Ex Parte Boberski

Patent Trials and Appeals Board

Mar 29, 2019

13921776 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/921,776 06/19/2013
12684 7590 04/02/2019
Lempia Summerfield Katz LLC/CME
20 South Clark Street
Suite 600
Chicago, IL 60603
FIRST NAMED INVENTOR
David Boberski
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.
4672-12003BUS 3608
EXAMINER
WEISBERGER, RICHARD C
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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 DAVID BOBERSKI
Appeal 2017-011399
Application 13/921, 77 6
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
1 The Appeal Brief states Chicago Mercantile Exchange Inc. is the real party
in interest. App. Br. 2.
Appeal 2017-011399
Application 13/921,776
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3---6, 8, 10-16, and 18-22. Claims 2, 7, 9, and 17 has been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Representative Claim
Representative claim 1 under appeal reads as follows ( emphasis
added):
1. A computer-implemented method for modifying
positions stored in a portfolio database in a data transaction
processing system in which data items are transacted by a
hardware matching processor that matches electronic data
transaction request messages for the same one of the data items
based on multiple transaction parameters from different client
computers over a data communication network, the positions
stored in the portfolio database having resulted from the
matching of one or more electronic data transaction request
messages, the method comprising:
receiving, by the data transaction processing system, first
criteria from a first market participant, the first criteria defining
conditions according to which two or more non-identical
positions within a first portfolio stored in the portfolio database
associated with the first market participant are regarded as
being offsettable against each other;
receiving, by the data transaction processing system
independent of the receipt of the first criteria, second criteria
from a second market participant, the second criteria defining
conditions according to which two or more non-identical
positions within a second portfolio stored in the portfolio
database associated with the second market participant are
regarded as being offsettable against each other, wherein at
least one position of the two or more non-identical positions
within the second portfolio represents a counter position to at
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least one position of the two or more non-identical positions
within the first portfolio; and
resolving, automatically by the data transaction
processing system without identifying the first and second
market participants to each other, the two or more non-
identical positions within the first portfolio and/or within the
second portfolio based on the first criteria and the second
criteria to identify at least one of the two or more non-identical
positions of the first portfolio and/or the second portfolio that
may be offset against the other of the two or more non-identical
positions of the first portfolio and/or the second portfolio and
modifying the identified at least one position in the portfolio
database whereby a margin requirement and/or a
transactional fee associated with the associated portfolio is
reduced thereby.
App. Br. 17-18 (Claims Appendix).
Rejection on Appeal
1. The Examiner rejected claims 1, 3---6, 8, 10-16, and 18-22 under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter. 2 See
Final Act. 2.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being directed to patent-
ineligible subject matter?
2 We select claim 1 as representative. Separate patentability, in compliance
with 37 C.F.R. § 41.37(c)(iv), is not argued for claims 3---6, 8, 10-16, and
18-22, with the exception of ancillary arguments regarding claim 22. See
App. Br. 5-15; see also Reply Br. 1-7. Accordingly, except for our ultimate
decision, and our separate discussion regarding claim 22, the rejection of
claims 3---6, 8, 10-16, and 18-22 under 35 U.S.C. § 101 is not discussed
further herein.
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ANALYSIS
A. Section 101 Case Law
Under 35 U.S.C. § 101, a patent may be obtained "for any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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, 573 U.S. at 217. The first step in that
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts," such as an abstract idea. Id. 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, we 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
otherwise merely recite generic processes and machinery. See Enfzsh, LLC
v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). If the claims are
not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry
proceeds to the second step, in which the elements of the claims are
considered "individually and 'as an ordered combination' to determine
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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).
B. USPTO Section 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of 35 U.S.C. § 101. USPTO's
January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50, 50-57 (Jan. 7, 2019) ("Revised
Guidance"). Under the Revised Guidance, we first look to whether the
claim recites:
(1) (Step 2A - Prong One) any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a fundamental
economic practice, or mental processes); and
(2) (Step 2A - Prong Two) additional elements that integrate the
judicial exception into a practical application (see MPEP
§ 2106.05(a}-( c ), ( e }-(h)). 3
See Revised Guidance 54--55. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, do we
then look to whether the claim:
3 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Revised Guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Revised Guidance). See Revised
Guidance 54--55.
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(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Revised Guidance 56.
C. Examiner's§ 101 Rejection Alice/Mayo-Steps 1 and 2
C.1. USPTO Revised Guidance Step 2A - Prong One
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
claim 1 recites and is directed to an abstract idea.
Claim(s) 1,3-6,8, 10-16 and 18-22 is/are directed to trading using
a central counterparty which allows market participants to
minimize risk and/ transactional fees associated with a portfolio
of bilateral positions without substantially altering a risk
profile .... The courts have explained that the "realm of abstract
ideas" includes "collecting information, including when
limited to particular content." Elec. Power Grp. LLC v. Alstrom
S.A. ( citation omitted).
In addition, the courts have treated collecting information,
including when limited to particular content (which does not
change its character as information), as within the realm of
