Jacob LovelessDownload PDFPatent Trials and Appeals BoardOct 23, 201914348919 - (D) (P.T.A.B. Oct. 23, 2019) 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. 14/348,919 04/01/2014 Jacob Loveless 13-2399WOUS 5449 63710 7590 10/23/2019 INNOVATION DIVISION CANTOR FITZGERALD, L.P. 110 EAST 59TH STREET (6TH FLOOR) NEW YORK, NY 10022 EXAMINER SUBRAMANIAN, NARAYANSWAMY ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 10/23/2019 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): lkorovich@cantor.com patentdocketing@cantor.com phowe@cantor.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JACOB LOVELESS Appeal 2019-000117 Application 14/348,919 Technology Center 3600 Before ERIC S. FRAHM, JASON J. CHUNG, and MICHAEL T. CYGAN, Administrative Patent Judges. CYGAN, 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 2–10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as CFPH, LLC. Appeal Br. 1. Appeal 2019-000117 Application 14/348,919 2 CLAIMED SUBJECT MATTER The disclosure of the application, which is entitled “Foreign Exchange Trading,” is related to the field of electronic matching and trading items between users. Title; Spec. ¶¶ 2, 3. Specifically, the claimed subject matter is characterized as determining fill rates for providers of orders and filling trading commands based on the fill rates. Abs. Claim 2 is illustrative: 2. A method comprising: receiving by at least one server a first order and a second order for an item, wherein: the first order is associated with a first user and the second order is associated with a second user, the first and second orders have the same price associated therewith, the first order is received in time before the second order, a fill rate is associated with the first order, a fill rate is associated with the second order, and the fill rate associated with the second order is higher than the fill rate associated with the first order; ordering by at least one server in an order book the second order over the first order based at least in part on the fill rate associated with the second order being higher than the fill rate associated with the first order; receiving by at least one server a trading command to buy or sell the item; based at least in part on ordering in the order book the second order over the first order, communicating by at least one server the trading command to the second user; and responsive to communicating the trading command to the second user, communicating by at least one server an indication that the second user accepts entry into a trade against the trading command. Claim 5 sets forth an apparatus having limitations commensurate with those in claim 2. Claim 8 sets forth a computer-readable medium having limitations commensurate with those of claim 2. Dependent claims 3, 4, 6, Appeal 2019-000117 Application 14/348,919 3 7, 9, and 10 each incorporate the limitations of their respective independent claims. Claim 1 has been withdrawn. REJECTION Claims 2–10 are rejected under 35 U.S.C. § 101 as lacking patent- eligible subject matter. OPINION We have reviewed the Examiner’s subject-matter eligibility rejection (Final Act. 2–9) in light of Appellant’s contentions that the Examiner has erred (Appeal Br. 8–15). Further, we have reviewed the Examiner’s response to Appellant’s arguments (Ans. 3–13) and Appellant’s Reply Brief. We are not persuaded by Appellant that the Examiner erred in rejecting the pending claims 2–10 under 35 U.S.C. § 101. In support of subject matter eligibility, Appellant contends that the claimed invention amounts to an improvement in computer performance; specifically, improvements in electronic communication that include processing and communicating trading transaction commands out of order based on fill rates. Appeal Br. 10–11. Appellant further contends that the claims are eligible as being directed to an improved computer interface, citing the Federal Circuit’s reasoning in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356, 1363 (Fed. Cir. 2018). Id. at 12–13. Appellant further contends that the claimed features are not well-understood, routine, or conventional. Id. at 13. Finally, Appellant contends that the rejection neglects to consider the lack of preemption reflected in Appellant’s claims. Id. With respect to Appellant’s final contention of error, we are not persuaded by Appellant’s preemption argument because preemption Appeal 2019-000117 Application 14/348,919 4 concerns are addressed by the Supreme Court’s eligibility framework as applied here, infra. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (stating “[w]here a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo [Collaborative Servs. v Prometheus Labs., Inc., 566 U.S. 66 (2012)] framework, . . . preemption concerns are fully addressed and made moot”). A lack of complete preemption does not make the claims any less abstract. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”). A. Principles of Law Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the Patent Act, which recites: Whoever 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, subject to the conditions and requirements of this title. There is, however, an implicit, longstanding exception to patent- eligible subject matter in 35 U.S.C. § 101: “[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). This exception precludes patenting of “the basic tools of scientific and technological work” from which all inventions spring. Id. at 216–17. Invention or discovery under § 101 is distinguished as being the application of such tools to an end otherwise satisfying the requirements of the patent statute. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972). Appeal 2019-000117 Application 14/348,919 5 The Supreme Court has established a framework for this eligibility determination. Where a claim is directed towards a law of nature, natural phenomena, or abstract idea, the elements of the claim as a whole must ensure that the claim, in practice, amounts to significantly more than a patent on the law of nature, natural phenomena, or abstract idea itself. Alice, 573 U.S. at 217–18. In applying this eligibility analysis, our reviewing court has stated, “the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen[,] . . . the classic common law methodology for creating law when a single governing definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted). To address the growing body of precedent, the USPTO recently published revised examination guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50 (Jan. 7, 2019) (hereinafter “2019 Guidance”). The 2019 Guidance seeks to improve the clarity of the subject-matter-eligibility analysis and improve consistency of this analysis across the USPTO. Id. Under the 2019 Guidance, we first look to whether the claim is directed to a judicial exception because: (1) the claim recites a law of nature, natural phenomenon, or abstract idea, the last of which includes certain groupings, identified as mathematical concepts, certain methods of organizing human activity, and mental processes; and (2) the claim as a whole fails to recite additional elements that integrate the judicial exception into a practical application (see Appeal 2019-000117 Application 14/348,919 6 Manual of Patent Examination Procedure (hereinafter “MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th ed. rev. 08.2017 Jan. 2018). 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: adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or instead, 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, passim. B. “Recites an Abstract Idea” In the Final Action, the Examiner described claim 2 as being directed to a judicial exception, identified as “trading based on fill rates associated with orders,” and described as a method of organizing activity similar to the concepts that have been identified by the courts such as creating and fulfilling a contractual relationship. Final Act. 4–5 (citing buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)). Appellant does not specifically argue that claim 2 does not recite an abstract idea. We do not find error in the Examiner’s determination that the actions set forth in claim 2 recite acts of trading, such as receiving orders for an item, associated with price and fill rate information, ranking the desirability of trade actions based on criteria including the fill rate, and communicating trading commands and indications that a trade has been accepted. Final Act 3–4. Because these activities are commercial or legal interactions characterizing those certain methods held by the courts as abstract ideas Appeal 2019-000117 Application 14/348,919 7 (2019 Guidance, 84 Fed. Reg. at 52), we agree with the Examiner’s unrebutted conclusion that claim 2 is directed to a method of organizing activity, and therefore, to an abstract idea. C. Directed to an Abstract Idea The Examiner has determined that claim 2 merely amount[s] to the application or instructions to apply the abstract idea (i.e. trading based on fill rates associated with orders) on one or more computers, and are considered to amount to nothing more than requiring a generic computer system (e.g. an apparatus comprising at least one memory and at least one computer suitably programmed suitably programmed) to merely carry out the abstract idea itself. As such, the claims, when considered as a whole, are nothing more than the instructions to implement the abstract idea (i.e. trading based on fill rates associated with orders) in a particular . . . technological environment. Final Act. 9. Appellant contends that “the claimed subject matter is directed to improvements in a computer trading system by processing and communicating trading transaction commands out of order based on fill rates over a network which may help reduce or control the number of messages or commands over the network.” Appeal Br. 11 (emphasis omitted). Appellant argues that delays in responding to a trading command can result in a taker rescinding the trading command or seeking out other providers with which to trade. Id. Appellant further argues that such reduction of messages and commands may help improve computer performance by reducing computer workload and computer resources. Id. Appellant analogizes the claims under appeal to those found eligible in Core Wireless. Id. at 12–13. Appellant further argues that the additional elements are not well- understood, routine, or conventional. Appeal Br. 13 (citing Spec. ¶¶ 35–36). Appeal 2019-000117 Application 14/348,919 8 In Core Wireless, the claimed invention specified particular technological functionality in the form of “an application summary that can be reached directly from [a] menu” such that the summary window “is displayed while the one or more applications are in an un-launched state.” Core Wireless, 880 F.3d at 1362–63. The court in Data Engine Technologies characterized the claimed invention in Core Wireless as not “merely directed to the abstract idea of indexing information,” but instead providing “an improved user interface for electronic devices” such that the claim was “directed to ‘an improvement in the functioning of computers.’” Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1009 (Fed. Cir. 2018). In Data Engine Technologies, the court addressed a set of claims directed to a specific method of navigating three-dimensional spreadsheets through the use of tabs. Id. at 1008–09. The inventive tabs permitted easy access to spreadsheet workspaces that previously required a user to “search through complex menu systems” and “memorize frequently needed commands.” Id. at 1008. Certain claims “require[d] at least one user- settable identifying character to label the notebook tab and describes navigating through the various spreadsheet pages . . . that are identified by their tabs.” Id. The court found the claims to require a “specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers.” Id. at 1009. The court distinguished the claimed invention from one that would merely recite “a generic method of labeling and organizing” spreadsheet data. Id. at 1008–09. The court in Data Engine further addressed claims that recited “associating each of the cell matrices with a user-settable page identifier” Appeal 2019-000117 Application 14/348,919 9 without “the specific implementation of a notebook tab interface.” Id. at 1012. The court held that these were claims not limited to the “specific technical solution and improvement in electronic spreadsheet functionality” set forth in the eligible tab claims and were, thus, found ineligible. Id. Claim 2 does not recite an interface such as was found to provide eligibility in Core Wireless. At most, the claim recites “communicating by at least one server an indication that the second user accepts entry into a trade.” Appeal Br. 18. Claim 2 does not set forth any particular interface for such communicating, much less any particular technological functionality or improvement of an interface itself, and is therefore more akin to the ineligible claims in Data Engine than to the eligible claims in Core Wireless. To the extent that Appellant alleges improvement to computer workload and computer resources, such alleged improvement is not to the technological implementation set forth in claim 2, but instead to the decisionmaking that is part of the abstract idea. The claimed fill rate itself may be manually determined. Spec. ¶ 38. The alleged improvement to computer workload and computer resources is the use of such fill rate information to order trading transaction commands in a particular manner. Appeal Br. 11. Thus, the alleged improvement has not been shown to be to the computer implementation of the abstract idea rather than a consequence of an improvement to an abstract itself; i.e., an improved manner of determining a trade partner. The Bilski Court held that identifying trading partners for buyers and sellers, and initiating transactions therebetween, is itself an unpatentable abstract idea. Bilski v. Kappos, 561 U.S. 593, 611 (2010). As discussed by the Examiner, the Alice Corp. Court did not find an Appeal 2019-000117 Application 14/348,919 10 improvement to a particular type of bookkeeping, practiced on a generic computer, to be an improvement to the functioning of a computer that implemented such a bookkeeping idea. Ans. 11–12. Accordingly, we agree with the reasoning and conclusion of the Examiner that claim 2 is not directed to an improvement to a computer system or an improvement to another technology or technical field, but instead directed to an abstract idea. D. Significantly More Than the Abstract Idea Where a claim is directed to an abstract idea, the additional limitations of the claim may provide an inventive concept so as to provide subject- matter eligibility. An inventive concept may be shown where a limitation or combination of limitations is more than well-understood, routine, conventional activity. Appellant argues that the additional elements are not well-understood, routine, or conventional, as understood by reference to the Specification. Appeal. Br. 13 (citing Spec. ¶¶ 35–36). Appellant further argues that the Examiner has not made the case showing that the elements are well- understood, routine, or conventional. Id. However, the additional elements identified by the Examiner are “a generic computer system [, ]e.g. an apparatus comprising at least one memory and at least one computer suitably programmed” for the trading operations of gathering and manipulating data to trade based upon fill rates associated with orders. Final Act. 9. The Examiner has determined that the claimed functions of receiving orders, ordering in an order book, receiving a trading command, and communicating an indication of acceptance are conventional functions of a computer. Id. at 6. The Examiner has cited to Alice Corp. for the proposition that the use of a computer to create electronic records, track multiple transactions, and issue Appeal 2019-000117 Application 14/348,919 11 simultaneous instructions is not an inventive concept. Id. at 11–12. The Examiner’s determination is consistent with USPTO Guidance, which permits showing an element to be well-understood, routine, conventional through a citation to a court decision discussed in MPEP § 2106.05(d)(II). Appeal Br. 13 (citing USPTO Memorandum, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (Apr. 19, 2018), available at https://www.uspto.gov/sites/default/files/documents/memo-berkheimer- 20180419.PDF). The Alice Corp. decision is discussed in MPEP § 2106.05(d)(II)(iii) for the proposition that electronic recordkeeping, including creating and maintaining accounts (e.g., of financial transactions), has been recognized by the courts as well-understood, routine, conventional activity. Accordingly, Appellant has not shown error in the Examiner’s determination that the additional elements in the claim are well-understood, routine, conventional activity. Consequently, we determine that claim 2 is ineligible subject matter under 35 U.S.C. § 101, and we sustain the Examiner’s rejection of claim 2 on that ground. 1. Claims 3–10 Appellant does not argue separately the limitations of dependent claims 3–10; accordingly, they stand or fall with claim 2, and the rejection of those claims under § 101 is sustained. Appeal 2019-000117 Application 14/348,919 12 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 2–10 101 Eligibility 2–10 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 Copy with citationCopy as parenthetical citation