James R. Driscoll et al.Download PDFPatent Trials and Appeals BoardMar 2, 202013617438 - (D) (P.T.A.B. Mar. 2, 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. 13/617,438 09/14/2012 James R. Driscoll 07-2104-C4 4561 63710 7590 03/02/2020 INNOVATION DIVISION CANTOR FITZGERALD, L.P. 110 EAST 59TH STREET (6TH FLOOR) NEW YORK, NY 10022 EXAMINER MERCHANT, SHAHID R ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 03/02/2020 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): 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 JAMES R. DRISCOLL and MATTHEW W. CLAUS Appeal 2018-002989 Application 13/617,438 Technology Center 3600 Before CAROLYN D. THOMAS, IRVIN E. BRANCH, and DAVID J. CUTITTA II, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–4, 6–16, 18, and 28–31, which are all 1 We refer to the Specification, filed September 14, 2012 (“Spec.”); Final Office Action, mailed April 21, 2017 (“Final Act.”); Appeal Brief, filed August 18, 2017 (“Appeal Br.”); Examiner’s Answer, mailed November 30, 2017 (“Ans.”); and Reply Brief, filed January 26, 2018 (“Reply Br.”). 2 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 BGC PARTNERS, INC. Appeal Br. 3. Appeal 2018-002989 Application 13/617,438 2 of the pending claims. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a new ground of rejection. CLAIMED SUBJECT MATTER The claims are directed to “test[ing] trading strategies on a securities exchange in which actual securities are traded, and without actually trading securities when testing trading strategies.” Spec. 17. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computerized method for testing an electronic trading and processing computer system comprising: [a] receiving, by the trading and processing computer system, a first order for an instrument; [b] determining, by the trading and processing computer system, that the first order comprises a real order; [c] based on the first order comprising a real order, entering, by the trading and processing computer system, the first order in an area of computer memory, wherein orders in the area of computer memory are transacted; [d] receiving, by the trading and processing computer system, a second order for the instrument; [e] determining, by the trading and processing computer system, that the second order comprises a test order; [f] based at least in part on determining that the second order comprises a test order, determining, by the trading and processing computer system, whether a processing load of the trading and processing computer system is below a defined threshold; [g] based at least in part on determining that the processing load is below the defined threshold, copying, by the trading and processing computer system, the area of computer memory to a test area of computer memory within the trading and processing computer system and entering the second order in the test area of computer memory, wherein the test order is not placed into the Appeal 2018-002989 Application 13/617,438 3 area of computer memory, and wherein orders in the test area of computer memory are not transacted; [h] receiving, by the trading and processing computer system, a third order; [i] determining, by the trading and processing computer system, that the third order comprises a real order; [j] entering, by the trading and processing computer system, the third order in the area of computer memory and in the test area of computer memory; [k] matching, by the trading and processing computer system, the first order and the third order in the area of computer memory; [l] responsive to matching the first order with the third order, (1) executing, by the trading and processing computer system, the first order in the area of computer memory so that a value for a quantity of the instrument associated with the first order is reduced in the area of computer memory and (2) executing, by the trading and processing computer system, the third order in the area of computer memory so that a value for a quantity of the instrument associated with the third order is reduced in the area of computer memory; [m] matching, by the trading and processing computer system, the second order and the third order in the test area of computer memory; [n] responsive to matching the second order with the third order, executing, by the trading and processing computer system, the second order in the test area of computer memory so that a value for a quantity of the instrument associated with the second order is reduced in the test area of computer memory; [o] at one or more points in time after executing the match between the second order and the third order in the test area of computer memory, comparing, by the trading and processing computer system, the area of computer memory and the test area of computer memory; [p] based on the comparison, generating and communicating, by the trading and processing computer system, a report to an originator of the second order; and Appeal 2018-002989 Application 13/617,438 4 [q] subsequent to generating and communicating the report, erasing, by the trading and processing computer system, the test area of computer memory. REJECTION3 Claims 1–4, 6–16, 18, and 28–31 stand rejected under 35 U.S.C. § 101 as being . . . directed to non–statutory matter. Final Act. 8–24. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments. We have considered in this Decision only those arguments Appellant actually raised in the Briefs. Any other arguments Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). 35 U.S.C. § 101 Section 101 defines patentable subject matter: “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.” 