Ex Parte ALTMAN

Patent Trial and Appeal Board

Dec 18, 2018

12698774 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/698,774 02/02/2010 Lloyd ALTMAN
28164 7590 12/18/2018
BGL/ Accenture - Chicago
BRINKS GILSON & LIONE
PO BOX 10395
CHICAGO, IL 60610
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.
10022-2471 4666
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
12/18/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LLOYD ALTMAN
Appeal 2017-0004 71 1
Application 12/698,7742
Technology Center 3600
Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 2, 5-22, 26-28, and 37--40. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("Appeal Br.," filed
March 28, 2016), Reply Brief ("Reply Br.," filed October 11, 2016), the
Examiner's Answer ("Ans.," mailed August 8, 2016), and Final Office
Action ("Final Act.," mailed November 27, 2015).
2 Appellant identifies Accenture Global Services Limited as the real party in
interest. Appeal Br. 2.
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CLAIMED INVENTION
Appellant's claims "are generally related to bond trading and
securities trading" (Spec. ,r 1 ).
Claims 1, 10, 20, and 37 are the independent claims on appeal. Claim
1, reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A non-transitory computer-readable storage
medium having stored thereon, computer executable instructions
that, if executed by a computer system comprising a processor
and memory, cause said computer system to perform a method
compnsmg:
[a] creating a to-be-announced (TBA) bond contract with
a TBA bond contract selling module executed by said processor,
wherein said TBA bond contract represents a class of bonds to
be delivered upon settlement of said TBA bond contract and
comprises a general description of said class of bonds without
identifying individual bonds;
[b] receiving, by said processor at said computer system,
a request to purchase said TBA bond contract, said request
initiated by a buyer, where said TBA bond contract is selected
by said buyer from a list of TBA bond contracts presented to said
buyer via a first graphical user interface, wherein said TBA bond
contract is sold to said buyer in response to said request;
[ c] registering, using said processor, the purchase of said
TBA bond contract by said buyer with a clearing entity;
[ d] receiving, by the processor at said computer system, a
request to post a first collateral for said TBA bond contract to
said clearing entity prior to settlement of said TBA bond
contract, where an amount of the first collateral requested is
based on a price of said TBA bond contract;
[ e] posting collateral electronically to said clearing entity
in response to said request to post a first collateral for said TBA
bond contract;
[ fJ receiving, by the processor at said computer system, a
request to sell said TBA bond contract, said request to sell
initiated by said buyer, where said TBA bond contract is selected
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by said buyer based on said general description of said TBA bond
contract via a second graphical user interface presented to said
buyer, wherein said TBA bond contract is purchased from said
buyer in response to said request;
[g] registering, using said processor, the sale of said TBA
bond contract by said buyer with said clearing entity;
[h] transmitting, by the processor at said computer system,
a request to said clearing entity prior to settlement to post a
second collateral for said TBA bond contract, where an amount
of the second collateral requested is based on said price of said
TBA bond contract;
[i] receiving collateral electronically from said clearing
entity in response to said request to post a second collateral for
said TBA bond contract;
Li] transmitting an alert to said buyer, by said processor at
said computer system, alerting said buyer as to when said TBA
bond contract is going to settle;
[k] upon settlement of said purchase of said TBA bond
contract, receiving, by said processor at said computer system, a
notification of specific bond identifiers represented by said TBA
bond contract, wherein said specific bond identifiers identify
individual bonds to be used to settle said TBA bond contract; and
[l] receiving, electronically, at said computer system, said
individual bonds identified by said specific bond identifiers to
settle said TBA bond contract.
REJECTION
Claims 1, 2, 5-22, 26-28, and 37--40 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues claims 1, 2, 5-22, 26-28, and 37--40 as a group
(Appeal Br. 8-18; Reply Br. 2---6). We select independent claim 1 as
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representative. The remaining claims stand or fall with claim 1. See 37
C.F .R. § 41.3 7 ( c )(1 )(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination"' to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, 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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
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McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Appellant argues that the Examiner's rejection is in error because the
Examiner fails to establish a prima facie case of subject matter ineligibility
(see Appeal Br. 11-13; see also Reply Br. 2-3, 5---6). Appellant's argument
is not persuasive.
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
analyzes the claims using the Mayo/Alice two-step framework (see, e.g.,
Final Act. 2-8; Ans. 2-15). Here, the Examiner maintains that the claims
are directed to "a series of steps instructing how to buy and sell bonds which
is a fundamental economic practice and thus an abstract idea." (Final Act.
7). The Examiner maintains that "[t]he claims were analyzed including all
of the limitations. The limitations just further limit the abstract idea itself
and are abstract themselves" (Ans. 7). The Examiner also determined that
the claims do not include additional elements or a combination of elements
that are sufficient to amount to significantly more than the judicial exception
(Final Act. 7-8; Ans. 8-15). The Examiner, thus, has clearly followed the
two-part framework specified by the Supreme Court in Mayo/Alice
consistent with Office guidelines.
In this regard, the Examiner has articulated the reasons for the
rejection and has notified Appellant of the reasons for the rejection "together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application." 35 U.S.C.
§ 132. And we find that, in doing so, the Examiner sets forth a prima facie
case of subject matter ineligibility. See In re Jung, 637 F.3d 1356, 1362
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(Fed. Cir. 2011); Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 "is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.").
We also agree with the Examiner that under step one of the
framework set forth in Mayo/Alice, the claimed invention is directed broadly
to "a series of steps instructing how to buy and sell bonds which is a
fundamental economic practice and thus an abstract idea" (Final Act. 7), and
is similar to certain fundamental economic and conventional business
practices that our reviewing courts have found patent ineligible, like
intermediated settlement (see Alice, 134 S. Ct. at 2356-57), creating a
contractual relationship in guaranteeing performance of an online transaction
(see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352, 1355 (Fed. Cir.
2014) ), "verifying the validity of a credit card transaction over the Internet"
(CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011)), and using advertising as a currency on the Internet (Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)).
Furthermore, as in Alice, we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice and the concept
of buying and sell bonds at issue here. Both are squarely within the realm of
"abstract ideas" as the Court has used that term. See Alice, 134 S. Ct.
at 2357. Here, independent claim 1, unlike the claims found non-abstract in
prior cases, uses generic computer technology (see, e.g., Spec. ,r 69
( describing "an exemplary system module for implementing embodiments
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includes a general purpose computing system environment, such as
computing system environment 700."); see also id. ,r,r 70-74), and does not
focus on a "specific improvement to the way computers operate" (see, e.g.,
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016))
or recite an improvement to a particular computer technology. See, e.g.,
McRO, 837 F.3d at 1314--15 (determining claims not abstract because they
"focused on a specific asserted improvement in computer animation").
Equally unpersuasive is Appellant's argument that this conclusion
may only be reached based on the Examiner's "unsupported
overgeneralizations" (Appeal Br. 11-13 (citing Google Inc. v. SimpleAir
Inc., CBM 2014-00170, 2015 WL 331089 (PTAB Jan. 22, 2015); see also
Reply Br. 2-3). At the outset, we note that Google is a non-precedential
Board decision denying institution of a covered business method patent
review, and, as such, is not binding on this panel. Nonetheless, we are not
persuaded by the analogy Appellant attempts to draw.
In Google, the Petitioner advanced arguments that did not align with
the language of the claims and, as such, the Board found that Petitioner's
arguments did not show that the challenged claims were more likely than not
patent-ineligible under 35 U.S.C. § 101. See, e.g., Google, 2015 WL
331089, at * 10 ("Petitioner does not explain sufficiently how the challenged
claims allegedly relate to the abstract idea of packaging and routing
information as part of a subscription service. This is particularly true when
none of the challenged claims recite[] a 'subscription service' at all"); see
also id. ( describing flaws in Petition's analogy of the challenged claims to
conventional periodical publication delivery). Here, Appellant has not
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shown there to be a similar deficiency in the Examiner's analysis. Thus,
independent claim 1 is directed to a patent-ineligible abstract idea.
Turning to the second step of the Mayo/Alice framework, rather than
reciting additional elements that amount to "significantly more" than the
abstract idea, exemplary independent claim 1, at best, adds only a
"processor," "memory," and "graphic user interface," i.e., "a general
purpose computing system environment, such as computing system
environment 700." (see, e.g., Spec. ,r 69), which lacks an inventive concept.
Thus, we agree with the Examiner that exemplary independent claim 1 does
not include additional elements alone or in combination that are sufficient to
amount to significantly more than the abstract idea. DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal quotation
marks omitted) ("[ A ]fter Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible .... The bare fact that a computer exists in the physical
rather than purely conceptual realm 'is beside the point."').
We agree with the Examiner that "[ c ]laiming a computer system to
facilitate creation and trading of bonds using a general purpose computer is
not significantly more" ( Ans. 11) and each of the steps of independent claim
1 "merely instructs the practitioner to implement the abstract idea with
'routine, conventional activit[ies ], ' which is insufficient to transform the
patent-ineligible abstract idea into patent eligible subject matter" (Final Act.
4--5 (emphases omitted)). In contrast, Appellant argues
the claims go far beyond merely reciting "a series of steps
instructing how to buy and sell bonds" and instead define a
patent-eligible application of the idea, as the claimed invention
provides a more efficient machine for buying and selling bonds
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that enables the trading of to-be-announced (TBA) bond
contracts, resulting in increased liquidity within the bond market.
(Appeal Br. 9; see also Reply Br. 3). However, we find that the
"improvement" to which the Appellant refers is a business improvement
rather than an improvement to a technological or technical field. See
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir.
2015), cert. denied, 136 S. Ct. 2510, 195 L. Ed. 2d 841 (2016) (finding that
the "claims recit[ ed] a commonplace business method aimed at processing
business information despite being applied on a general purpose
computer."); see also Alice, 134 S. Ct. at 2359.
Here, as the Examiner points out (see, e.g., Ans. 11 ), there is no
indication in the record that "a more efficient machine for trading bonds" or
any other specialized computer hardware is required, or evidence that the
programming related to this "improvement" would entail anything atypical
from conventional programming. Instead, the Specification discloses
utilizing conventional computer components (see Spec. ,r,r 69-74). See
Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, (Fed. Cir. 2012) ("The
computer required by some of Bancorp' s claims is employed only for its
most basic function, the performance of repetitive calculations, and as such
does not impose meaningful limits on the scope of those claims.").
And, considered as an ordered combination, the computer components
of Appellant's independent claim 1 add nothing that is not already present
when the limitations are considered separately. Viewed as a whole,
Appellant's independent claim 1 simply recites "a series of steps instructing
how to buy and sell bonds which is a fundamental economic practice and
thus an abstract idea" (Final Act. 7) using a computer. The claims do not,
for example, purport to improve the functioning of the computer itself. Nor
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do they effect an improvement in any other technology or technical field.
Instead, the claims at issue amount to nothing significantly more than an
instruction to apply the abstract idea of buying and selling bonds (Final Act.
7), which under our precedents, is not enough to transform an abstract idea
into a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
Appellant further argues that the claims amount to "significantly
more" than an abstract idea because they are "[ s ]imilar to the claims directed
to distributing unconventional coupons in" the non-Precedential Decision of
Ex parte Barous, Appeal No. 2016-003320 (PTAB 2016). However, the
decision in Barous is a non-precedential Board decision, and, like Google,
discussed above, not binding on this panel.
Appellant last argues that independent claim 1 includes "limitations
that would not necessarily be met by every possible form of buying and
selling bond contracts," and as such, "there is no risk that the claim will 'tie
up' excepted subject matter so as to preempt others from using the claimed
subject matter" (Appeal Br. 16-17; see also Reply Br. 4---6). However,
Appellant's preemption argument does not alter our§ 101 analysis.
Preemption concerns are fully addressed and made moot where a patent's
claims are deemed to disclose patent ineligible subject matter under the two-
part framework described in Mayo and Alice. Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "While preemption
may signal patent ineligible matter, the absence of complete preemption
does not demonstrate patent eligibility." Id.
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of independent claim 1, and claims 2, 5-22, 26-28, and 37-
40, which fall with independent claim 1.
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DECISION
The Examiner's rejection of claims 1, 2, 5-22, 26-28, and 37--40
under 35 U.S.C. § 101 is affirmed.
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).
AFFIRMED
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