Ex Parte Studnitzer et al

Patent Trials and Appeals Board

Mar 6, 2019

14074661 - (D) (P.T.A.B. Mar. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/074,661 11/07/2013
12684 7590 03/08/2019
Lempia Summerfield Katz LLC/CME
20 South Clark Street
Suite 600
Chicago, IL 60603
FIRST NAMED INVENTOR
Ari Studnitzer
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.
4672-13018AUS 8209
EXAMINER
GAW,MARKH
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
03/08/2019 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):
mail@lsk-iplaw.com
docket-us@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
Exparte ARI STUDNITZER, ZACHARYBONIG,
RYAN EA VY, FRANK KMIEC, and SCOTT HENDERSON
Appeal2017-009786
Application 14/074,661 1
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ari Studnitzer et al. ("Appellants") seek our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 1-14, 16-28, and 30. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART and enter New Grounds of Rejection pursuant
to 37 C.F.R. § 41.50(b).
1 The Appellants identify Chicago Mercantile Exchange Inc., as the real
party in interest. App. Br. 2.
Appeal2017-009786
Application 14/074,661
THE INVENTION
Claim 1, reproduced below, is illustrative (with emphasis) of the
subject matter on appeal.
1. A system for protecting a market implemented by a
trading system comprising a hardware match engine coupled
therewith, the hardware match engine implementing a market
for an associated financial instrument comprising at least one
component and operative to attempt to match an incoming
order for at least one transaction for the associated financial
instrument with at least one other previously received but
unsatisfied order for a transaction counter thereto for the at
least one associated financial instrument, to at least partially
satisfy one or both of the incoming order or the at least one
other previously received order, the system comprising:
a first logic component operative to receive, via a
network, an incoming order from an associated market
participant of the plurality of market participants; and
a second logic component operative prior to forwarding
the incoming order to the hardware match engine coupled
therewith, to, based on the incoming order, one or more
previously received but unsatisfied orders and one or more
previously received satisfied orders for at least one financial
instrument submitted by any of the plurality of market
participants wherein one or more of the components thereof
remain incomplete, derive a particular risk of loss value unique
to the incoming order and to all of the plurality of market
participants computed as if the incoming order were to be at
least partially satisfied by at least one other previously received
but unsatisfied order and, based thereon, determine whether the
incoming order is valid or invalid and further to cause the valid
incoming order to be forwarded to the hardware match engine
or cause the hardware transaction receiver to at least
communicate notification of the invalid incoming order back to
the associated market participant, an administrator of the
trading system or a combination thereof, and wherein, when the
incoming order is determined to be invalid, compute an order
which, if satisfied, would cause a reduction in the derived risk
2
Appeal2017-009786
Application 14/074,661
of loss, and transmit a request for the computed order to the
plurality of market participants.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Bauerschmidt US 2007/0118460 Al May 24, 2007
Barker et al., Implementation method for trade between customer and
market maker, involves matching orders placed in order book against
customer's residual order, and matching market maker's residual
order to customer's residual order, Derwent: 2007-149380 (Thomson
Reuters, 2015) ("Barker").
WIKIPEDIA, Value at risk, http://en.wikipedia.org/wiki/Value_at_Risk;
(last visited "1/8/2015") ("Wikipedia").
The following rejection is before us for review:
Claims 1-14, 16-28, and 30 are rejected under 35 U.S.C. § 101 for
claiming patent-ineligible subject matter.
ISSUE
Did the Examiner err in rejecting claims 1-14, 16-28, and 30 under
35 U.S.C. § 101 for claiming patent-ineligible subject matter?
ANALYSIS
The rejection of claims 1-14, 16--28, and 30 under 35 U.S.C. § 1 OJ for
claiming patent-ineligible subject matter.
Representative claim
Other than a discussion relevant only to claim 30 (App. Br. 6-16), the
Appellants argued these claims as a group. See id. at 16-21. We select
3
Appeal2017-009786
Application 14/074,661
claim 1 (reproduced above) as the representative claim for this group, and
the remaining claims 2-14 and 16-28 stand or fall with claim 1. 3 7 C.F .R.
§ 4I.37(c)(l)(iv). We will address the Appellants' discussion of claim 30
separately.
Preliminary comment
In their briefs, the Appellants refer to prior USPTO guidance, 2014
Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618,
74619---633 (Dec. 16, 2014) (App. Br. 12); "Formulating a Subject Matter
Eligibility Rejection and Evaluating the Applicant's Response to a Subject
Matter Eligibility Rejection," USPTO Memorandum, Robert W. Bahr,
Deputy Commissioner For Patent Examination Policy, May 4, 2016 (App.
Br. 9-12); and, "Recent Subject Matter Eligibility Decisions [(McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) and Bascom
Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016))]," USPTO Memorandum, Robert W. Bahr, Deputy Commissioner
For Patent Examination Policy, November 2, 2016 (App. Br. 9, 10, 15).
Said guidance has been superseded by the 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(hereinafter "2019 Revised 101 Guidance"). 2019 Revised 101 Guidance 51
("Eligibility-related guidance issued prior to the Ninth Edition, R---08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.").
Accordingly, our analysis will not address the sufficiency of the
Examiner's rejection against the cited prior guidance. Rather, our analysis
will comport with the 2019 Revised 101 Guidance.
4
Appeal2017-009786
Application 14/074,661
Introduction
35 U.S.C. § 101 provides that "[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor."
In that regard, claim 1 covers a "machine" and is, thus, statutory
subject matter for which a patent may be obtained. 2 This is not in dispute.
However, the§ 101 provision "'contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014)
(quoting Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent-eligibility on the
ground that claim 1 is directed to an abstract idea. Eligibility is a question of
law based on underlying facts. SAP Am. v. Investpic, LLC, 890 F.3d 1016,
1020 (Fed. Cir. 2018).
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.
2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether a "claim is to a statutory category." 2019
Revised 101 Guidance 53; see also id. at 53-54 ("[C]onsider[] whether the
claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. [§] 101 .... ").