35 U.S.C. § 101. The U.S. Supreme Court, however, has “long held that this provision contains an important implicit exception” that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (quotation omitted). “Eligibility under 35 U.S.C. § 101 is a question of law, 3 A rejection of all pending claims under 35 U.S.C. § 103(a) has been withdrawn. Ans. 3. Appeal 2018-002989 Application 13/617,438 5 based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). To determine patentable subject matter, we undertake a two-part test. “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts” of “laws of nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). “The inquiry often is whether the claims are directed to ‘a specific means or method’ for improving technology or whether they are simply directed to an abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (citation omitted). A court must be cognizant that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas” (Mayo, 566 U.S. at 71), and “describing the claims at . . . a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). If the claims are directed to an abstract idea or other ineligible concept, then we continue to the second step and “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.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). The Court describes the second step as a search for “an ‘inventive concept’—i.e., an element or combination of elements that is Appeal 2018-002989 Application 13/617,438 6 ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (quoting Mayo, 566 U.S. at 72–73). In 2019, the Office published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance” or “Guidance”); see also USPTO, October 2019 Update: Subject Matter Eligibility, available at https://www.uspto.gov/sites/ default/files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019) (“Oct. 2019 Guidance”). Under the Revised Guidance, we look to whether the claim recites (1) a judicial exception, such as a law of nature or any of the following groupings of abstract ideas: (a) mathematical concepts, such as mathematical formulas; (b) certain methods of organizing human activity, such as a fundamental economic practice; or (c) mental processes, such as an observation or evaluation performed in the human mind; (2) any additional limitations that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)); and (3) any additional limitations beyond the judicial exception that, alone or in combination, were not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)). See Revised Guidance, 84 Fed. Reg. at 52, 55, 56. Under the Revised Guidance, if the claim does not recite a judicial exception, then it is eligible Appeal 2018-002989 Application 13/617,438 7 under § 101, and no further analysis is necessary. Id. at 54. Similarly, under the guidance, “if the claim as a whole integrates the recited judicial exception into a practical application of that exception,” then no further analysis is necessary. Id. at 53, 54. Step 1: Does Claim 1 Fall within a Statutory Category? There is no dispute that the claimed subject matter falls within a 35 U.S.C. § 101 category of patentable subject matter. Final Act. 8 (“Claims 1-4, 6-16, 18, and 28-29 are directed to steps in a method and Claims 30 and 31 are directed to an apparatus. Therefore these claims fall within the four statutory categories of invention”); see also Guidance, 84 Fed. Reg. at 53−54 (“Step 1”). Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?) The Examiner determines the claims are directed to submission of financial orders, which is a fundamental economic practice and therefore an abstract idea. The claims are principally directed to submission of multiple orders and determining which orders are test orders and which orders are real orders. Note that the courts have recently found claims directed to concepts involving human activity relating to commercial practices ineligible. Here, the instant claims involve comparing orders [and] executing trades based on determination rules, which is similar to the commercial practices that have been found by the courts to be abstract ideas. Final Act. 10–11. Consistent with the Examiner’s determination, we conclude the claims are directed to fundamental economic practices, such as testing trading strategies, which is a type of abstract idea, i.e., certain methods of organizing human activity. We further determine that the claims are directed to a Appeal 2018-002989 Application 13/617,438 8 mental process, which is another type of abstract idea. For at least the following reasons, we are persuaded that representative claim 1 recites plural abstract ideas. The Specification discloses provid[ing] traders a means to test trading strategies on a securities exchange in which actual securities are traded, and without actually trading securities when testing trading strategies. To facilitate this in certain embodiments, this application discloses, among other things, systems and methods for placing test orders and real orders, processing the test orders and the real orders, and transmitting results of processing the tests orders and real orders back to the entities originating the orders. Spec. 17. The Specification also discloses that “[t]raders run a variety of tools to test trading strategies” and “[t]he goal of such tools is to determine trading strategies that will result in maximal profit to the trader.” Id. at 16. Claim 1 recites at least “receiving . . . a first[, a second, and a third] order for an[/the] instrument.” See Claim 1. These limitations, under their broadest reasonable interpretation, recites a fundamental economic practice because these limitations recites an operation that would ordinarily take place in a commercial environment. At least the following decisions from our reviewing court have found many types of fundamental commercial practices patent ineligible: OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701 (mem) (2015) (offer- based price optimization); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (transaction guaranty); Personalized Media Commc’ns, L.L.C. v. Amazon.com Inc., 671 F. App’x 777 (mem) (Fed. Cir. 2016) (receiving instructions for ordering); Macropoint, LLC v. Fourkites, Inc., Appeal 2018-002989 Application 13/617,438 9 671 F. App’x 780 (mem) (Fed. Cir. 2016) (tracking freight); Wireless Media Innovations, LLC v. Maher Terminals, LLC, 636 F. App’x 1014 (mem) (Fed. Cir. 2016) (monitoring shipping containers); America’s Collectibles Network, Inc. v. Jewelry Channel, Inc. USA, 672 F. App’x 997 (mem) (Fed. Cir. 2017) (conducting reverse auction by adjusting price and inventory); and EasyWeb Innovations, LLC v. Twitter, Inc., 689 F. App’x 969 (Fed. Cir. 2017) (receiving, authenticating, and publishing data). Additionally, a claim recites a mental process when the claim encompasses acts people can practically perform using their minds or pen and paper. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (determining that a claim whose “steps can be performed in the human mind, or by a human using a pen and paper” is directed to an unpatentable mental process). This is true even if the claim recites that a generic computer component performs the acts. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person's mind.”); see also 2019 Eligibility Guidance 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.”). Claim 1 recites: [a] receiving . . . a first order for an instrument; [b] determining . . . that the first order comprises a real order; [c] based on the first order comprising a real order, entering . . . the first order in Appeal 2018-002989 Application 13/617,438 10 an area . . ., wherein orders in the area . . . are transacted; [d] receiving . . . a second order for the instrument; [e] determining . . . that the second order comprises a test order; [f] based at least in part on determining that the second order comprises a test order, determining . . . whether a processing load . . . is below a defined threshold; [g] based at least in part on determining that the processing load is below the defined threshold, copying . . . the area . . . to a test area . . . and entering the second order in the test area . . ., wherein the test order is not placed into the area . . ., and wherein orders in the test area . . . are not transacted; [h] receiving . . . a third order; [i] determining . . . that the third order comprises a real order; [j] entering . . . the third order in the area . . . and in the test area . . .; [k] matching . . . the first order and the third order in the area . . .; [l] responsive to matching the first order with the third order, (1) executing . . . the first order in the area . . . so that a value for a quantity of the instrument associated with the first order is reduced in the area . . . and (2) executing, . . ., the third order in the area . . . so that a value for a quantity of the instrument associated with the third order is reduced in the area . . .; [m] matching . . . the second order and the third order in the test area . . .; [n] responsive to matching the second order with the third order, executing . . . the second order in the test area . . . so that a value for a quantity of the instrument associated with the second order is reduced in the test area . . .; [o] at one or more points in time after executing the match between the second order and the third order in the test area . . ., comparing . . . the area . . . and the test area . . .; [p] based on the comparison, generating and communicating . . . a report to an originator of the second order; and [q] subsequent to generating and communicating the report, erasing . . . the test area . . .. Claim 1 (with annotations add for reference and italics added for identification). All of the italicized activities, under their broadest reasonable interpretations, encompass acts people can perform practically using their minds or pen and paper because, for example, people can perform the “receiving” steps (limitations [a], [d], and [h]) by simply reading or looking at the recited content, i.e., orders for an instrument. People can Appeal 2018-002989 Application 13/617,438 11 perform the “determining,” “matching,” and “comparing,” steps (limitations [d], [e], [f], [i], [k], [m], and [o]) by reviewing information in the order. People can perform the “entering” steps (limitations [c], [g], and [j]) by submitting the orders for processing. People can perform the “copying,” “erasing,” steps (limitations [g] and [q]) by writing or erasing information on a piece of paper. People can perform the “executing” steps (limitations [l] and [n]) by completing an agreement with a counterparty. Finally, people can “generate and communicate” a report (limitation [p]) by merely writing the report on a piece of paper and passing it to another person. Accordingly, claim 1 recites at least one mental process in addition to the fundamental economic practice. As our reviewing court has held, combining several abstract ideas does not render the combination any less abstract. See, e.g., RecogniCorp, 855 F.3d at 1327 (“Adding one abstract idea . . . to another abstract idea . . . does not render the claim non-abstract.”). Appellant claims that the Examiner “oversimplifies the claims,” fails to account for the specific requirements recited therein, and fails to cite a court decision that is on all fours with respect to the instant claims being found ineligible. Appeal Br. 10–12; Reply Br. 2–3. We are not persuaded because, consistent with our detailed analysis above, representative claim 1 is directed to multiple abstract ideas similar to those which our reviewing courts have found patent ineligible. See supra. Therefore, for at least the aforementioned