Ex Parte Barry et al

Patent Trial and Appeal Board

Feb 8, 2018

14132408 (P.T.A.B. Feb. 8, 2018)

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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4672-13020AU S 9703
EXAMINER
POINVIL, FRANTZY
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/132,408 12/18/2013
12684 7590 02/12/2018
Lempia Summerfield Katz LLC/CME
20 South Clark Street
Suite 600
Chicago, IL 60603
James David Russell Barry
02/12/2018 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 JAMES DAVID RES SELL BARRY, PETER NUNN,
and RUSSELL ROBERTSON1
Appeal 2016-008421
Application 14/132,408
Technology Center 3600
Before CARL W. WHITEHEAD JR., BRADLEY W. BAUMEISTER, and
BETH Z. SHAW, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20. App. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants list Chicago Mercantile Exchange Inc. as the real party in
interest. Appeal Brief 2 (filed January 11, 2016) (“App. Br.”).
Appeal 2016-008421
Application 14/132,408
THE INVENTION
Appellants describe the present invention as follows:
The disclosed embodiments relate to an order entry
interface used by [financial] market participants to enter orders
for electronic trading. The order entry interface has a visual
indication of a price band imposed upon orders. The visual
indication may help market participants know the present
location of upper and lower bounds of the price band. Such
knowledge may help avoid the entry of fictitious orders by
market participants attempting to learn the location of the price
band. Such knowledge may also help market participants drive
the lower or upper bound of the price band toward the price at
which the market participant desires to place an order.
Spec. 110.
Independent claim 1, reproduced below with added emphasis,
represents the appealed claims:2
1. A computer-implemented method of facilitating an order
by a market participant for a trade of a financial instrument via
an exchange computer system, the method comprising:
determining a price band for valid orders of the financial
instrument, the price band being imposed by the exchange
computer system to validate that the orders fall within an
acceptable range and such that orders of the financial instrument
falling outside of the acceptable range are rejected;
generating, with a processor, an order entry interface for
rendering via a display coupled with the processor, the order
entry interface being configured for entry of data by the market
participant indicative of the order of the financial instrument, the
order entry interface comprising a visual indication of the price
band;
2 Appellants argue claims 1—20 together as a group. See generally App. Br.
Accordingly, we select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Application 14/132,408
capturing, with an input device coupled with the
processor, data indicative of the order entered via the order entry
interface; and
transmitting, via a communication network linking the
processor and the exchange computer system, the captured data
to the exchange computer system if the order falls within the
price band.
THE REJECTION AND CONTENTIONS
Claims 1—20 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 4.3 The Examiner finds that the
claims are directed to “facilitating an order by a market participant for a
trade,” which “involves a fundamental economic practice.” Final Act. 2.
The Examiner further determines that, as claimed, “the processor, entry
interface and the function of transmitting are routine computer functions for
processing the abstract idea.” Id. at 3. The Examiner determines that “[t]he
order interface does not attribute to patent eligible subject matter because the
claimed order entry is being used in its expected manner” (id.) and “the
configuration of a computer linking to another computer system or processor
is the normal and routine configuration of a computer networking system”
(id. at 4). As such, the Examiner determines the claims are not directed to a
technological improvement of the abstract idea (id.) and concludes the
claims are instead directed to a patent ineligible abstract idea (id. at 2).
3 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
August 13, 2015 (“Final Act.”); the Examiner’s Answer mailed June 30,
2016 (“Ans.”); and the Reply Brief filed August 30, 2016 (“Reply Br.”).
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Appellants argue that the claims are directed to patent eligible subject
matter for three general reasons. App. Br. 4—7. Appellants first argue the
Examiner improperly characterized the claimed invention. Id. at 4—5.
According to Appellants, “the claimed invention is not merely a trade entry
form[, but] instead facilitates the transaction in connection with a price
band.” Id. at 4. Appellants contend that “[a]ny characterization of the
claimed invention should, at a minimum acknowledge these price band-
related aspects of the invention.” Id. Appellants argue the rejection
fails to address fundamental aspects of the claimed invention,
including, for instance, (i) “the order entry interface comprising
a visual indication of the price band” (referenced herein as “the
price band visualization” aspect), and (ii) “transmitting . . .
captured data to the exchange computer system if the order falls
within the price band” (referenced herein as “the contingent data
transmission” aspect).
Id. at 5 (alteration in original).
Appellants next argue that the claims are not directed to an abstract
idea. Id. According to Appellants,
The present claims are not directed to a fundamental economic
practice, such as the operation of an economic market or the
calculation of an interest payment. The present claims . . .
instead recite specific, non-conventional activity involving
(i) price band visualization, and (ii) contingent data transmission.
These aspects of the claimed invention are not fundamental
economic practices, but rather detailed procedures taken in the
context of a price band imposed by an exchange computer system
to validate that orders falls within an acceptable range.
Id.
Appellants lastly argue the invention amounts to significantly more
than a judicial exception. Id. at 6—7. More specifically, Appellants contend
that the limitations of (i) determining a price band for valid orders, (ii)
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generating an order entry interface, and (iii) “transmitting . . . captured data
to the exchange computer system if the order falls within the price band”
take the present claims out of the realm of simply reciting an abstract idea
and the prescription to “apply it.” Id. (alteration in original). In Appellants’
view, these limitations constitute significantly more beyond an abstract idea
because “the technical improvements involve reducing the number of
rejection messages and other processing associated with handling
unacceptable orders.” Id. at 7. Appellants assert that the Examiner has
failed to evaluate the significantly more requirement in view of the abstract
idea identified in the Office Action. Id. at 6.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
In determining whether the claims set forth patent eligible subject
matter under 35U.S.C. § 101, we first must determine whether the claims at
issue are directed to laws of nature, natural phenomena, or abstract ideas.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). In
considering whether a claim is directed to an abstract idea, we acknowledge,
as did the Supreme Court, that “all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
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71 (2012). We therefore look to whether the claims focus on a specific
means or method that improves the relevant technology or are instead
directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery. See Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1336 (Fed. Cir. 2016).
If the claims are directed to an abstract idea, we then must consider
whether the claim contains an element or a combination of elements that is
sufficient to transform the nature of the claim into a patent-eligible
application. Ultramercial, 772 F.3d at 714; Alice Corp. Pty. Ltd. v. CLS
BankInt7, 134 S.Ct. 2347, 2355 (2014).
In applying step two of the Alice analysis, we must
“determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract
idea into patentable subject matter. We look to see whether there
are any “additional features” in the claims that constitute an
“inventive concept,” thereby rendering the claims eligible for
patenting even if they are directed to an abstract idea. Those
“additional features” must be more than “well-understood,
routine, conventional activity.”
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed.
Cir. 2017) (citations omitted).
“[CJlaims [that] merely require generic computer implementation[]
fail to transform [an] abstract idea into a patent-eligible invention.” Id.
(alteration in original) (citing Alice, 134 S. Ct. at 2357).
ANALYSIS
/.
We agree with Appellants (App. Br. 4) that “characterization of the
claimed invention should, at a minimum, acknowledge these price band-
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related aspects of the invention.” However, consideration of these aspects
does not take the claimed invention outside the realm of an abstract idea.
For example, the price band visualization limitation of claim 1 merely
requires that the price band be displayed on the order entry interface of the
market participant’s processor. The acts of gathering and displaying
information are merely well understood, routine, and conventional uses of a
generic computer.
More importantly, the scope of claim l’s contenting-data-transmission
limitation is broader than Appellants contend. We understand Appellants to
argue that claim 1 sets forth the condition that the captured data is
transmitted to the exchange computer system only if the order falls within
the price band. However, claim 1 is not drafted this narrowly. Claim 1
recites a method comprising, in part, “transmitting, via a communication
network linking the processor and the exchange computer system, the
captured data to the exchange computer system if the order falls within the
price band.” The relevant limitation currently is drafted broadly enough to
encompass transmitting the captured data to the exchange computer system
at least if the order falls within the price band. That is, claim 1 does not
exclude transmitting the captured data to the exchange computer system
when the order falls outside the price band.
It is well settled that “[t]he transitional term ‘comprising’ ... is
inclusive or open-ended and does not exclude additional, unrecited elements
or method steps.” Georgia-Pacific Corp. v. U.S. Gypsum Co., 195 F.3d
1322, 1327 (Fed. Cir. 1999) (citing MPEP § 2111.03 (6th ed.1997)). “A
drafter uses the term ‘comprising’ to mean ‘I claim at least what follows and
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potentially more.’” Vehicular Techs. Corp. v. Titan WheelInt'l, Inc., 212
F.3d 1377, 1383 (Fed. Cir. 2000).
Under this reasonable interpretation, albeit an interpretation that is
broader than argued by Appellants, claim 1 merely sets forth a computer-
implemented method of facilitating an order wherein the determined price
band is displayed on the market participant’s computer and the market
participant transmits the order regardless of whether the order falls within
the price band. As such, we agree with the Examiner that claim 1 merely
sets forth a fundamental economic practice of trading commodities and
applies it to a generic computing environment. The limitations of claim 1,
alone and as an ordered combination, sets forth no technological
improvements that reasonably could be interpreted as constituting
significantly more than this abstract idea.
II.
For the sake of compact prosecution, we now analyze whether claim 1
would be limited to patent eligible subject matter if the claim were to be
interpreted or amended to limit the scope of the contenting-data-transmission
limitation such that the limitation recites “transmitting . . . [only] if the order
falls within the price band.” We conclude that such a narrower requirement,
alone, still would result in the claim merely reciting a method that
constitutes a fundamental economic practice applied on a generic computer.
Specifically, claim 1 reads on the following fundamental economic
practice, as applied on a generic computer: it was a common economic
practice for a market participant to negotiate with a human broker agent of a
seller of financial commodities. In these situations, it further was common
for the broker to reject the market participant’s order and not pass it along to
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the seller if the market participant’s bid was outside of a range pre­
authorized by the seller. Claim 1, as more narrowly interpreted, then, reads
on this transaction being made more efficient by substituting a generic
computer for the seller’s broker agent.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of the appealed claims for being directed to
patent ineligible subject matter. Accordingly, we sustain the rejection under
35 U.S.C. § 101 of independent claim 1, as well as claims 2—20, which are
not argued separately.
DECISION
The Examiner’s decision rejecting claims 1—20 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)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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