5
Appeal2017-009786
Application 14/074,661
Alice step one - the "directed to" inquiry
According to Alice step one, "[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept." Id. at 218
( emphasis added).
The Examiner determined that claim 1 is "directed to ... performing
risk control in a financial instrument trading system. The claims recite:
receiving orders from market participants, forwarding orders to matching
engine, deriving a risk of loss, communicating with transaction participants,
and validating the orders or parts of orders." Final Act. 3.
The Appellants contend that
the claims are directed to a novel and specific application for
determining potential risk to all participants in an electronic
trading system caused by a given order submitted by any one of
those participants based on the current state of the electronic
market and where an incoming order represents an unacceptable
risk of loss thereto, computing an order which would reduce
that risk and communicating a request to the market participants
to solicit submission of that order, as recited, for example, in
claim 1.
App. Br. 6. According to the Appellants,
[ t ]he claimed invention improves the ability of a system
administrator to protect a market, and market participants by
automating the evaluation of risk to the entire market of an
incoming order and computing desirable risk reducing orders
that would reduce overall market risk and attempting to get a
market participant to submit such an order. See, for example,
Appellants' Specification, paras. 92-97 and 264-267. The
claims recite a technical solution, deriving a risk of loss
associated with an order if it were to be at least partially
satisfied by at least one other previously received but
unsatisfied order and determining its validity and where not
valid, computing and soliciting an order to solicit from the
participants which would reduce that risk of loss, to a technical
6
Appeal2017-009786
Application 14/074,661
problem, protecting a market from invalid orders and losses
without actually transacting those orders and subsequently
having to unwind a completed transaction.
App. Br. 8-9 ( emphasis added).
The Appellants provide other characterizations of what claim 1 is
directed to ( e.g., "directed to solving a data communications problem" (id. at
12)) in responding to the Examiner's Alice step two determination which we
will address when we get to that step of the analysis.
Accordingly, there is a dispute over what claim 1 is directed to. Is it
directed to "performing risk control in a financial instrument trading system"
(Final Act. 3) or "a technical solution ... to a technical problem" (App. Br.
8-9)?
Claim Construction3
3 "[T]he important inquiry for a§ 101 analysis is to look to the claim."
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). "In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
'claim construction is not an inviolable prerequisite to a validity
determination under § 101.' However, the threshold of§ 101 must be
crossed; an event often dependent on the scope and meaning of the claims."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347--48
(Fed. Cir. 2015).
7
Appeal2017-009786
Application 14/074,661
We consider the claim as a whole4 giving it the broadest reasonable
construction 5 as one of ordinary skill in the art would have interpreted it in
light of the Specification 6 at the time of filing.
Claim 1 calls for a "system for protecting a market implemented by a
trading system comprising a hardware match engine coupled therewith."
The trading system comprises two things: a first logic component and a
second logic component.
[T]he system comprising:
a first logic component operative to receive, via a
network, an incoming order ... ; and
a second logic component operative prior to forwarding
the incoming order to the hardware match engine coupled
therewith, to ... derive ... , determine ... and further to cause .
. . to be forwarded to the hardware match engine or cause the
hardware transaction receiver to at least communicate
notification ... , and ... compute ... and transmit ....
Claim 1 ( emphasis added).
4 "In determining the eligibility of respondents' claimed process for patent
protection under § 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
5 2019 Revised 101 Guidance 53 n.14 (If a claim, "under its broadest
reasonable interpretation ... " ( emphasis added).).
6 "First, it is always important to look at the actual language of the claims ...
. Second, in considering the roles played by individual limitations, it is
important to read the claims 'in light of the specification."' Smart Sys.
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed.
Cir. 2017) (J. Linn, dissenting in part and concurring in part), citing Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among
others.
8
Appeal2017-009786
Application 14/074,661
Logic components were well known elements of generic computers 7
at the time the application was filed. See Spec. ,r 44 ("One example of a
reconfigurable logic is a field programmable gate array ('FPGA') which is a
reconfigurable integrated circuit."). They were known to be operative to
process information similar to that of a microprocessor. See id. ,r 50
("Implementing processing tasks and algorithms using an FPGA can yield
significant performance enhancements over implementations using
traditional microprocessors and operating systems.").
The "first logic component" and "second logic component" are part of
an "a trading system comprising a hardware match engine coupled
therewith" ( claim 1 ). However, the trading system (including a matching
engine) itself is generic. See, e.g., Spec. ,r 5 ("These electronically
submitted orders to buy and sell are then matched, if possible, by the
Exchange [(e.g., Chicago Mercantile Exchange Inc. (CME))], i.e. by the
Exchange's matching engine, to execute a trade."). Thus, Specification
conveys that the arrangement (i.e., ordered combination) of these computer
elements is conventional.
7 Cf Maxon, LLC v. Funai Corp., 726 Fed. App'x 797, 799-800 (Fed. Cir.
2018) (nonprecedential) ("The district court correctly found that the claims
recite only generic computing processes using functional language.
Analyzing the physical components of the claims, the district court noted
that the specifications do not limit the breadth of elements such as
'computer-readable medium,' 'logic,' 'processor,' or 'transceiver.' ... \Ve
agree that the representative claim does not recite anything beyond the
application of routine and conventional computer components.").
9
Appeal2017-009786
Application 14/074,661
The claim provides no structural details 8 that would distinguish the
individual "first logic component" and "second logic component" from those
that were well known at the time the application was filed.
Functionally, claim 1 calls on the "first logic component" to be
"operative to receive, via a network" certain type information, that being "an
incoming order from an associated market participant of the plurality of
market participants."
The difference between the claimed "first logic component" and other
well-known logic components is that the claimed "first logic component"
receives (via a network) said certain type of information. But that difference
alone is not patentably consequential. This is so because "[ c ]laim
limitations directed to the content of information and lacking a requisite
functional relationship are not entitled to patentable weight because such
information is not patent eligible subject matter under 35 U.S.C. § 101."
Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024,
1032 (Fed. Cir. 2018).
Functionally, claim 1 calls on the "second logic component" to be
"operative prior forwarding [ said information] to the hardware match engine
coupled therewith to" perform certain steps. The steps, as claimed, are as
follows:
1. derive a particular risk of loss value unique to the incoming
order and to all of the plurality of market participants
computed as if the incoming order were to be at least
8 Cf Move, Inc. v. Real Estate Alliance Ltd., 721 Fed. App'x 950 (Fed. Cir.
2018) (N onprecedential) ("Claim 1 is aspirational in nature and devoid of
any implementation details or technical description that would permit us to
conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.").
10
Appeal2017-009786
Application 14/074,661
partially satisfied by at least one other previously received
but unsatisfied order,
[based on the incoming order, one or more previously received but
unsatisfied orders and one or more previously received satisfied
orders for at least one financial instrument submitted by any of the
plurality of market participants wherein one or more of the
components thereof remain incomplete,]
2. based thereon, determine whether the incoming order is
valid or invalid,
3. and further ... cause
a. the valid incoming order to be forwarded to the hardware
match engine or
b .... the hardware transaction receiver to at least
communicate notification of the invalid incoming order back
to the associated market participant, an administrator of the
trading system or a combination thereof,
4. and wherein, when the incoming order is determined to be
invalid, compute an order which, if satisfied, would cause a
reduction in the derived risk of loss, and transmit a request
for the computed order to the plurality of market
participants.
This describes steps involved in a commercial interaction; that is, a
scheme for providing an order with a reduced risk of loss from that of an
invalid incoming order. More specifically, a particular risk of loss value
unique to an incoming order is derived and its validity or invalidity is
determined based on that value. If (a) the order is valid, it is forwarded to
the hardware match engine or (b) if the order is invalid, (i) a notification is
transmitted and (ii) (1) an order is computed which, if satisfied, would cause
11
Appeal2017-009786
Application 14/074,661
a reduction in the derived risk of loss, and (2) a request for the computed
order is transmitted.
The Specification describes embodiments for, for example, mitigating
risk in financial instrument trading systems. Spec. ,r 43. One technique is to
apply credit controls. Id. ,r,r 92-93. Another, as the one that is claimed,
involves providing an order with reduced risk. See id. ,r 269:
In one embodiment, the transaction validator 2004 may
be further operative, when the incoming order is determined to
be invalid, prevent the order from being forwarded to the match
engine 106. Alternatively, or in addition thereto, the
transaction validator 2004 may be further operative, when the
incoming order is determined to be invalid, cause the incoming
order to be only partially satisfied thereby reducing the derived
risk of loss. Alternatively, or in addition thereto, the transaction
validator 2004 may be further operative, when the incoming
order is determined to be invalid, compute an order which, if
satisfied, would cause a reduction in the derived risk of loss,
and transmit a request for the computed order to the plurality of
market participants 204. Alternatively, or in addition thereto,
where allowing the order would increase the risk of loss to
within a threshold value, the transaction validator 2004 may
further compute and advertise, e.g. solicit from the market
participants, an order calculated to reduce the derived risk.
Based on the record before us, the steps for carrying out the recited
reduced risk order scheme does not ask the "second logic component" to go
beyond its common information-processing functions. While computer-
based instructions can be patentably significant (see Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) andAncora Technologies,
Inc. v. HTC America, Inc., 908 F.3d 1343 (Fed. Cir. 2018)), here the instant
record does not sufficiently support the view that said steps have any non-
conventional effect on the "second logic component." To the contrary, the
record supports viewing the inclusion of the phrase "second logic
12
Appeal2017-009786
Application 14/074,661
component" as amounting to a mere instruction to implement the recited
scheme on a generic computer. Cf Alice, 573 U.S. at 225-26 ("Instead, the
claims at issue amount to 'nothing significantly more' than an instruction to
apply the abstract idea of intermediated settlement using some unspecified,
generic computer.").
Accordingly, we reasonably broadly construe claim 1 as being
directed to a reduced risk order scheme implemented on a generic computer
system.
The Abstract Idea 9
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea. 10 Based on our claim
construction analysis (above), we determine that the identified limitations
describe a type of commercial interaction, more particularly a scheme
whereby an order is provided of reduced risk. Since this is a method of
9 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines "whether a claim is 'directed to' a judicial exception," such as an
abstract idea. 2019 Revised 101 Guidance 53. Step 2A is two prong
mqmry.
10 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. "To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the
claim under examination (individually or in combination) that the Examiner
believes recites an abstract idea .... " 2019 Revised 101 Guidance 54.
13
Appeal2017-009786
Application 14/074,661
organizing human activity, it is an abstract idea. 11 The remaining (i.e., not
italicized) limitations do no more than require computer elements (i.e., a
hardware match engine, a first logic component, and a second logic
component) to be used as a tool to perform this abstract idea.
Improvement in the Functioning of a Computer 12 (Appellants'
Argument)
The Examiner's characterization of what the claim is directed to is
similar to our own, albeit our characterization is described at a lower level of
11 This corresponds to Prong One ("Evaluate Whether the Claim Recites a
Judicial Exception") (b) of Step 2A of the 2019 Revised 101 Guidance. "To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: ... (b) determine whether the identified limitation( s) falls within
the subject matter groupings of abstract ideas enumerated in Section I of the
[2019 Revised 101 Guidance]." 2019 Revised 101 Guidance 54. This case
implicates subject matter grouping "(b )": (b) Certain methods of organizing
human activity-fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions between people
(including social activities, teaching, and following rules or instructions).
Id. at 52.
12 This corresponds to Prong Two ("If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application") of Step 2A of the 2019 Revised 101 Guidance. 2019
Revised 101 Guidance 54. "A claim that integrates a judicial exception into
a practical application will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception." Id. One consideration, implicated here, that is "indicative that
an additional element ( or combination of elements)[] may have integrated
the exception into a practical application" (id. at 55) is if "[a]n additional
element reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field" (id.).
14
Appeal2017-009786
Application 14/074,661
abstraction. Cf Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed.
Cir. 2016) ("An abstract idea can generally be described at different levels of
abstraction. As the Board has done, the claimed abstract idea could be
described as generating menus on a computer, or generating a second menu
from a first menu and sending the second menu to another location. It could
be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.") The Appellants
dispute the Examiner's characterization. Presumably, the Appellants would
equally dispute our characterization.
We have reviewed the record and are unpersuaded as to error in our or
the Examiner's characterization of what claim 1 is directed to.
The Appellants' characterization of what the claims are directed to
does not appear to be any different than the Examiner's ( or the panel's
characterization). On page 6 of the Appeal Brief, the Appellants contend
that
the claims are directed to a novel and specific application for
determining potential risk to all participants in an electronic
trading system caused by a given order submitted by any one of
those participants based on the current state of the electronic
market and where an incoming order represents an unacceptable
risk of loss thereto, computing an order which would reduce
that risk and communicating a request to the market participants
to solicit submission of that order, as recited, for example, in
claim 1.
That characterization is similar to what the Examiner (and this panel) has
characterized claim 1 as being directed to. Later, bridging pages 8-9, the
Appellants argue that
[ t ]he claims recite a technical solution, deriving a risk of loss
associated with an order if it were to be at least partially
15
Appeal2017-009786
Application 14/074,661
satisfied by at least one other previously received but
unsatisfied order and determining its validity and where not
valid, computing and soliciting an order to solicit from the
participants which would reduce that risk of loss, to a technical
problem, protecting a market from invalid orders and losses
without actually transacting those orders and subsequently
having to unwind a completed transaction.
But this characterization is also similar to what the Examiner ( and this
panel) has characterized claim 1 as being directed to. Notwithstanding the
Appellants call it a "technical" problem and a "technical" solution, deriving
a risk of loss associated with an order, computing and soliciting an order to
solicit from the participants which would reduce that risk of loss does not
describe an improvement in computer functionality. It is just another way of
wording the claimed scheme for providing an order of reduced risk.
We note that the Appellants do argue that the claimed subject matter
is directed to an improvement in computer functionality - albeit in
challenging the Alice step two determination. See, e.g., App. Br. 12 (The
"claimed invention [is] ... directed to solving a data communications
problem."). As we explain in more detail below in our Alice step two
analysis, we are unpersuaded that the record supports such a characterization
of what claim 1 is directed to.
It is true that specific asserted improvements in computer capabilities,
when claimed, can render claimed subject matter not directed to an abstract
idea. Cf McRO, 837 F.3d at 1316 ("When looked at as a whole, claim 1 is
directed to a patentable, technological improvement over the existing,
manual 3-D animation techniques."). However, there is insufficient
evidence in the record before us that the claimed subject matter reflects any
specific asserted improvement in computer capabilities.
16
Appeal2017-009786
Application 14/074,661
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter."' Affinity Labs
of Texas v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfzsh, 822 F.3d at 1335, quoted in Apple, 842 F.3d at
1241; see alsoAncora, 908 F.3d at 1347 (We examine the patent's
"'claimed advance' to determine whether the claims are directed to an
abstract idea." Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303
(Fed. Cir. 2018). "In cases involving software innovations, this inquiry
often turns on whether the claims focus on 'the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an "abstract idea" for which computers are invoked merely as a
tool."' Id. (quoting Enfzsh, 822 F.3d at 1335-36); see BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1285-86 (Fed. Cir. 2018). Computers are
improved not only through changes in hardware; "[ s ]oftware can make non-
abstract improvements to computer technology .... " Enfzsh, 822 F .3d at
1335; see Finjan, 879 F.3d at 1304. We have several times held claims to
pass muster under Alice step one when sufficiently focused on such
improvements.
As we pointed out above in our Claim Construction analysis, the
Specification's description of the problem and solution shows the advance
over the prior art by the claimed invention is in a scheme for reducing risk
associated with orders, not on any improvement in computer functionality.
The heart of the invention lies in its financial-risk-reducing attributes, per a
particular commercial scheme . not the first and second "logic components"
17
Appeal2017-009786
Application 14/074,661
which, as the Specification indicates, are merely generic. Cf Intellectual
Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1328 (Fed. Cir. 2017)
("[T]he heart of the claimed invention lies in creating and using an index to
search for and retrieve data ... an abstract concept.").
We have carefully reviewed the Specification but can find no
disclosure of an improvement to computer functionality.
Rather than being directed to any specific asserted improvement in
computer capabilities, the record supports the view that the claimed subject
matter is directed to a reduced-risk order scheme. 13
We have considered all the Appellants' arguments challenging the
Examiner's determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner's determination that claim 1 is directed to an abstract idea.
Alice step two-Does the Claim Provide an Inventive Concept? 14
Step two is "a search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
13 See the 2019 Revised 101 Guidance 55 ("The courts have also identified
examples in which a judicial exception has not been integrated into a
practical application: An additional element merely recites the words 'apply
it' ( or an equivalent) with the judicial exception, or merely includes
instructions to implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea.").
14 This corresponds to Step 2B of the 2019 Revised 101 Guidance page 56
("[I]f a claim has been determined to be directed to a judicial exception
under revised Step 2A, examiners should then evaluate the additional
elements individually and in combination under Step 2B to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).").
18
Appeal2017-009786
Application 14/074,661
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 573 U.S. at 221 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined the following:
The applicant discloses that the invention relates to a method
for the use of "a hardware match engine", "logic component",
and "a network". See claims 1 and 2. There is no improvement
to another technology or technical field and there is no
improvement to the functioning of the computing device or the
computer system itself.
The elements of the instant process, when taken alone,
each execute in a manner routinely and conventionally expected
of these elements. The elements of the instant process, when
taken in combination, together do not offer substantially more
than the sum of the functions of the elements when each is
taken alone. That is, the elements involved in the recited
process undertake their roles in performance of their activities
according to their generic functionalities which are well-
understood, routine and conventional. The elements together
execute in routinely and conventionally accepted coordinated
manners and interact with their partner elements to achieve an
overall outcome which, similarly, is merely the combined and
coordinated execution of generic computer functionalities
which are well-understood, routine and conventional activities
previously known to the industry. Thus the claims do not effect
an improvement to another technology or technical field; and
the claims do not amount to an improvement to the functioning
of a computer itself; and the claims do not move beyond a
general link of the use of an abstract idea to a particular
technological environment.
Since there is no improvement to the devices or technical
fields the claims do not incorporate limitations significantly
more and do not recite meaningful limitations in the claim that
transform the judicial exception into a patent eligible
application such that the claim amounts to significantly more
than the judicial exception itself.
19
Appeal2017-009786
Application 14/074,661
The claims are not directed to a computer based solution
for solving a computer based problem. The claims do not recite
any such limitations.
The claim amounts to the application or instructions to
apply the abstract idea on a computer, and is considered to
amount to nothing more than requiring a generic computer
system to merely carry out the abstract idea itself.
As such, the claim, when considered as a whole, is
nothing more than the instruction to implement the abstract idea
in a particular, albeit well-understood, routine and conventional
technological environment.
Final Act. 3--4.
We agree with the Examiner's analysis and determination.
The Appellants cite earlier guidance and case law (e.g., Enfish, 822
F.3d 1327) for the proposition that claims directed to improvements to the
functioning of a computer are not directed to an abstract idea (App. Br. 10-
15). The Appellants make various statements that appear to be an attempt to
show that the claimed subject matter describes an improvement to the
functioning of a computer.
The Appellants argue that "the [ recited] steps impose meaningful
limits that allow for congestion reduction by conditioning the delivery of the
most current data based on the recipients ability to process it." Id. at 10.
The difficulty with this argument is that we can find no basis for it in
the claim or the Specification. Nowhere in the record is there any
suggestion that following the scheme as claimed on a generic computer
reduces congestion in communications. The Specification discusses
communication congestion but only as it relates to financial messages
impacting market communications. Spec. ,r 65 ("As market impacting
communications tend to be more important to market participants then non
impacting communications, this separation may reduce congestion and or
20
Appeal2017-009786
Application 14/074,661
noise among those communications having or reflecting an impact on a
market or portion thereof."). The argument is not only not commensurate in
scope with what is claimed but, because the record does not reflect it,
amounts to mere attorney argument. Attorney argument, however, cannot
take the place of record evidence. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997); Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir.
1989).
The Appellants further argue that
the combination of elements in Appellants' claims form a
practical application which performs functions which are not
merely generic and at least some of the problems solved by
Appellants' invention are specifically rooted in technology,
specifically in electronic transaction processing systems where
data indicative of an event, e.g. a change in state, is
communicated to multiple recipients but where some recipients
may wish to receive those communications in accordance with
particular preferences. Appellants submit that, as with the
invention at issue in the DDR case [(DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014))], which was
directed to solving an Internet-centric problem using generic
components, Appellants' claimed invention are similarly
patentable, and directed to solving a data communications
problem. As with the invention of DDR, Appellants' claims
recite a specific and practical way to customize messages sent
to a subset of recipients while sending the same message to the
remaining participants.
App. Br. 12. We do not see in claim 1 any limitation to an "electronic
transaction processing systems where data indicative of an event, e.g. a
change in state, is communicated to multiple recipients but where some
recipients may wish to receive those communications in accordance with
particular preferences." Id. Accordingly, we are unpersuaded by this
21
Appeal2017-009786
Application 14/074,661
argument the claimed subject matter is directed to an improvement in
computer functionality.
The Appellants further argue that the claimed subject matter is
directed to "a specific implementation of processing transactions with
respect to risk of loss" (App. Br. 13). This argument does not explain how
the claimed scheme improves the computer functionality and, therefore,
cannot be persuasive as to there being one.
The Appellants argue that "the claimed invention improves upon the
technical field of anonymized data and transaction processing by providing a
system which efficiently allows high risk transactions to be processed by
soliciting other transactions which mitigate that risk." Id. at 14. But claim 1
is not limited to anonymized data and does not include limitations to
transaction processing which efficiently allows high risk transactions to be
processed by soliciting other transactions which mitigate that risk.
Accordingly, this argument is also unpersuasive. "Many of appellant's
arguments fail from the outset because, ... they are not based on limitations
appearing in the claims .... " In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Above, we noted that specific asserted improvements in computer
capabilities can tum claimed subject away from being directed to an abstract
under step one of the Alice framework. This is consistent with the case law.
See Ancora, 908 F.3d at 1347 ("We have several times held claims to pass
muster under Alice step one when sufficiently focused on such
improvements."). Such an argument, as the Appellants have done here (see
App. Br. 10-15), can also challenge a determination under step two of the
Alice framework. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354--
55 (Fed. Cir. 2014). "[R ]ecent Federal Circuit jurisprudence has indicated
22
Appeal2017-009786
Application 14/074,661
that eligible subject matter can often be identified either at the first or the
second step of the Alice/Mayo [framework]." 2019 Revised 101 Guidance
53; see also id. at 53 n.17.
Be that as it may, we are unpersuaded that claim 1 presents an element
or combination of elements indicative of a specific asserted improvement in
computer capabilities, thereby rendering the claimed subject matter
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the trading scheme itself.
We have reviewed the Specification and, as explained above, we can
find no suggestion of any improvements to a computer system as a result of
performing the recited steps. The Specification conveys that the Appellants'
invention is focused on reducing financial risk, not on the "logic
component[s]" or the "match engine individually or in the combination as
claimed. Rather than focusing on the said elements, the Specification
focuses on a scheme, the computer elements of the trading system being
merely a conduit for performing said scheme. Cf In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) ("Put differently, the
telephone unit itself is merely a conduit for the abstract idea of classifying an
image and storing the image based on its classification. Indeed, the
Specification notes that it 'is known' that 'cellular telephones may be
utilized for image transmission,' id. at col. 1 11. 31-34, and existing
telephone systems could transmit pictures, audio, and motion pictures and
also had 'graphical annotation capability,' id. at col. 111. 52-59.").