reasons, consistent with the Examiner’s determination, we determine that representative claim 1 recites plural abstract ideas, which include “mental processes” and “certain methods of organizing human activity.” Appeal 2018-002989 Application 13/617,438 12 Step 2A—Prong 2 (integration into Practical Application)4 Under the Revised Guidance, we now must determine if additional elements in the claims integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). We discern no additional element (or combination of elements) recited in Appellant’s representative claim 1 that integrates the judicial exceptions into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong 2”). For example, Appellant’s claimed additional elements include a “trading and processing computer system” and “computer memory.” Appellant’s Specification discloses “that the various processes described herein may be implemented by, e.g., appropriately programmed general purpose computers, special purpose computers and computing devices” and conventional memory. Spec. 8, 9. These additional elements do not: (1) improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any 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. See MPEP §§ 2106.05(a)–(c), (e)–(h). 4 We acknowledge that some of the considerations at Step 2A, Prong 2, properly may be evaluated under Step 2 of Alice (Step 2B of the Revised Guidance). For purposes of maintaining consistent treatment within the Office, we evaluate them under Step 1 of Alice (Step 2A of the Revised Guidance). See Revised Guidance, 84 Fed. Reg. at 55 nn.25, 27–32. Appeal 2018-002989 Application 13/617,438 13 Appellant contends “the claimed subject matter recites an improvement to computer technology” and “[a]t the very least, the claims recite a set of rules that allow the computer to perform a function that was not previously performed by a computer. Appeal Br. 13–15 (quoting limitations [f] and [g]). We are not persuaded because the “determining,” “copying,” and “entering” functions of limitations [f] and [g] are basic computer functions. Although the generic computer may be processing novel rules (see further discussion infra), the computer is not itself improved. Appellant further contends that “the specification contains teachings of computer improvements.” Id. (quoting Spec. 25, 39). Appellant’s Specification discloses: computer system 230 may generate a pair of tables like table 510, 520 for each test order, such as each time computer system 230 detects a match involving any test order, or when a test order meeting certain conditions. The certain conditions may be data in the test order specifying this type of parallel processing. The certain conditions may be a system condition, such as a system load processing load, or memory usage below threshold values, thereby enabling this type of memory and processor intensive processing without substantial detrimental impact on transaction processing. Spec. 25. Appellant’s Specification further discloses: The goal of such testing using straight through processing test orders is to ensure that the exchange in its entirety functions reliably to implement trading. For example, when hardware or software of any portion of network 1 changes, there is the possibility that such changes may result in data errors and incorrect programming resulting in inaccurate information being stored regarding trading. This possibility may be minimized by testing trading using straight through processing test orders upon Appeal 2018-002989 Application 13/617,438 14 any change of any network component to identify problems before they result in erroneous trade data. Spec. 39. We are not persuaded these passages improve computer functioning. Rather, these passages describe improvements to the business practice of making trading securities more efficient and thus more profitable. Appellant contends that “the features of the instant claims do not preempt all ways of testing a trading system, because the claimed recitations are very specific and do not cover all possible approaches” Appeal Br. 16. Although pre-emption “‘might tend to impede innovation more than it would tend to promote it,’ thereby thwarting the primary object of the patent laws” (Alice, 573 U.S. at 216 (citing Mayo, 566 U.S. at 71)), “the absence of complete preemption does not demonstrate patent eligibility” (Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). Moreover, because we find the claimed subject matter covers patent- ineligible subject matter, the pre-emption concern is necessarily addressed. “Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, . . . preemption concerns are fully addressed and made moot.” Ariosa Diagnostics, 788 F.3d at 1379. For at least the reason noted supra, we determine that claim 1 (1) recites a judicial exception and (2) does not integrate that exception into a practical application. Thus, representative claim 1 is directed to an abstract idea. Alice/Mayo—Step 2 (Inventive Concept) Step 2B identified in the Revised Guidance Turning to the second step of the Alice inquiry, we now look to whether claim 1 contains any “inventive concept” or adds anything Appeal 2018-002989 Application 13/617,438 15 “significantly more” to transform the abstract concept into a patent-eligible application. Alice, 573 U.S. at 216. As recognized by the Revised Guidance, an “inventive concept” under Alice step 2 can be evaluated based on whether an additional element or combination of elements: (1) adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or (2) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present. See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d). We find no element or combination of elements recited in Appellant’s claim 1 that contains any “inventive concept” or adds anything “significantly more” to transform the abstract concept into a patent-eligible application. Appellant has not adequately explained how claim 1 is performed such that it is not a routine and conventional function of a generic computer. Appellant contends that “the lack of prior art rejections in the Office Action indicates that the claims recite a function that a computer could not previously perform.” Appeal Br. 14. However, a finding of novelty or non-obviousness does not require the conclusion that the claimed subject matter is patent-eligible. Although the second step in the Mayo/Alice framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or nonobviousness, but, rather, is a search for “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.”’ Alice, Appeal 2018-002989 Application 13/617,438 16 573 U.S. at 216. “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non- obvious claim directed to a purely abstract idea is, nonetheless, patent- ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”). Because Appellant’s independent claim 1 is directed to a patent- ineligible abstract concept, does not include additional elements that integrate the judicial exception into a practical application, and does not add a specific limitation beyond the judicial exception that is not “well- understood, routine, and conventional,” we sustain the Examiner’s rejection of the claims 1–4, 6–16, 18, and 28–31 under 35 U.S.C. § 101 as being directed to non-statutory subject matter in light of Alice, its progeny, and the Revised Guidance. NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1–4, 6–16, 18, and 28–31 under 35 U.S.C. § 112, first paragraph, as lacking written support in the originally filed Specification for the limitation shown below, which is recited in independent claim 1 and commensurately recited in independent claim 30: [g] based at least in part on determining that the processing load is below the defined threshold, copying, by the trading and processing computer system, the area of computer memory to a Appeal 2018-002989 Application 13/617,438 17 test area of computer memory within the trading and processing computer system and entering the second order in the test area of computer memory, wherein the test order is not placed into the area of computer memory, and wherein orders in the test area of computer memory are not transacted; Appellant relies on page 25, lines 15–30 of the Specification to provide written description support for these limitations. See Appeal Br. 5. This portion of the Specification is reproduced below: [C]omputer system 230 may generate a pair of tables like table 510, 520 for each test order, such as each time computer system 230 detects a match involving any test order, or when a test order meeting certain conditions. The certain conditions may be data in the test order specifying this type of parallel processing. The certain conditions may be a system condition, such as a system load processing load, or memory usage below threshold values, thereby enabling this type of memory and processor intensive processing without substantial detrimental impact on transaction processing. In addition, computer system 230 may be programmed to match and execute in tables 510, 520, any test order and a real order, two matched test orders, or two matched test orders only under certain conditions, or only one of two test orders in a matched pair of test orders, depending on certain conditions, as discussed herein below with reference to FIGS. 8A–C. FIG. 6 shows processing 600 of orders from order generation through transmission of response to an executed order. In step 610, a person or a computerized trading program enters or programmatically generates an order for an instrument in a computer system, such as any one of computer systems 10– 60. Spec. 25, ll. 15–30 The portion of the Specification cited by Appellant does not discuss, in response to determining the processing load to be below a defined Appeal 2018-002989 Application 13/617,438 18 threshold, “copying . . . the area of computer memory to a test area . . . and entering the second order in the test area of computer memory, wherein the test order is not placed into the area of computer memory, and wherein orders in the test area of computer memory are not transacted” as recited in limitation [g].5 Accordingly, we enter a NEW GROUND OF REJECTION against claim 1 under 35 U.S.C. § 112, first paragraph, as lacking written description support in the originally filed Specification. CONCLUSION In view of the foregoing, we affirm the Examiner’s decision to reject claims 1–4, 6–16, 18, and 28–31 under 35 U.S.C. § 101 as being directed to non–statutory matter, and we enter a new ground of rejection of claims 1–4, 6–16, 18, and 28–31 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 5 In the event of further prosecution we encourage the Examiner to thoroughly review the claims for other potential issues under 35 U.S.C. § 112, first, second, and sixth paragraphs. See, e.g., Examining Computer- Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57 (Jan. 7, 2019). Appeal 2018-002989 Application 13/617,438 19 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed New Ground 1–4, 6–16, 18, 28–31 101 Eligibility 1–4, 6–16, 18, 28–31 1–4, 6–16, 18, 28–31 112, first paragraph Written Description 1–4, 6–16, 18, 28–31 Overall Outcome 1–4, 6–16, 18, 28–31 1–4, 6–16, 18, 28–31 Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the [A]ppellants, within two months from the date of the [D]ecision, 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. (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. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Appeal 2018-002989 Application 13/617,438 20 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation