Ex Parte Albert et al

Patent Trial and Appeal Board

Sep 27, 2018

11452653 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/452,653 06/14/2006
12684 7590 10/01/2018
Lempia Summerfield Katz LLC/CME
20 South Clark Street
Suite 600
Chicago, IL 60603
FIRST NAMED INVENTOR
William J. Albert
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
4672-05555BUS 4300
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
10/01/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mail@lsk-iplaw.com
docket-us@lsk-iplaw.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte LORI FLEMM
Appeal2016-005952
Application 11/452,653
Technology Center 3600
Before ERIC B. CHEN, SHARON PENICK, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2016-005952
Application 11/452,653
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3, 5, 6, 8-11, 13--45, 47--49, 51, 52, and 54--88, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to "systems and methods relat[ing] to
allowing trading of over the counter ('OTC') foreign exchange ('FX')
contracts on a centralized matching and clearing mechanism." (Abstract.)
Claim 1, reproduced below, exemplifies the subject matter on appeal:
1. A method comprising:
trading over the counter ( OTC) foreign exchange (FX)
contracts among a plurality of entities via an intermediary that
includes a computer;
receiving, by the computer, a request for quote via a computer
network from a first entity of the plurality of entities, the request
for quote identifying the first entity and specifying an interest in
trading an OTC FX contract, the request for quote not including
any indication of the first entity's ability to perform a transaction
therefore;
determining, by the computer, a subset of the remainder of the
plurality of entities to which the request for quote will be
transmitted by matching one or more parameters of an interest
1 Appellant identifies the Chicago Mercantile Exchange Inc. as the real party
in interest. (See App. Br. 2.) The named inventors are William J. Albert,
Paul Andrew Bauerschmidt, Paul J. Callaway, Dmitriy Glinberg, Edward M.
Gogol, Stephen M. Goldman, Andrew E. Greta, Bryan C. Hunter, Matthew
J. Kelly, John W. Labuszewski, Paul I. Lichter, Jeffrey Robert Mitchell, Ari
L. Studnitzer, Shanthi A. Thiruthuvadoss, and Tae Seok Yoo.
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profile of each of the remainder of the plurality of entities with
one or more parameters of an interest profile of the first entity;
anonymizing, by the computer, the request for quote;
transmitting, by the computer, the anonymized request for
quote via the computer network only to the determined subset of
the remainder of the plurality of entities;
receiving, by the computer, at least one response via the
computer network from at least one of the subset of the
remainder of the plurality of entities responsive to the transmitted
anonymized request for quote, the at least one response
identifying the anonymized request for quote and including an
actionable quote, the at least one
response not identifying the first entity;
transmitting, by the computer via the computer network, the
at least one response only to the first entity; and
receiving, by the computer subsequent to the transmitting of
the at least one response, an indication of acceptance of the
actionable quote of one of the at least one response by the first
entity and, in response thereto, performing a first transaction
between the intermediary and the first entity in accordance with
the actionable quote, and performing a second transaction,
independent of the first transaction, in accordance with the
actionable quote between the intermediary and the entity of the
remainder of the plurality of entities from which the actionable
quote was received, wherein performance of the first transaction
does not depend upon performance of the second transaction, the
first entity and the entity of the remainder of the plurality of
entities from which the actionable quote was received not being
identified to each other.
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THE REJECTIONS AND THE REFERENCES
1. Claims 1, 47, 87, and 88 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. (See Final Act. 2--4.)
2. Claims 1, 47, 87, and 88 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter the applicant regards as the invention.
(See Final Act. 4.)
3. Claims 1-3, 5, 6, 8-11, 13--45, 47--49, 51, 52, and 54--88 stand
rejected under 35 U.S.C. § 101 "because the claimed invention is directed to
non-statutory subject matter." (See Final Act. 5---6.)
4. Claims 1-3, 5, 6, 8-11, 13--45, 47--49, 51, 52, and 54--88 stand
rejected under 35 U.S.C. § I03(a) as unpatentable over May (US
2002/0116317 Al; published Aug. 22, 2002) and Levy (US 7,860,796 B2;
issued Dec. 28, 2010). (See Final Act. 6-10.)
5. Claims 15, 17, 19, 20, 23, 27-30, 42, 56, 58, 60, 61, 64, 68-71,
and 83 stand rejected under 35 U.S.C. § I03(a) as unpatentable over May,
Levy, and Finebaum (US 2002/0156719 Al; published Oct. 24, 2002). (See
Final Act. 11-12.)
ANALYSIS
Section 112
Whether a specification complies with the written description
requirement is a question of fact assessed on a case-by-case basis. See, e.g.,
Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000)
(citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)).
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The original disclosure need not describe the claimed subject matter using
the same terms, or in haec verba, but must convey with reasonable clarity to
those skilled in the art that the Applicant was in possession of the claimed
invention. See id.
The Examiner finds the claim language "the request for quote not
including any indication of the first entity's ability to perform a transaction
therefore" and "wherein performance of the first transaction does not depend
upon performance of the second transaction, the first entity and the entity of
the remainder of the plurality of entities from which the actionable quote
was received not being identified to each other" not supported in the original
application. (See Final Act. 3.) Citing "at least paras. 24, 25, 168, 169 and
226, as well as originally filed claim 12," Appellant argues one of skill in the
art would "appreciate that the claimed DRFQ request, in the context of a
system which novates transactions and buffers risk, in concert with the
disclosed exemplary DRFQ message content ... does not include any
indication of the entity's ... ability to perform as this information is not
relevant to the process." (App. Br. 7.)
We agree with Appellant that the cited portions of the Specification 2
support the concept that "performance of the first transaction does not
depend upon performance of the second transaction." We do not agree,
however, that they provide adequate support for "the request for quote not
including any indication of the first entity's ability to perform a transaction
therefore" or "the first entity and the entity of the remainder of the plurality
of entities ... not being identified to each other." It does not necessarily
2 We note that the specification does not include a paragraph 226.
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follow from the fact that the exchange operates as an intermediary that the
request does or does not have certain content.
We accordingly sustain the rejections of claims 1, 4 7, 87, and 88
under Section 112, first paragraph. 3
A claim is sufficiently definite when "cast in clear-as opposed to
ambiguous, vague, indefinite-terms." In re Packard, 751 F.3d 1307, 1313
(Fed. Cir. 2014); see MPEP 2173.02(II) (advising examiners that the
indefiniteness standard is whether "the language of the claim is such that a
person of ordinary skill in the art could not interpret the metes and bounds of
the claim so as to understand how to avoid infringement").
The Examiner rejects claims 1, 47, 87, and 88 under Section 112,
second paragraph, finding it "unclear ... what constitutes a remainder 'of
the plurality of entities'" because "the specification does not provide a
definition for ascertaining the requisite degree or standard, and one of
ordinary skill in the art would not be reasonably apprised of the scope of the
invention." (Final Act. 4.) Appellant responds that "[i]n the context of the
claim, trading is described as occurring among a 'plurality of entities' and a
request for quote is received from 'a first entity of the plurality of entities,'"
that "[t]he claim then goes on to determine which of the other of the
plurality of entities, i.e. which of the 'remainder of the plurality of entities'
or which of the 'rest' of the plurality of entities NOT including/aside from
3 Although the Examiner did not reject the dependent claims on written
description grounds, a claim depending from a claim that is not supported by
sufficient written description would be infirm for the same reason. Because
we sustain the written description rejection, we do not reach the Examiner's
conclusion that these claims "are, additionally, inoperable." (Final Act. 3.)
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the first entity sending the request, will receive the request," and that "[ o ]ne
of ordinary skill in the art would understand this language to define between
the entity sending a request and all of the other entities which may receive
that request." (App. Br. 8.)
We do not agree with the Examiner that the claim is faulty for not
indicating "what criteria is used to determine the remainder of the plurality
of entities" (Ans. 6) and, instead, agree with the Appellant, for the reason
stated by Appellant, that the claim is not indefinite. We accordingly do not
sustain the rejection under 35 U.S.C. § 112, second paragraph.
Section 101
The Examiner finds the claims "directed to the abstract idea of (i) a
fundamental economic practice and/or (ii) a method of organizing human
activities," noting that "in Alice Corp. the court found that 'intermediated
settlement' was a fundamental economic practice, which is an abstract idea."
(Final Act. 5.) The Examiner further found that "[v]iewed as a whole," any
"additional claim element( s) do not provide meaningful limitation( s) to
transform the abstract idea into a patent eligible application of the abstract
idea such that the claim( s) amounts to significantly more than the abstract
idea itself." (Id. at 5---6.)
Appellant argues that the claims are not abstract because they "are
directed to a novel and patentable communication and transaction protocol
which can be used by a trading system to increase transaction volume while
minimizing network bandwidth consumption and computational load on the
systems ... thereby improving the efficiency and communication/
computational capacity of that system and transaction processing systems
implemented thereby." (App. Br. 9.) Appellant further argues "the claimed
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invention improves upon the technical field of data and transaction
processing by providing a system which facilitates anonymized direct
communication between parties interested in transacting with one another"
and that the claimed system "eliminates unnecessary broadcasting of
messages expressing interest to uninterested counter-parties, thereby
improving transactional throughput as well as minimizing the consumption
of communications bandwidth and risk exposure and thereby encouraging
participation by market participants." (Id. at 9.)
We agree with the Examiner that the claims are not sufficiently
concrete, lack something "significantly more," as, as such, are unpatentably
abstract under Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347
(2014), and subsequent Federal Circuit case law that binds our review. The
instant claims, directed to computerized intermediated trading, reside at the
same level on the scale of abstraction as the claims directed to computerized
intermediated settlement held ineligible in Alice.
Appellant's argument that the claimed methods are "novel" is not
persuasive because "a claim for a new abstract idea is still an abstract idea."
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016). Even though the Section 101 inquiry and the Section 102/103 inquiry
might sometimes overlap, a novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, ineligible for patenting. See Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1311 (Fed. Cir. 2016) (Reyna,
J., dissenting) ("The inventiveness inquiry of§ 101 should ... not be
confused with the separate novelty inquiry of§ 102 or the obviousness
inquiry of§ 103.").
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We also do not agree that the claimed methods are eligible because
they represent an improvement in the operation of computers, because
merely programming a computer to implement the trading idea does not
change how the computer itself operates. Appellant's claims are directed to
an algorithm running on a conventional computer using standard
programming techniques, not new hardware or a new hardware or software
technique or configuration.
Nor do we agree that these claims are directed to an improvement in a
"technical field"; instead, we find they are directed to a business process that
uses a conventional computer for speed or convenience, which is
insufficient, because "merely adding computer functionality to increase the
speed or efficiency ... does not confer patent eligibility on an otherwise
abstract idea." Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1370 (Fed. Cir. 2015); see also LendingTree, LLC v. Zillow, Inc.,
656 F. App'x 991, 997 (Fed. Cir. 2016) (holding ineligible claims to a
computerized method of speeding up a loan-application process). Nothing
in the claims involves the computer functioning in anything other than the
standard way. The computer may provide an improved ( e.g., faster) way to
execute the idea, but that would not make the idea eligible for patenting.
That these claims are directed to an abstract idea is confirmed by the
fact that the claimed system of trading thorough an intermediary is of the
type that could be performed manually. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] method that can
be performed by human thought alone is merely an abstract idea and is not
patent-eligible under§ 101."). For example, we see no reason why the
system of claim 1 would not function, though perhaps more slowly, were the
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receiving, determining, anonymizing, transmitting, etc. performed by one or
more individuals instead of "by the computer," as claimed. A person could
receive a request for quote, match the quote with interests of others, conceal
the name of the requesting party, send the request, receive a response,
transmit that response to the requestor, receive an indication of acceptance,
and independently perform the transactions.
This case is not like Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016), or DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014). The Enfish claims were eligible because they recited
a "self-referential table" that was "a specific type of data structure designed
to improve the way a computer stores and retrieves data in memory."
Enfish, 822 F.3d.at 1339. Appellant's claimed process does not "improve
the way a computer stores and retrieves data in memory" or otherwise
improve how the computer itself operates; instead, it uses conventional
computer programming techniques to implement a system for trading that
otherwise could be done by hand. The claims in DDR were directed to a
virtual store within a virtual store concept that had no brick and motor
analogue and was determined to be a fundamentally new way to operate in
the Internet environment. See DDR Holdings, 773 F.3d at 1257. Although
Appellant's claimed method may be a new way to trade using an
intermediary, it is not a fundamentally new or different way to use the
Internet or computers.
In the end, Appellant's Specification does not describe any new or
unique computer hardware or software techniques, and the law, as it stands
now, is clear that simply programming a computer to perform what would
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otherwise be an abstract idea is not sufficient to impart patent eligibility.
See Alice Corp., 134 S. Ct. at 2359.
The rejection under 35 U.S.C. § 101 is sustained.
Section 103
Appellant argues "neither May, Levy nor Finebaum disclose or
suggest the claimed distribution of a quote request to a subset of entities
determined based on interest profiles." (App. Br. 12.) Citing paragraphs
111, 331, and 338 of May, the Examiner responds that "the phrase 'a subset
of users' is broad in scope" and "[i]n May the subset of users is based on the
traders profile ... and determines include information on what the user is
allowed to trade, what markets the user is interested in monitoring, and other
user specific information that was previously been defined by the user or
another individual such a credit officer or the like." (Ans. 16.) Appellant
responds that "May does not disclose Appellant's claimed transmission of
requests ONLY to a subset of entities based on interest profiles," as
"[i]nstead, ALL users of the system of May receive all transactions which
are then filtered by the user's workstation based on their preferences."
(App. Br. 12.)
We agree that May's use of trader profiles does not show
"transmitting ... the anonymized request for quote ... only to the
determined subset of the remainder of the plurality of entities" because, as
Appellant points out, the requests are transmitted to all. We accordingly do
not sustain the Section 103 rejections.
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DECISION
The rejection of claims 1, 47, 87, and 88 under 35 U.S.C. § 112, first
paragraph is sustained.
The rejection of claims 1, 47, 87, and 88 under 35 U.S.C. § 112, first
paragraph is not sustained.
The rejection of claims 1-3, 5, 6, 8-11, 13--45, 47--49, 51, 52, and 54--
88 under 35 U.S.C. § 101 is sustained.
The rejections of claims 1-3, 5, 6, 8-11, 13--45, 47--49, 51, 52, and
54--88 are under 35 U.S.C. § 103(a) are not sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED4
4 Because we sustain at least one ground of rejection with respect to each
claim on appeal, the Examiner's decision rejecting claims 1-3, 5, 6, 8-11,
13--45, 47--49, 51, 52, and 54--88 is affirmed. See 37 C.F.R. § 4I.50(a)(l).
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