Ex Parte Alderucci et al

Patent Trial and Appeal Board

Nov 2, 2017

12494438 (P.T.A.B. Nov. 2, 2017)

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.
12/494,438 06/30/2009 Dean P. Alderucci 09-2319 1149
63710 7590 11/06/2017
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
11/06/2017 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):
patentdocketing @ cantor.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEAN P. ALDERUCCI, CHARLES PLOTT, MARK MILLER,
HOWARD W. LUTNICK, ANDREW FISHKIND, BRIAN GAY,
and KEVIN FOLEY
Appeal 2017-004530
Application 12/494,438
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is a decision on rehearing in Appeal Number 2017-004530. We
have jurisdiction under 35 U.S.C. § 6(b).
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision, or to responses
to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R.
§ 41.52. Appellants may also present a new argument based upon a recent
relevant decision of either the Board or a federal court. 37 C.F.R.
§ 41.52(a)(2).
Appeal 2017-004530
Application 12/494,438
ANALYSIS
The Appellants argue that the Decision mailed June 30, 2017 has
seven points that were misapprehended or overlooked.
The Appellants argue: 1) that the Final Rejection failed to make a
prima facie showing of abstractness, 2) that the Decision made a new
grounds of rejection in articulating the alleged abstract idea and fails to
make a prima facie case, 3) that the claims are not directed to an abstract
idea, 4) that there is no prima facie case for showing the claims “do not add
significantly more” than the abstract idea, 5) that the claims do add
“significantly more” than an abstract idea, and 6) that the dependent claims
were not addressed for the rejection under 35 U.S.C. § 101, and 7) that the
rejection under 35 U.S.C. § 103(a) ignored claim limitations for claims 3,
12, and 13 (Req. 2—16).
We have considered but are not persuaded by these arguments.
With regard to the first argument, the Examiner’s Answer mailed
November 25, 2016 has been reviewed and considered to have set out a
prima facie case with regard to the issue of the claims being directed to an
abstract idea (Ans. 3—6). The Examiner considered the claims in light of
Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347 (2014) and set forth
a prima facie case that the claims are directed to a fundamental economic
practice and method of organizing human activities, i.e., to an abstract idea
(Final Act. 10, Ans. 3—6). The Examiner also considered other relevant
cases in the analysis under 35 U.S.C. § 101 (Ans. 3—6). The Appellants
argue that the Examiner did not consider the Federal Circuit decision in
Trading Technologies Inc. v. CQG, Inc. 675 F. App’x 1001 (Fed. Cir.
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Application 12/494,438
2017).1 The cited case was decided on January 18, 2017, which was after
the Answer was filed, and was designated as non-precedential. Regardless,
the consideration of that case does not change the prima facie case
established to show that the specific claims in this particular case at hand are
directed to an abstract idea.
The Appellants secondly argue that the Decision makes a new ground
of rejection in stating that the claims are directed to the abstract idea of
“executing a trade order for a financial instrument based upon set
conditions” and further that a prima facie case was not established (Req. 6,
7). The Answer determined that the claimed “transaction between two
parties with rules governing such transactions (that is, how orders are
matched for execution)” was a “fundamental economic practice” and
“organization of human activity” and, therefore, an abstract idea (Ans. 3).
Here, the Decision also determined and affirmed the claim to be directed to a
“fundamental economic practice” and an abstract idea (Dec. 5). Although
the Decision uses slightly different language in stating that the claim’s
abstract nature is directed to “executing a trade order for a financial
instrument based upon set conditions” this description of the claim does not
change the thrust of the rejection to that of being a new ground of rejection.
Note that the claim is directed to the execution of a trade order. Abstract
ideas can be characterized at different levels of abstraction. Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (“An abstract idea
can generally be described at different levels of abstraction.”). The
Appellants again reference the non-precedential case, Trading Technologies
1 The Appellants cite “Trading Tech v. CQG” without a full legal cite in the
Request. The case is assumed to be the one we reference by citation here.
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Application 12/494,438
here, but regardless as noted above the consideration of that case in the
analysis does not change the prima facie case established to show that the
specific claims in this particular case at hand are directed to an abstract idea.
Although the Appellants argue that parallel cases were not considered as
noted above, the Final Rejection took both Alice and other decisions into
account (Ans. 3—6). Regardless, in Chicago Board of Options Exchange v.
International Securities Exchange, 640 F. App’x 986 (Mem) (Fed. Cir.
2016), the Federal Circuit affirmed the determination in three similar cases
(CBM2013-00049, CBM2013-00050, CBM2013-00051) involving trading
technologies that were held to not meet the requirements of 35 U.S.C. § 101.
The Appellants thirdly argue that the claims are not directed to an
abstract idea as they provide “an improvement to computer functionality”
and also “do not preempt an entire area” (Req. 9, 10). We have considered
but reject both these arguments. The claims do not recite sufficient subject
matter to take them from being in the realm of what is encompassed as an
abstract idea into patentable subject matter and fail to add significantly more
to “transform” the nature of the claims.
We note the point about pre-emption in the Request at page 9.
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, 134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1293 (2012)), “the absence of complete
preemption does not demonstrate patent eligibility” (Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (2015) (“[Tjhatthe claims do not preempt
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Application 12/494,438
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”).
The Appellants make a fourth argument that a prima facie case has not
been established based on the failure to show that the claim limitations, both
individually and as an ordered combination, “do not add significantly more”
than the abstract idea (Req. 10, 11). We have considered but reject this
argument as well. Here, we again determine that the Examiner’s
determination in this regard was proper. Also, note that the Decision at
page 5 states that we considered the elements of the claim both individually
and as an ordered combination in the analysis.
The Appellants make a fifth argument that the claims are directed to
more than an abstract idea because they are rooted in “computer technology”
(Req. 11—14). We disagree and instead determine that the claims are
directed to an abstract idea as outlined and of record in the case. Here, the
claims are rooted in basic trading practices that are used in financial markets,
not computer technology.
The Appellants make a sixth argument that the rejection of record and
Decision ignore the dependent claims (Req. 14). This argument is not well-
taken as the Appellants failed to specifically argue any of the dependent
claims in the Appeal Brief filed in this case. Only those arguments actually
made by Appellants were considered in the Decision. Arguments which
Appellants could have made but chose not to make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). Regardless, after a review of the dependent claims, we
determine that these rejections are proper as well.
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Application 12/494,438
The Appellants make a seventh argument that the rejection of
claim 12 made under 35 U.S.C. § 103(a) is improper because it contains a
similar limitation to that of claim 1 for which the rejection was reversed as
not showing an argued claim limitation (Req. 14, 15). However, the argued
claim limitation in the Request at page 14 is different in scope than that of
claim 1. As the argued claim limitation is different in scope than that from
that argued for claim 1 (which for instance requires a second indication and
second trade), this argument is not taken.
The Appellants also argue that claim 1 recites “in response to
determining that the firm order has been cancelled, indicate that the firm
order has been cancelled to the buy-side participant” and attempt to tie this
to a limitation in claim 12. However, the above recited claim limitation was
is not present in claim 12. The Appellants cite an explicit claim limitation in
claim 12 to:
display an indication of the firm order to a buy-side participant
in the market place;
receive an indication that the firm order is no longer active;
display an indication that the firm order is no longer active ....
receive an indication that the order for the side of the financial
instrument from the sell-side participant became active and that in
response to the order becoming active and a receipt of the indication
to execute the trade, the trade was executed
(Req. 15, 16). This claim limitation, however, was not specifically argued in
the Appeal Brief and differs substantially from the cited argued claim
limitation in claim 1. The Appellants make the same argument for
dependent claims 3 and 13, but these claims also do not include this claim
limitation as the “in response to determining” step in those claims refers to a
“second trade” instead of that “the firm order has been cancelled” as in
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Application 12/494,438
claim 1. Thus, the argued claim limitations does not appear in the claims 3,
12, and 13.
For these reasons, the request for rehearing is denied.
CONCLUSION
The Appellants’ request for reconsideration has not convinced us that
we have overlooked or misapprehended issues in the previous analysis in
light of the arguments presented.
DECISION
REHEARING DENIED
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