the claims
utilize a computer system as merely a tool to create and share commodities.
See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir.
2016) ("[W]e find it relevant to ask whether the claims are directed to an
improvement to computer functionality versus being directed to an abstract
idea ... the focus of the claims is on the specific asserted improvement in
computer capabilities (i.e., the self-referential table for a computer database)
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool."). The claims do not recite an
additional element or elements that reflect an improvement in the
functioning of a computer, or an improvement to other technology or
technical field. See Final Action 5 ("The combination of elements is no
more than the sum of their parts, and provides nothing more than mere
automation of verification steps. Mere automation of an economic business
practice does not provide significantly more (i.e., provide an inventive
concept.")); Alice, 573 U.S. at 222 ("In holding that the process was patent
ineligible, we rejected the argument that 'implement[ing] a principle in some
specific fashion' will 'automatically fal[l] within the patentable subject
matter of§ 101."' (alterations in original) (quoting Parker v. Flook, 437 U.S.
584, 593 (1978))).
Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Memorandum, Section III(A)(2)
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(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the
Judicial Exception Is Integrated Into a Practical Application). Nor do we
find the claim includes a specific limitation or a combination of elements
that amounts to significantly more than the judicial exception itself. See
Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a Judicial
Exception, Evaluate Whether the Claim Provides an Inventive Concept); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1359 (Fed. Cir. 2018) (Moore, J., concurring) ("the 'inventive concept'
cannot be the abstract idea itself'); see Answer 5-7; see also Specification
,r,r 5, 13 and 49.
Other than the abstract idea itself, the remaining claim elements only
recite generic computer components that are well-understood, routine, and
conventional. See Final Action 5---6; Specification ,r,r 13, 25 and 27; Alice,
573 U.S. at 226.
Accordingly, we agree with the Examiner's determination that claims
1-20 are patent ineligible. See Final Action 4--5.
DECISION
The Examiner's non-statutory subject matter rejection of claims 1-20
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ). See 37 C.F.R.
§ 1.136(a)(l )(v).
AFFIRMED
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