Ex Parte Winter

Patent Trial and Appeal Board

Oct 4, 2018

13477016 (P.T.A.B. Oct. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/477,016 05/21/2012
128144 7590
Rimon, P.C.
One Embarcadero Center
Suite 400
San Francisco, CA 94111
10/09/2018
FIRST NAMED INVENTOR
Thomas Winter
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.
12-137-US 8107
EXAMINER
NGUYEN, LIZ P
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
10/09/2018 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):
uspto@rimonlaw.com
eofficeaction@appcoll.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS WINTER 1
Appeal2017-007220
Application 13/477,016
Technology Center 3600
Before JOSEPH L. DIXON, JENNIFER S. BISK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, the real party in interest is Deutsche Borse AG.
See App. Br. 1.
Appeal2017-007220
Application 13/477,016
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to a computer-implemented
method and system for publishing best public limits and
corresponding quantity and for matching an incoming outright
order against price best match limits at corresponding quantities
during the continuous trading phase is provided. An incoming
outright order is entered in an incoming order book side. It is
determined if the incoming outright order satisfies a matching
condition by evaluating the sum of the incoming outright order
limit and the best match limit of the outright order book side
opposing to the incoming outright order book side wherein the
best match limit of the outright order book side opposing to the
incoming outright order book side also considers outright order
book combinations resulting to the outright order book side
opposing the incoming outright order book side.
(Abstract). Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method for maintaining
deterministic combinations of single leg and double leg outright
order book sides of a derivative product by one or more
computing devices, the method comprising:
determining, by at least one of the one or more computing
devices, a best public limit of an outright order book side of a
plurality of outright order book sides by considering
combinations of single leg and double leg outright order book
sides resulting to said outright order book side based on allowed
public paths available for the derivative product, wherein each of
the allowed public paths has a path length less than or equal to a
maximum public path length, the path length indicating the
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Application 13/477,016
number of different outright order book sides considered in a
combination of outright order book sides resulting to said
outright order book side, and the best public limit is exclusively
available for publication of a best price level of said outright
order book side to the outside world; and
determining, by at least one of the one or more computing
devices, a best match limit of said outright order book side by
considering combinations of outright order book sides resulting
to said outright order book side based on allowed match paths
available for the derivative product, wherein each of the allowed
match paths has a path length less than or equal to a maximum
matching path length, the maximum matching path length is
greater than the maximum public path length, and the best match
limit is exclusively available for matching of said outright order
book side.
REJECTION
The Examiner made the following rejection:
Claims 1-16 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
contentions and the evidence of record. We concur with Appellant's
contention that the Examiner erred in this case. 2
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
2 Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Application 13/477,016
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. That provision "'contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354
(2014) (quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). According to the Supreme Court:
[W] e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... If so, we then ask,
"[ w ]hat else is there in the claims before us?" ... To answer
that question, we consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application. . . . We have
described step two of this analysis as a search for an "'inventive
concept'" -i.e., an element or combination of elements that is
"sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself." ( citations omitted).
Alice, 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and
the Alice step-two inquiry as looking more precisely at what the claim
elements add-whether they identify an "inventive concept" in the
application of the ineligible matter to which the claim is directed. See
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed.
Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).
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Application 13/477,016
According to the Federal Circuit, "[t]he second step of the Alice test is
satisfied when the claim limitations 'involve more than performance of
'well-understood, routine, [and] conventional activities previously known
to the industry."' Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir.
2018) (quoting Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat'! Ass'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) andAlice,
134 S. Ct. at 2359).
In this case, Appellant argues with respect to the Alice step-two
analysis, the Examiner has not provided any evidence to support the
Examiner's assertion that the claimed limitations perform well-understood,
routine, and conventional functions or steps. (See App. Br. 8-9).
Specifically, Appellants contend:
limitations utilize synthetic match paths to take into account
matching opportunities which may result from combinations of
single and double leg outright order books different from the
outright order book of the incoming order. These features are
not "well-understood, routine and conventional in the field" of
order matching in derivatives markets.
(App. Br. 9).
In response to Appellant's argument that the Examiner provides no
support or evidence to show that determining a best match limit of said
outright order book side based on allowed match paths available for the
derivative products are well-understood, routine, and conventional, the
Examiner:
provides support in the form of decisions provided by the courts
that find similar limitations to not be significantly more. The
courts also find the idea of executing an algorithm or performing
a calculation to be abstract (Flook 437 U.S. at 594; Bancorp
Services v. Sun Life, 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("The
computer required by some of Bancorp' s claims is employed
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only for its most basic function, the performance of repetitive
calculations, and as such does not impose meaningful limits on
the scope of those claims."). Determining a best match limit is
interpreted as the generic computer performing calculations to
determine a result. Performing a determination and matching in
a generic manner at a high level of generality on a generic system
is not significantly more. Using a computer to match order data
or comparing information and using a computer to make a
determination is a routine, well understood and conventional
function of a processor or computer (V ersata, Electric Power
Grid [sic], Classen).
(Ans. 9-10).
Appellant further contends that
The Examiner continues to allege that the claims are
directed to the abstract idea of "maintaining deterministic
combinations of single leg and double leg outright order book
sided of a derivative product. . . ." To arrive at this
determination, the Examiner restates the elements of the
independent claims and then concludes, without any support or
analysis, that "all of these concepts relate to processes of
organizing information and a mathematical relationship or
formula abstract." Page 4 of the Examiner's Answer. For some
of the claim elements, the Examiner notes apparent case names
in parenthesis. Appellant assumes that the Examiner is alleging
that similar steps are found in the named cases. However, there
is no evidence of record that this allegation is accurate. For most
claimed elements, there is no parenthetical note to case law.
Further, other than reiterating the claim elements, referring
to unnamed case law, and concluding that the claimed elements
do not "add more" (see pages 6-8 of the Examiner's Answer), the
Examiner offers no analysis with respect to the specific language
of the claims. Therefore, the rejection continues to fall short of
articulating a prima facie case of patent ineligibility.
(Reply Br. 1-2).
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We agree with Appellant that the Examiner's assertion contradicts the
case law, as the Berkheimer court held "[w]hether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination." Berkheimer, 881 F.3d at 1369.
Therefore, we are constrained by the record to reverse the Examiner's
rejection of claims 1-16 on procedural ground.
DECISION
We reverse the Examiner's decision rejecting claims 1-16 under
35 U.S.C. § 101.
REVERSED
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