As part of its "significantly more" analysis, the Appellants cite McRO
(App. Br. 10-11), DDR (App. Br. 12-13), Enfzsh (App. Br. 14--15), Bascom
(App. Br. 15), and Trading Technologies International, Inc. v. CQG, Inc.,
23
Appeal2017-009786
Application 14/074,661
675 Fed. App'x 1001 (Fed. Cir. 2017) (nonprecedential) (Reply Br. 3--4
("As in Trading Technologies Int'l, Inc. v. CQG, Inc., the presently claimed
invention is directed to a specific improvement to the way computers operate
as the claimed system .... ")) as matching this case. We disagree. Unlike in
those decisions, here no improvement in computer functionality has been
shown. See McRO, 837 F.3d at 1313 ("[T]he claimed improvement here is
allowing computers to produce 'accurate and realistic lip synchronization
and facial expressions in animated characters' that previously could only be
produced by human animators."); DDR, 773 F.3d 1245 at 1258 ("[T]he
claims at issue here specify how interactions with the Internet are
manipulated to yield a desired result-a result that overrides the routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink."); Enfzsh, 822 F.3d 1327 at 1339 ("[T]he self-referential table
recited in the claims on appeal is a specific type of data structure designed to
improve the way a computer stores and retrieves data in memory.");
Bascom, 827 F.3d at 1351 ("[T]he claims may be read to 'improve[ Jan
existing technological process."'); Trading Tech., 675 Fed. App'x at 1006
("[T]he claimed subject matter is 'directed to a specific improvement to the
way computers operate' [quoting Enfzsh], for the claimed graphical user
interface method imparts a specific functionality to a trading system
'directed to a specific implementation of a solution to a problem in the
software arts.' [Quoting Enfzsh ].").
The Appellants also cite Ex Parte Ismail, Appeal 2014-005477, 2016
WL 3569659 (PTAB July 1, 2016). Ismail is not controlling for a number of
reasons, not least of which the claimed subject matter in that case involved
characterizing a microorganism via spectral images and the question of
24
Appeal2017-009786
Application 14/074,661
patent-eligibility turned on whether the claims were directed to a law of
nature.
As discussed above, the Specification evidences the conventionality
of the claimed "logic component[s]", structurally and functionally,
individually and in combination. (See Spec. ,r,r 5, 44, 50.) Much like the
"data storage unit" and "computer, coupled to said storage unit" in the
claims of Alice (US Patent 7,149,720, claim 1 ), "the claims here do [ not do]
more than simply instruct the practitioner to implement the abstract idea [ ..
. ] on a generic computer." Alice, 573 U.S. at 225. For the reasons discussed
above, we are unpersuaded that the record supports interpreting the trading
scheme steps recited in the claim as yielding any improvement in technology
as the Appellants have argued.
We cited the Specification in our discussion as intrinsic evidence that
the claimed elements "first logic component," "second logic component,"
and "match engine" are conventional. In doing so, we have followed
"Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP Inc.[, 881
F.3d 1360 (Fed. Cir. 2018)]," USPTO Memorandum, Robert W. Bahr,
Deputy Commissioner For Patent Examination Policy, April 19, 2018 (the
"Berkheimer Memo")). The court in Berkheimer held that "[t]he patent
eligibility inquiry may contain underlying issues of fact." Berkheimer, 881
F.3d at 1365 (quoting Mortgage Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) ("The§ 101 inquiry 'may contain
underlying factual issues."')). But the court also held that"[ w ]hen there is
no genuine issue of material fact regarding whether the claim element or
claimed combination is well-understood, routine, [and] conventional to a
25
Appeal2017-009786
Application 14/074,661
skilled artisan in the relevant field, this issue can be decided on summary
judgment as a matter of law." Id. at 1368 (emphasis added). This
qualification has been subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56 requires
that summary judgment be denied. In Berkheimer, there was
such a genuine dispute for claims 4--7, but not for claims 1-3
and 9 . . . . [I]n accordance with Alice, we have repeatedly
recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an
inventive concept based merely on the idea of using existing
computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371-74 (Fed. Cir. 2018) (Order, On
Petition for rehearing en bane, May 31, 2018); see also Aatrix Software, Inc.
v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018)
(Order, On Petition for rehearing en bane, May 31, 2018) ("A factual
allegation or dispute should not automatically take the determination out of
the court's hands; rather, there needs to be justification for why additional
evidence must be considered-the default being a legal determination.").
Here, the Specification indisputably shows the claimed "logic
component[ s ]" were conventional at the time of filing. Accordingly, no
genuine issue of material fact exists as to the well-understood, routine, or
conventional nature of the claimed elements "first logic component" and
"second logic component," individually or in the combination as claimed.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
26
Appeal2017-009786
Application 14/074,661
We have considered all of the Appellants' remaining arguments
(including those made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 1, and claims 2-14 and 16-28,
which stand or fall with claim 1, are directed to an abstract idea and do not
present an "inventive concept," we sustain the Examiner's conclusion that
they are directed to patent-ineligible subject matter for beingjudicially-
excepted from 35 U.S.C. § 101. Cf LendingTree, LLC v. Zillow, Inc., 656
Fed. App'x 991, 997 (Fed. Cir. 2016) ("We have considered all of
Lending Tree's remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an 'inventive concept,' we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101."); see, e.g.,
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016).
Claim 30
Unlike claim 1 which specifies a "first logic component" and a
"second logic component," claim 30 uses the phrase "means for."
The Appellants argue that
[ c ]laim 30 of the present application recites means-plus-
function elements which amount to "specific algorithm that
transforms an otherwise general purpose computer into a
special purpose computer programmed to perform the recited
function" and therefore imparts a meaningful limitation or adds
significantly more to the abstract idea, itself.
27
Appeal2017-009786
Application 14/074,661
App. Br. 16. Accordingly, the Appellants' position is that the two "means
for" phrases distinguishes claim 30 from, for example, claim 1 in that claim
30 is directed to a particular machine rather than an abstract idea where a
generic computer (i.e., a "first logic component" and a "second logic
component") is used as a tool.
The question is whether the functions as claimed are specific
functions performed by a special purpose computer. Cf In re Katz
Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Katz has not claimed a specific function performed by a special
purpose computer, but has simply recited the claimed functions of
'processing,' 'receiving,' and 'storing.' Absent a possible narrower
construction of the terms 'processing,' 'receiving,' and 'storing,' discussed
below, those functions can be achieved by any general purpose computer
without special programming. As such, it was not necessary to disclose
more structure than the general purpose processor that performs those
functions. Those seven claims do not run afoul of the rule against purely
functional claiming, because the functions of 'processing,' 'receiving,' and
'storing' are coextensive with the structure disclosed, i.e., a general purpose
processor.").
The function attached to the first "means for" phrase recites
"receiving via a network couple therewith" a certain type of information
(i.e., an incoming order). "Receiving" can be achieved by any general
purpose computer without special programming. Accordingly, the
Appellants' position that this particular "means for" phrases distinguishes
claim 30 from, for example, claim 1 in that claim 30 is directed to a
28
Appeal2017-009786
Application 14/074,661
particular machine rather than an abstract idea where a generic computer is
used as a tool is unpersuasive.
The function attached to the second "means for" phrase recites, inter
alia specific "deriving " "determining " "communicate " and "transmit"
' ' ' '
functions which may be achievable only if a general purpose computer is
specially programmed. In drafting the claim in means-plus-function format,
the Appellants made the decision to limit the scope of claimed system to a
particular structure that would be less broad in scope than, for instance, a
"logic component" (claim 1). This is so because, consistent with 35 U.S.C.
§ 112, sixth paragraph, when "[a]n element in a claim for a combination [is]
expressed as a means or step for performing a specified function without the
recital of structure ... such claim shall be construed to cover the
corresponding structure ... described in the specification and equivalents
thereof." In that regard, the Appellants cite "at least at Figures 1, 2, 6, 7, 8
and 25 as well as paras. 44, 67-73, 113-125, 167-171, 180 and 312-320,
which clearly show that these claims are directed to a special purpose
computer . ... " App. Br. 16 (emphasis added).
We have reviewed the cited disclosures for structure corresponding to
the function recited in the limitation at issue but do not find any algorithm is
disclosed. As we explain below, the absence of disclosure of an algorithm
corresponding to the function recited in the limitation at issue renders claim
30 indefinite under 35 U.S.C. § 112, second paragraph. Accordingly, the
rejection of claim 30 is reversed proforma as being necessarily based on
speculative assumptions as to the scope of these claims. See In re Steele,
305 F.2d 859, 862---63 (CCPA 1962). Our decision in this regard is based
29
Appeal2017-009786
Application 14/074,661
solely on the indefiniteness of the subject matter and does not reflect on the
patent-eligibility of the claimed subject matter.
NEW GROUNDS OF REJECTION
Claim 30 is rejected under 35 U.S. C. § l l 2(b) as being indefinite for failing
to particularly point out and distinctly claim the subject matter which the
inventors regard as the invention.
A claim limitation that includes the term "means" is presumed to be
intended to invoke means-plus-function treatment, i.e., treatment under
35 U.S.C. § 112, sixth paragraph. Rodime PLC v. Seagate Tech., Inc.,
174 F.3d 1294, 1302 (Fed. Cir. 1999) ("[P]resumed an applicant advisedly
used the word "means" to invoke the statutory mandates for means-plus-
function clauses" ( citation omitted).). The Appellants do not dispute that
such treatment applies to the claim at issue. In fact, the Appellants argue in
favor of that treatment. See App. Br. 15-16. When the presumption is not
rebutted, as here, means-plus-function claim language must be construed in
accordance with 35 U.S.C. § 112, sixth paragraph, by "look[ing] to the
specification and interpret[ing] that language in light of the corresponding
structure, material, or acts described therein, and equivalents thereof, to the
extent that the specification provides such disclosure." In re Donaldson Co.,
16 F.3d 1189, 1193 (Fed. Cir. 1994) (en bane).
There is no dispute that this limitation is written in
means-plus-function form and falls under 35 U.S.C. § 112, ,r 6,
(Section 112, paragraph 6 provides: "An element in a claim for
a combination may be expressed as a means or step for
performing a specified function without the recital of structure .
. . in support thereof, and such claim shall be construed to cover
the corresponding structure ... described in the specification
and equivalents thereof." 35 U.S.C. § 112, ,r 6 (2000).), the first
step in the construction of a means-plus-function claim element
30
Appeal2017-009786
Application 14/074,661
is to identify the particular claimed function. Micro Chem., Inc.
v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir.
1999). The second step in the analysis is to look to the
specification and identify the corresponding structure for that
function. Id. Under this second step, "structure disclosed in the
specification is 'corresponding' structure only if the
specification or prosecution history clearly links or associates
that structure to the function recited in the claim. B. Braun
Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir.
1997).
Medical Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d
1205, 1210 (Fed. Cir. 2003).
The means-plus-function limitation at issue is
means for deriving, prior to forwarding the incoming order to
the match engine, based on the incoming order, one or more
previously received but unsatisfied orders and one or more
previously received satisfied orders for at least one financial
instrument submitted by any of the plurality of market
participants wherein one or more of the components thereof
remain incomplete, a particular risk of loss value unique to the
incoming order and to all of the plurality of market participants
computed as if the incoming order were to be at least partially
satisfied by at least one other previously received but
unsatisfied order and, based thereon, determine whether the
incoming order is valid or invalid and further to cause the valid
incoming order to be forwarded to the hardware match engine
and cause the transaction receiver to at least communicate
notification of the invalid incoming order back to the associated
market participant, an administrator of the trading system or a
combination thereof and computing, when the incoming order
is determined to be invalid, an order which, if satisfied, would
cause a reduction in the derived risk of loss, and transmit a
request for the computed order to the plurality of market
participants.
Claim 30. There is no dispute that the function set forth in said means-plus-
function clause in claim 30 broadly covers implementation on a computer.
31
Appeal2017-009786
Application 14/074,661
[However, f]or computer-implemented means-plus-
function claims where the disclosed structure is a computer
programmed to implement an algorithm, "the disclosed
structure is not the general purpose computer, but rather the
special purpose computer programmed to perform the disclosed
algorithm." WMS Gaming, Inc. v. Int'! Game Tech., 184 F.3d
1339, 1349 (Fed. Cir. 1999). Thus the patent must disclose, at
least to the satisfaction of one of ordinary skill in the art,
enough of an algorithm to provide the necessary structure under
§ 112, ,r 6. This court permits a patentee to express that
algorithm in any understandable terms including as a
mathematical formula, in prose, see In re Freeman, 573 F .2d
1237, 1245--46 (CCPA 1978), or as a flow chart, or in any other
manner that provides sufficient structure.
Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).
We have reviewed the portions of the Specification cited by the
Appellants for disclosure of the structure corresponding to said function.
We do not see there any mention of an algorithm corresponding to the
function recited in claim 30.
Figures 1, 2, 6, 7, 8, and 25 do not spell out any structure
corresponding to the function at issue. They show black boxes with words
in them such as "Display 2514" (Fig. 25) that insufficiently express an
algorithm to perform the function as claimed.
Paragraph 44 of Specification discusses various known computer
components that can be employed to carry out the inventive scheme ( e.g.,
"general purpose processor"). No algorithm to perform the function as
claimed is mentioned.
Paragraphs 67-73 discusses "[v]arious types of market data feeds" (i-f
67) and "the customization of market data feeds" (i-f 72). No algorithm to
perform the function as claimed is mentioned.
32
Appeal2017-009786
Application 14/074,661
Paragraph 113 describes a "trading network environment shown in
Figure 1 [which] includes exemplary computer devices ... each computer
device ... may include a central processor that controls the overall operation
of the computer and a system bus that connects the central processor to one
or more conventional components, such as a network card or modem."
Spec. ,r 113. Paragraphs 114--125 describe other components and
architectures. No algorithm to perform the function as claimed is
mentioned.
Paragraphs 167-171 described customizing market data. No algorithm
to perform the function as claimed is mentioned.
Paragraph 180 describes a "financial data message transmitter" which
may be implements "as logic." No algorithm to perform the function as
claimed is mentioned.
Paragraphs 312-320 describe "an illustrative embodiment of a general
computer system 2500" as shown in Figure 25.
The computer system 2500 can also be implemented as or
incorporated into various devices, such as a personal computer
(PC), a tablet PC, a set-top box (STB), a personal digital
assistant (PDA), a mobile device, a palmtop computer, a laptop
computer, a desktop computer, a communications device, a
wireless telephone, a land-line telephone, a control system, a
camera, a scanner, a facsimile machine, a printer, a pager, a
personal trusted device, a web appliance, a network router,
switch or bridge, or any other machine capable of executing a
set of instructions ( sequential or otherwise) that specify actions
to be taken by that machine.
Spec. ,r 313. "The network 2520 may include wired networks, wireless
networks, or combinations thereof The wireless network may be a cellular
telephone network, an 802.11, 802.16, 802.20, or WiMax network. Further,
the network 2520 may be a public network, such as the Internet, a private
33
Appeal2017-009786
Application 14/074,661
network, .... " Id. ,r 320. No algorithm to perform the function as claimed
is mentioned.
We are cognizant that "[a]ll one needs to do ... is to recite some
structure corresponding to the means in the specification ... so that one can
readily ascertain what the claim means and comply with the particularity
requirement of [paragraph] 2." Atmel Corp. v. Information Storage Devices,
Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999). But "[s]imply disclosing
software, however, 'without providing some detail about the means to
accomplish the function[,] is not enough."' Noah Sys., Inc. v. Intuit, Inc.,
675 F.3d 1302, 1312 (Fed. Cir. 2012) (quoting Finisar Corp., 523 F.3d at
1340-41 (Fed. Cir. 2008)). "While it is true that the patentee need not
disclose details of structures well known in the art, ... the specification must
nonetheless disclose some structure." Default Proof Credit Card Sys., Inc.
v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005). Here the
Specification disclosure to which the Appellants cite provides no details,
examples, or explanation of how to perform the recited function at issue. At
best, the disclosure suggests devising software to perform the function.
However, our reviewing court has held that:
[a] patentee cannot avoid providing specificity as
to structure simply because someone of ordinary
skill in the art would be able to devise a means to
perform the claimed function. To allow that form
of claiming under section 112, paragraph 6, would
allow the patentee to claim all possible means of
achieving a function.
[Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385
(Fed. Cir. 2009)]. "Section 112, paragraph 6, is intended to
prevent such pure functional claiming." Id. ( citing Aristocrat
Techs. Australia Pty Ltd. v. Int'! Game Tech., 521 F.3d 1328,
1333 (Fed. Cir. 2008).
34
Appeal2017-009786
Application 14/074,661
Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir.
2013).
For the foregoing reasons, claim 30 is rejected under 35 U.S.C.
§ 112(b) as being indefinite.
CONCLUSION
The rejection of claims 1-14 and 16-28, under 35 U.S.C. § 101 for
claiming patent-ineligible subject matter is affirmed.
The rejection of claim 30 under 35 U.S.C. § 101 for claiming patent-
ineligible subject matter is reversed proforma.
Claim 30 is newly rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventors regard as the invention.
DECISION
The decision of the Examiner to reject claims 1-14, 16-28, and 30 is
affirmed-in-part. Claim 30 is newly rejected.
NEW GROUND
This Decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION:
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
35
Appeal2017-009786
Application 14/074,661
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
36