Integral Development Inc.Download PDFPatent Trials and Appeals BoardMar 27, 202014214035 - (D) (P.T.A.B. Mar. 27, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/214,035 03/14/2014 Harpal Sandhu INDE/0006US 7338 107456 7590 03/27/2020 Artegis Law Group, LLP John Carey 7710 Cherry Park Drive Suite T #104 Houston, TX 77095 EXAMINER MAGUIRE, LINDSAY M ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 03/27/2020 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): algdocketing@artegislaw.com jmatthews@artegislaw.com kcruz@artegislaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte HARPAL SANDHU, MICHELLE YIP CHEN, and VIKAS SRIVASTAVA ________________ Appeal 2019-001911 Application 14/214,035 Technology Center 3600 ________________ Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and SCOTT RAEVSKY, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Office Action rejecting claims 1–4, 6–12, 14–16, 28–33, which are all the pending claims. See Final Act. 1; Appeal Br. 12–26.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Integral Development, Inc. as the real party in interest. Appeal Br. 3. 2 We refer herein to the Office Action mailed Feb. 20, 2018 (“Final Act.”), Response to Final Office Action filed Apr. 20, 2018 (“Post-Final Resp.”), Appeal 2019-001911 Application 14/214,035 2 Invention Appellant states “[t]he instant disclosure relates generally to the trading of financial instruments and, more specifically, to methods and apparatuses for generating and operating one or more swaps trading platforms.” Spec. ¶ 3. By way of background, Appellant explains that the 2010 Dodd-Frank Wall Street Reform and Consumer Protection Act (“Dodd-Frank”) created new requirements for using Swap Execution Facilities (SEFs) in compliance with the act, but that not all swaps trading must use an SEF. See id. ¶¶ 4–9. Banks are also expected to be greatly affected by Dodd- Frank. . . . [W]hen customers want to trade instruments that need to go through a SEF compliant platform, they need to leave the bank’s platform. The hassle associated with jumping back and forth between several different platforms causes many customers to simply stop using banks’ trading platforms altogether. Accordingly, it would be desirable to create an intuitive interface between a banks’ trading platform and a SEF compliant platform, such that customers could quickly and seamlessly transition back and forth between the disparate platforms without undue hardship. Id. ¶ 8. “Accordingly, new methods and apparatuses aimed at alleviating the drawbacks of conventional swaps trading platforms are desired.” Id. ¶ 10. Claim 1 is illustrative of the claims on appeal: 1. A computer-implemented method comprising: causing, by a processor, a representation of a swaps trading platform to be displayed on a display device via at least one of a graphical user interface (GUI) and a webpage, wherein Advisory Action mailed Apr. 30, 2018 (“Adv. Act.”), Appeal Brief filed Aug. 20, 2018 (“Appeal Br.”), Answer mailed Nov. 2, 2018 (“Ans.”), Reply Brief filed Jan. 2, 2019 (“Reply Br.”), and Specification (“Spec.”) and Drawing Figures (“Figs.”) filed Mar. 14, 2014. Appeal 2019-001911 Application 14/214,035 3 the swaps trading platform includes an embedded selectable non-swaps execution facility (SEF) compliant portal in the swaps trading platform, wherein the swaps trading platform is configured to operate in accordance with a plurality of predefined rules associated with SEF requirements, and wherein first information is exchanged via the swaps trading platform; receiving a selection of a user interface element included in the selectable non-SEF compliant portal for accessing a non- SEF compliant trading platform that is different from the swaps trading platform; in response, transitioning from the swaps trading platform to the non-SEF compliant trading platform by causing a representation of an interface to access the non-SEF compliant trading platform to be displayed on the display device by updating the at least one of the GUI and the webpage to display the representation of the interface to access the non- SEF compliant trading platform, wherein second information is exchanged via the non-SEF compliant trading platform; establishing, by the processor, one or more communication channels between the swaps trading platform and respective one or more clearinghouses for transmission of clearinghouse information concerning one or more trade requests; and establishing, by the processor, one or more communication channels between the swaps trading platform and respective one or more swaps data repository (SDR) providers for transmission of SDR information concerning the one or more trade requests. Appeal Br. 21 (Claims App’x). Appeal 2019-001911 Application 14/214,035 4 Rejection All pending claims stand rejected under 35 U.S.C. § 101 as directed to ineligible subject matter. See Final Act. 4–12.3 Principles of Law An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The U.S. Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71–73 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and, thus, patent ineligible, include certain methods of organizing human activity, such as fundamental 3 Appellant overcame a 35 U.S.C. § 112 rejection in the Final Office Action (see pp. 3–4) with a Response that amended the claims. See Post-Final Resp.; Adv. Act. (“The claim amendments overcome the 35 [U.S.C. § 112] rejection.”). The only issue before us is the rejection under 35 U.S.C. § 101. Appeal 2019-001911 Application 14/214,035 5 economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical concepts (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). In Diamond v. Diehr, the claim at issue recited a judicial exception in the category of mathematical concepts, but the Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” 450 U.S. 175, 176 (1981). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (internal quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. In 2019, the Office published revised guidance on the application of § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019) (“2019 Guidance”); see also October 2019 Update: Subject Matter Eligibility, 84 Fed. Reg. 55942–53 (Oct. 17, 2019) (providing “examples as well as a discussion of various issues raised by the public comments” to the guidance promulgated in January 2019). Under the 2019 Guidance, we first look to whether the claim recites: (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, Appeal 2019-001911 Application 14/214,035 6 or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (MPEP) § 2106.05(a)–(c), (e)–(h)).4 See 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation (or combination of limitations) beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(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 2019 Guidance, 84 Fed. Reg. at 56. ANALYSIS Appellant argues all pending claims together as a group. Appeal Br. 12–19. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv). Alice/Mayo Step One, Revised Guidance Step 2A Prong One We first must consider whether claim 1 recites a judicial exception, see 2019 Guidance, 84 Fed. Reg. at 54, which, here, requires us to analyze whether the claim recites one of certain methods of organizing human activity or a mental process.5 For our prong one analysis, we set aside any 4 All references to the MPEP are to the Ninth Edition, Revision 08.2017 (rev. Jan. 2018). 5 Claim 1 plainly does not recite a judicial exception in the form of a law of nature, natural phenomenon, or mathematical concept. Appeal 2019-001911 Application 14/214,035 7 technological recitations that are plainly non-abstract and unnecessary for assessing the basic focus of the claim.6 Setting aside those technological recitations and showing in italics certain recitations with technological implications that are necessary for assessing claim 1’s focus, it recites (bracketing numbering added): [1] causing . . . a representation of a swaps trading platform to be displayed . . ., wherein the swaps trading platform includes an embedded selectable non-swaps execution facility (SEF) compliant portal in the swaps trading platform, wherein the swaps trading platform is configured to operate in accordance with a plurality of predefined rules associated with SEF requirements, and wherein first information is exchanged via the swaps trading platform; [2] receiving a selection . . . for accessing a non-SEF compliant trading platform that is different from the swaps trading platform; [3] in response, transitioning from the swaps trading platform to the non-SEF compliant trading platform . . ., wherein second information is exchanged via the non-SEF compliant trading platform; [4] establishing . . . one or more communication channels between the swaps trading platform and respective one or more clearinghouses for transmission of clearinghouse information concerning one or more trade requests; and [5] establishing . . . one or more communication channels between the swaps trading platform and respective one or more swaps data repository (SDR) providers for transmission of SDR information concerning the one or more trade requests. 6 We consider all of claim 1’s limitations in our analysis, under prong two of Step 2A or under Step 2B of the 2019 Guidance, i.e., especially including those set aside here in our prong one analysis. Appeal 2019-001911 Application 14/214,035 8 Under the 2019 Guidance, the foregoing limitations of claim 1 recite an abstract idea in the category of certain methods of organizing human activity. See 84 Fed. Reg. at 52. For example, consider a human swaps trader who receives a request to perform a swaps trade that may or may not be non-SEF compliant. In this example, under the broadest reasonable interpretation of these limitations, step [2] encompasses (recites) the human activity of receiving a selection as to which type of trade to perform. Such a person also may perform step [3] when switching between using two different swaps trading platforms (i.e., with one being non-SEF compliant). Similarly, under the broadest reasonable interpretation of the limitations in steps [4] and [5], such a person may also engage in the use of a clearinghouse or SDR, as recited, without the use of any technology. As the 2019 Guidance explains, such commercial or legal interactions by people, as well as activities for fundamental economic practices, constitute sub- categories of certain methods of organizing human activity that the courts have deemed to be abstract. See 84 Fed. Reg. at 52. Thus, under prong one of the 2019 Guidance, claim 1 recites an abstract idea. Before proceeding to our analysis under prong two, we note claim 1 focuses in part on providing and using a “portal” between swaps trading “platforms.” As discussed in our prong two analysis, claim 1’s “portal” for communicating information between “platforms,” as recited, is limited to computer-related technology (see also Spec. ¶¶ 49–55; cf. MICROSOFT COMPUTER DICTIONARY 413 (5th ed. 2002) (defining “portal”)). Whether the recited portal and platforms are technological terms, however, does not affect the result of our analysis under prong one, because Appeal 2019-001911 Application 14/214,035 9 the focus of claim 1, as discussed above, nevertheless recites an idea that is abstract in the category of certain methods of organizing human activity. Alice/Mayo Step One, Revised Guidance Step 2A Prong Two We next consider whether claim 1 includes any limitations in addition to those describing the recited abstract idea (i.e., “additional elements”) and whether such additional elements, individually or in combination, integrate the judicial exception into a practical application. See 2019 Guidance, 84 Fed. Reg. at 54–55. Here, the Examiner determines the only additional element recited by claim 1 is “the processor.” See Final Act. 7. The Examiner errs. An ordinarily skilled artisan would recognize that claim 1, under the broadest reasonable interpretation of its terms, recites other technological limitations that are non-abstract and, thus, that constitute “additional elements.” In particular, artisans of ordinary skill would recognize that, in addition to limitations for a “processor” and a “portal” limited to processor- driven exchange of data between “platforms,” claim 1 also recites the following technological requirements: (1) limiting claim 1 to an “embedded selectable portal;” (2) excluding any interface other than a “graphical user interface (GUI) and a webpage;” (3) processor-established “communication channels” that are necessary elements of: (4) a software sequence for: (i) exchanging information between two platforms through the portal to exchange information between to platforms, then (ii) responsively updating either a GUI or webpage on one of the platforms, and then (iii) separately exchanging different information over the portal; and further (5) a requirement for two separate processor-established communication channels with two separate external entities. Appeal 2019-001911 Application 14/214,035 10 We determine that the foregoing combination of technological limitations for the portal, platforms, and software-related sequence of operations constitutes a particular technological solution that integrates the recited abstract idea(s) into a practical application. See 2019 Guidance, 84 Fed. Reg. at 55 (explaining that a practical application can be a combination of elements that “use[] the judicial exception in [a] meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception”). That the invention involves abstract ideas (e.g., issues faced by people and corporations related to the fundamental economic practice of swaps trading or Dodd-Frank) does not alter our analysis. See Alice, 573 U.S. at 217 (“[A]n invention is not rendered ineligible for patent simply because it involves an abstract concept.” (citing Diehr, 450 U.S. at 187)), see also Spec. ¶ 8 (discussing that the invention addresses human, corporate, and technical issues). We are persuaded by the record before us that claim 1’s additional elements, e.g., limitations requiring use of an embedded selectable portal as part of a sequence that includes updating a GUI or webpage, amount to more than a drafting effort to monopolize the abstract idea(s) recited in claim 1. Accordingly, we do not sustain the § 101 rejection of claims 1–4, 6– 12, 14–16, 28–33. Alice/Mayo Step Two, Revised Guidance Step 2B We also do not sustain the § 101 rejection of claims 1–4, 6–12, 14–16, 28–33 under Alice/Mayo step two. In step 2B under the 2019 Guidance, we consider whether there are additional limitations that, individually or as an ordered combination, ensure the claims amount to “significantly more” than Appeal 2019-001911 Application 14/214,035 11 the abstract idea. 84 Fed. Reg. at 56; see also Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 77–79). As the 2019 Guidance explains, at this point of our analysis, we determine if claim 1 adds a specific limitation, or combination of limitations, that are not well-understood, routine, conventional activity in the field; or whether, in addition to the recited judicial exception, they recite only well- understood, routine, conventional activities at a high level of generality. 84 Fed. Reg. at 56 (citing USPTO Memorandum, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Decision (Berkheimer v. HP, Inc.) (2018) (the “Berkheimer Memo”)). As the Berkheimer memo states in Section III(A), “[i]n a step 2B analysis, an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing.” As discussed above, we agree with Appellant that the Examiner erroneously determines “the processor” is the only “additional element” recited in claim 1. In particular, for example, “the limitations of displaying a first platform in the single GUI and/or webpage, and, once a section of a new platform is received via a user interface element embedded in the single GUI and/or webpage, updating the single GUI and/or webpage” constitute additional elements. Appeal Br. 17 (citing the Berkheimer Memo). The Examiner’s Answer does not address these additional elements that Appellant identifies in the Appeal Brief. See Answer 3–8. Accordingly, on this record, the Examiner errs by not providing factual determinations in the record to demonstrate that the additional Appeal 2019-001911 Application 14/214,035 12 elements recited in claim 1 are well-understood, routine or conventional as required under Berkheimer and the Berkheimer Memo. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Reversed 1–4, 6–12, 14–16, 28–33 § 101 Eligibility 1–4, 6–12, 14–16, 28–33 REVERSED Copy with citationCopy as parenthetical citation