ITG Software Solutions, Inc.

Patent Trials and Appeals Board

Dec 24, 2020

2020000441 (P.T.A.B. Dec. 24, 2020)

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.
14/070,808 11/04/2013 Jerome PROVENSAL 107945.000068 5333
145584 7590 12/24/2020
Prince Lobel Tye LLP
One International Place
Suite 3700
Boston, MA 02110
EXAMINER
SHARVIN, DAVID P
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
12/24/2020 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):
docketing@princelobel.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEROME PROVENSAL, CHRIS HECKMAN, ERIC SUGDEN,
and GREG WATMORE
____________

Appeal 2020-000441
Application 14/070,808
Technology Center 3600
____________

Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–11. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as VIRTU ITG
SOFTWARE SOLUTIONS LLC. (Appeal Br. 2).
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Application 14/070,808

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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to systems and methods of
generating liquidity by indicating interests in trading assets (Spec., para. 2).
Claim 2, reproduced below with the italics added, is representative of the
subject matter on appeal.

2. A computer-implemented method for automating
communications between electronic liquidity sources to generate
electronic trade opportunities, comprising steps of:
(a) receiving at a central matching system comprising one or
more computers, first electronic data for a plurality of unexecuted
trade positions from at least two of a plurality of remote electronic
liquidity sources, said first electronic data including at least an
identifier (ID) identifying a tradeable asset and a side;
(b) storing said received first electronic data in said central
matching system to create an electronic liquidity pool;
(c) matching from said electronic liquidity pool two or more
unexecuted positions based on said ID or characteristics of the
tradeable assets, and the side; and
(d) by said central matching system, automatically transmitting,
for said identified match, an electronic message to each respective
remote electronic liquidity source for each unexecuted trading
position of said match, each electronic message including data that
identifies that an opportunity to execute a trade exists for the
corresponding unexecuted trading position and provides to
the corresponding electronic liquidity source a means for electronic
acceptance of said opportunity to execute a trade, said acceptance
causing the electronic generation by said corresponding remote
electronic liquidity source of an actionable electronic trade order that
may be executed without further input, containing at least ID, size and
side corresponding to the unexecuted trading position of said match
and causing electronic transmission by said corresponding
electronic liquidity source of said actionable electronic trade order to
an electronic order crossing system, where the actionable electronic
trade order may be executed by the electronic order crossing system
without any further input from the corresponding electronic liquidity
source;
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wherein said plurality of remote electronic liquidity sources
includes:
a plurality of electronic interfaces each of which is
electronically coupled with an electronic order management system or
execution management system.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 2–11 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 2–11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shaw (US 2003/0004859 A1, published Jan. 2, 2003) and
Gianakouros (US 2006/0031157 A1, published Feb. 9, 2006).
3. Claims 2–11 are rejected under on the grounds of nonstatutory
double patenting as being unpatentable over claims 9–17 of Heckman et al.
(US 8,577,772 B2, issued Nov. 5, 2013).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Appeal Br. 17–21; Reply Br. 1,
2). The Appellants argue further that the claim is “significantly more” than
the alleged abstract idea (Appeal Br. 22–25; Reply Br. 2, 3).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 5, 6; Ans. 4–7).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., 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 Supreme 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, 75–77 (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
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economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187
(“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
In January 2019, the USPTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
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Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
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, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] 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.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
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 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 Guidance, 84 Fed. Reg. at 56.
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 (citation 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).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The Specification at paragraph 2 states that the invention generally
relates to systems and methods of generating liquidity by indicating interests
in trading assets. Here, the Examiner has determined that claim 2 sets forth
“generating electronic trade opportunities between electronic liquidity
sources through the steps of receiving data regarding a plurality of trade
positions, storing data, matching a trade from the stored data based on
characteristics, identifying the opportunities to execute trades, and
generating a trade order.” (Final Act. 5). We substantially agree with the
Examiner. We determine that the claim sets forth the subject matter in
italics above which describes the concept of: [1] “receiving … data for a
plurality of unexecuted trade positions from at least two of a plurality of
remote electronic liquidity sources”; [2] “storing said received first
electronic data in said central matching system to create an electronic
liquidity pool”; [3] “matching from said electronic liquidity pool two or
more unexecuted positions”; [4]”automatically transmitting … electronic
message to each respective remote electronic liquidity source for each
unexecuted trading position of said match, each electronic message
including data that identifies that an opportunity to execute a trade exists …
and provides to the corresponding electronic liquidity source a means for
electronic acceptance of said opportunity to execute a trade, said acceptance
causing the electronic generation by said corresponding remote electronic
liquidity source of an actionable electronic trade order that may be executed
without further input … where the actionable electronic trade order may be
executed by the electronic order crossing system without any further input
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from the corresponding electronic liquidity source,” which is a method of
organizing liquidity sources and matching trade orders and is a certain
method of organizing human activities and fundamental economic practice.
In Chicago Board of Options Exchange v. International Securities
Exchange, 640 Fed.Appx. 986 (Mem) (Fed. Cir. 2016), the Federal Circuit
affirmed the determination in three cases (CBM2013-00049, CBM2013-
00050, CBM2013-00051) involving trading technologies that were held to
not meet the requirements of 35 U.S.C. § 101.
We next determine whether the claim recites additional elements in
the claim to integrate the judicial exception into a practical application. See
Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the
MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c)
and (e)–(h).
Here, the claims do not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claims imposes a meaningful limit on the judicial exception, such that the
claims are more than a drafting effort to monopolize the judicial exception.
For example, in the claim, the additional elements beyond the abstract idea
are the recited one or more computers. These are described in the
Specification as generic computer components (Spec., paras. 19, 20). The
claimed limitations of “receiving”, “storing”, “matching”, “transmitting”,
“accept[ing]” and “execut[ing]” here “do not purport to improve the
functioning of the computer itself,” do not improve the technology of the
technical field, and do not require a “particular machine.” Rather, they are
performed using generic computer components. Further, the claim as a
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whole fails to effect any particular transformation of an article to a different
state. The recited steps in the claim fail to provide meaningful limitations to
limit the judicial exception. In this case, the claim merely uses the claimed
computer elements as a tool to perform the abstract idea.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
Considering the claim both individually and as an ordered combination fails
to add subject matter beyond the judicial exception that is not well-
understood, routine, and conventional in the field. Rather the claim uses
well-understood, routine, and conventional activities previously known in
the art and they are recited at a high level of generality. The claim
specifically includes recitations for computers to implement the method but
these computer components are all used in a manner that is well-understood,
routine, and conventional in the field. Here, the claimed generic computer
components which are used to implement the claimed method are well
understood, routine, or conventional in the field. The Appellant has not
demonstrated that the computers described in the Specification at paragraphs
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19 and 20 for instance are not general purpose computer components known
to perform similar functions in a well-understood manner. Here, the claim
has not been shown to be “significantly more” than the abstract idea.
The Appellant in the Appeal Brief at pages 18–21 has cited to the
Declaration of Jerome Provensal in the arguments. The Declaration has
been fully considered, but not deemed persuasive for the substantive reasons
given above.
For these above reasons the rejection of claim 2 is sustained. The
Appellant has presented the same arguments for the remaining claims drawn
to similar subject matter and the rejection of these claims is sustained for the
same reasons given above.

Rejection under 35 U.S.C. § 103
The Appellants argue that the rejection of claim 2 is improper because
the rejection of record fails would not have been obvious (Appeal Br. 25–
30).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 7–10, Ans.7, 8).
We agree with the Appellant. Even taking the cited prior art to
disclose all the claim limitations, we determine here that the rejection of
record fails to set forth a proper rationale to set forth a case of obviousness.
Here, claim 1 requires in part that a “central matching system” receives
“data for … unexecuted trade positions from … remote electronic liquidity
sources” and stores that data to create an “electronic data pool” and creates
“match[es]” for unexecuted trades. Claim 1 further requires “transmitting …
an electronic message” to each respective remote electronic liquidity source”
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for the “opportunity to execute the trade” by acceptance. The Final Action
on page 10 sets forth that the motivation to combine the references
“would…assist traders to trade more efficiently, anonymously, and
automatically.” Here, even taking the cited prior art to disclose all the claim
limitations we determine that this rationale of record in the rejection does
not support a legal conclusion of obviousness. Here, the cited claim requires
a specific manner and sequence for the steps of the claim and the rejection of
record lacks articulated reasoning with rational underpinnings to meet those
limitations without impermissible hindsight to sustain the rejection. For
these above reasons, this rejection of claim 2 and its dependent claims is not
sustained.

Rejection under Nonstatutory Double Patenting
The Appellants have not provided any arguments to the rejection of
claims 2–11 under the grounds of nonstatutory double patenting and this
rejection is accordingly sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 2–11 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 2–11 under 35 U.S.C. § 103(a) as unpatentable over Shaw
and Gianakouros.
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We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 2–11 on the grounds of nonstatutory double patenting as
being unpatentable over claims 9–17 of US Patent 8,577,772.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2–11 101 Eligibility 2–11
2–11 103 Shaw, Gianakouros 2–11
2–11 Double Patenting 2–11
Overall
Outcome
2–11

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED