Ex Parte Haller

Patent Trial and Appeal Board

Nov 21, 2018

14548908 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/548,908 11/20/2014
35811 7590 11/26/2018
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
Thomas F. Haller
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.
NGI-14-1073CON 5693
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
11/26/2018 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS F. HALLER
Appeal2017-009923
Application 14/548,908 1
Technology Center 3600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-7 and 13-15. Claims 8-12 are withdrawn. We
have jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies NYSE Group, Inc. as the real party in interest. (App.
Br. 1.)
Appeal2017-009923
Application 14/548,908
THE INVENTION
Appellant's disclosed and claimed invention is directed to a trading
platform adapted for pairs trading of unrelated securities from one or more
asset classes using a single order approach. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A computer-implemented method comprising:
in a computer system comprising a paring module, a
trading engine module, an order books module and at least one
database structure, said database structure defining a plurality
of order books and storing data defining predefined pairs of
unrelated securities as single orders in said plurality of order
books:
receiving, by the pairing module over the Internet from a
remote computing device, a selection of a predefined pair of
unrelated securities;
creating, by the pairing module, a pairs trade order based
on said selection of the predefined pair, said pairs trade order
comprising a first leg and a second leg;
entering, by the order books module, said pairs trade
order as a single order into a corresponding order book, from
among the plurality of order books, associated with the
selection, the pairs trade order having order parameters, a
portion of the order parameters associated with the first leg,
another portion of the order parameters associated with the
second leg;
automatically and continuously attempting, by the trading
engine module, to associate the order parameters retrieved from
said order book to information in other trade orders; and
causing, by the trading engine module, a programmed
computer to execute said pairs trade order when the order
parameters associated with each of said first leg and said second
leg correspond to the information in the other trade orders.
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REJECTIONS 2
The Examiner rejected claims 1-7 and 13-15 under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception without
significantly more. (Final Act. 7 .)
ISSUE ON APPEAL
Appellant's arguments in the Appeal and Reply Briefs present the
following issue: 3
Whether the Examiner erred in finding claims 1-7 and 13-15 as
directed to non-statutory subject matter. (Reply Br. 2-5.)
ANALYSIS
The Examiner concludes the pending claims are patent-ineligible
under 35 U.S.C. § 101 because:
[Independent claim 1] in its entirety is clearly focused on the
combination of those abstract-idea processes of "receiving",
"creating", "entering", "attempting to associate" and "causing
to execute". In other words, the claims describe[] collecting
information, creating a pairs trade order, attempting to
associate[ e] information and executing an order based on the
association. The advance they purport to make is a process of
collecting information, analyzing the information and executing
a trade order based on the analysis.
2 The rejection of claims 1-7 under 35 U.S.C. § 112, second paragraph (see
Final Act. 13) was withdrawn in the Answer. (Ans. 5.)
3 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Mar. 22, 2017); the Reply
Brief (filed July 17, 2017); the Final Office Action (mailed Dec. 22, 2016);
and the Examiner's Answer (mailed May 18, 2017) for the respective
details.
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Application 14/548,908
(Ans. 3.) The Examiner further finds that there is nothing in the claims that
is significantly more than this abstract idea, because "the additional elements
( e.g. individual modules connected to the computer system) only perform
functions which are well-understood, routine and conventional" (Final Act.
5) and here a "computer is employed for its most basic functions of
repetitive data processing as an obvious mechanism for permitting a solution
to be achieved more quickly." (Ans. 3.)
Appellant argues "the Examiner listed only general aspects ( or the
'gist') of each claim limitation individually, and then used these
generalizations to render the entire claim abstract." (App. Br. 6.)
Particularly, Appellant contends the Examiner "has not considered
Appellant's unconventional database structure and data handling mechanism
which allows for the efficient processing of paired orders of unrelated
securities." (Reply Br. 3--4.) Appellant cites Trading Technologies
International, Inc. v. CQG, INC, 675 Fed.Appx. 1001 (2017) (non-
precedential) as acknowledging "that improvements such as speed, accuracy
and usability in a trading system are indeed technical improvements that
include inventive, patent-eligible concept(s) (despite relating to a trading
system)." (App. Br. 8, emphasis in original.)4
Appellant also contends the claims are statutory pursuant to Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) as the claims
"similarly include a reconfigured database structure" (App. Br. 13,
emphasis in original) and also contends the claims are statutory pursuant to
4 We note the "specific improvement" in Trading Technologies refers to the
"claimed graphical user interface." Trading Technologies, 675 F. App'x at
1006.
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Application 14/548,908
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016), DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (2014), and Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350
(Fed Cir. 2016). (App. Br. 14--15.)
We are not persuaded of Examiner error. The Supreme Court has
long held that "[l]aws of nature, natural phenomena, and abstract ideas are
not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347,
2354 (2014) (quoting Assoc.for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 589--90 (2013)). The "abstract ideas" category embodies
the longstanding rule that an idea, by itself, is not patentable. Alice Corp.,
134 S. Ct. at 2354--55 (quoting Gottschalkv. Benson, 409 U.S. 63, 67
(1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355. The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. If the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims "individually and 'as an ordered combination'" to determine
whether there are additional elements that "'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to "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
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[ineligible concept] itself."' Id. ( quoting Mayo, 566 U.S. at 73.) The
prohibition against patenting an abstract idea "'cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment' or adding 'insignificant postsolution activity."' Bilski v.
Kappas, 561 U.S. 593, 610-11 (2010).
Turning to the first step of the Alice inquiry, we agree with the
Examiner's determination that the claims are directed to the abstract idea of
a "executing a trade order based on [] analysis." (Ans. 3.)
There is no definitive rule to determine what constitutes an "abstract
idea." Rather, the Federal Circuit has explained that "both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous
cases." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir.
2016); see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016) (explaining that, in determining whether claims are
patent-eligible under § 101, "the decisional mechanism courts now apply is
to examine earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were decided").
The Federal Circuit also noted that "examiners are to continue to determine
if the claim recites (i.e., sets forth or describes) a concept that is similar to
concepts previously found abstract by the courts." Amdocs, 841 F.3d at
1294 n.2.
Here, the Examiner determines that the claimed steps of "receiving,"
"creating," "entering," "attempting ... to associate," and "causing ... to
execute" are the abstract concept of "collecting information" and "analyzing
the information." We agree, as our reviewing court has held, that collecting
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information, including when limited to particular content, analyzing it, and
outputting the result are steps within the realm of abstract ideas. See, e.g.,
Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed Cir.
2016); In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607,613 (Fed. Cir.
2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349
(Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). Additionally, as
further explained below, Appellant does not persuade us that the Examiner
has oversimplified the claims "to the 'gist' of certain concepts."
Turning to the second step of the Alice inquiry, we find nothing in the
claims that adds anything "significantly more" to transform the abstract idea
of executing a trade order. Alice, 134 S. Ct. at 2357. Beyond an abstract
idea, the claims merely recite "'well-understood, routine, conventional
activit[ies]."' Id. at 2359 (quoting Mayo, 566 U.S. at 73).
Appellant makes the related arguments that the Examiner has
oversimplified the claims and that in doing so "has not considered
Appellant's unconventional database structure and data handling
mechanism," which adds significantly more. We disagree, as Appellant
offers no factual support for the assertion that Appellant's claimed invention
includes an unconventional database structure and data handling mechanism.
Although the claim recites a "database structure" that defines "a
plurality of order books and storing data defining predefined pairs of
unrelated securities as single orders in said plurality of order books," the
disclosure fails to describe this structure in any terms indicating a database,
much less an unconventional database, is used. See particularly Paragraph
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26 of the specification (stating that a "machine-readable storage medium"
could include a "database"), and Paragraphs 3-5, 7, 16, 20, 21, 27, and 28
and Figs. 1--4, of the specification, the portions of the disclosure that
Appellant identifies (at App. Br. 2) in the Summary of Claimed Subject
Matter regarding the "database structure." Absent some description
identifying an "unconventional database structure," it is not possible to
discern anything that constitutes "significantly more" herein, and thus
making the claim statutory as in the decisions cited by Appellant. Further,
"merely adding computer functionality to increase the speed or efficiency of
the process does not confer patent eligibility on an otherwise abstract
idea." Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1370 (Fed. Cir. 2015); see also Credit Acceptance Corp. v. Westlake
Services, 859 F.3d 1044, 1057 (Fed. Cir. 2017).
As the claimed combination fails to add significantly more to the
abstract idea, we affirm the Examiner's non-statutory subject matter
rejection of independent method claim 1 and corresponding independent
system claim 7, and dependent claims 2-6 and 13-15.
CONCLUSION
For the reasons stated above, we affirm the Examiner's non-statutory
subject matter rejection of claims 1-7 and 13-15.
DECISION
The Examiner's decision rejecting claims 1-7 and 13-15 under 35
U.S.C. § 101 is affirmed.
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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 )(iv).
AFFIRMED
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