abstract ideas. Moreover, the courts have treated analyzing
information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category.
Final Act. 2-3 ( emphasis added) ( citation omitted); see also Ans. 5.
Here the steps of the representative claim include the following:
Receiving first criteria from a first market participant, the
first criteria defining conditions according to which two or more
non-identical positions within a first portfolio stored in the
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portfolio database associated with the first market participant are
regarded as being offsettable against each other;
receiving independent of the receipt of the first criteria, second
criteria from a second market participant, the second criteria
defining conditions according to which two or more non-
identical positions within a second portfolio stored in the
portfolio database associated with the second market participant
are regarded as being offsettable against each other, wherein at
least one position of the two or more non-identical positions
within the second portfolio represents a counter position to at
least one position of the two or more non- identical positions
within the first portfolio;
and resolving without identifying the first and second market
participants to each other, the two or more non-identical
positions within the first portfolio and/or within the second
portfolio based on the first criteria and the second criteria to
identify at least one of the two or more non-identical positions of
the first portfolio and/or the second portfolio that may be offset
against the other of the two or more non-identical positions of
the first portfolio and/or the second portfolio and modifying the
identified at least one position in the portfolio database whereby
a margin requirement and/ or a transactional fee associated with
the associated portfolio is reduced thereby.
The dependent claims are directed to further aspects of the
abstract idea. Claims 16 and 22 are commensurate in scope with
the representative claim and are rejected for the same reasons as
the representative claims.
Moreover, as trading using a central counterparty is an
idea which is a "long prevalent" business practice and since it
amounts to a series of steps of collecting and analyzing data, the
claim is directed to an abstract idea.
Final Act. 3--4 ( emphasis added).
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C.2. USPTO Revised Guidance Step 2A - Prong Two
Applying step 2 of the Alice/Mayo analysis, the Examiner concludes:
The claim( s) does/ do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception.
Final Act. 2.
In addition to the steps that describe the abstract idea, the claim
recites the additional limitation of a data transaction processing
system.
This additional element is commensurate in scope with a
conventional computer and relational database, performs steps
of merely collecting, comparing and analyzing data. Therefore,
the additional elements of claim 1 do not provide significantly
more, i.e., an inventive concept, to the claim.
Final Act. 4 ( emphasis added).
[The Examiner disagrees that the claimed invention improves
upon the technical field of data and transaction processing.]
[T]he recitation of a computer system that performs a series of
steps on the financial data is simply not enough to transform the
patent-ineligible abstract idea here into a patent-eligible
invention . ... First, the improvement has not been shown to be
to a technical field, any more than a diagnostic medical app is an
improvement to a technical field. Second, one could ... have a
simple case where the participants could resolve the nettable
groups. . . . [The Examiner disagrees that the combination of
elements in the claims perform functions which are not merely
generic and at least some of the problems solved by Appellant's
invention are specifically rooted in technology]. [Appellant's]
argument conflates the generic steps performed by the
computer with the instructions coded for the computer to
perform. There is no evidence of record that any conventional
operating system can accept the instructions to perform these
claimed tasks .... [T]here is no evidence of record to support the
position that the claimed solution is necessarily rooted in
computer technology in order to overcome a problem
"specifically arising in the realm of computer networks."
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Ans. 8-10 (emphasis added).
C.3 USPTO Revised Guidance Step 2B
Further applying step 2 of the Alice/Mayo analysis, the Examiner
concludes:
[T]he additional features beyond the abstract idea is the data
transaction processing system which reads on a conventional
computer, executing conventional instructions .. .. [N]ovelty in
the abstract idea by itself does not save the claims. Although it
may be true that there are other methods to centrally clear a trade,
that issue is not dispositive as to whether the claim is patent
eligible. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1377 (Fed. Cir. 2015) ("While preemption may signal
patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.") .... [The
examiner disagrees that the disclosed and claimed generation of
response messages and financial data messages coupled with the
synchronization of the transmission are examples of significantly
more] as sending messages is conventional activity and the
contents of the messages does not change this. The Appellants
fail to provide support for their contention that anything more
than a conventional computer would be required to perform the
claimed functions.
Ans. 6-7 ( emphasis added).
D. Appellant's§ 101 Arguments
D .1. Step 2A, Prong 1
D.1.a.
As to claim 1, Appellant contends the claim is "not directed to an
abstract idea." App. Br. 5. Appellant particularly contends:
Applicant's claims do not relate to, nor do they preempt, for
example, mere trading of financial instruments. Instead, the
claims, in a first aspect, are directed to a novel and patentable
transaction protocol that may be used in the specific
environment of an anonymized data transaction processing
system to allow market participants to automatically "[minimize]
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risk and/or transactional fees associated with a portfolio of
bilateral positions without substantially altering a risk profile
thereof."
In a further aspect, the claims are directed to a novel and
patentable transaction protocol configured to take advantage
of the unique position of the Exchange with respect to the
participants, whereby the Exchange has access to their
respective portfolios and, therefore, the participants need not be
aware of each other or their respective criteria for defining
offsetable positions, that is the system of the Exchange can
perform a function that the participants are unable to perform
themselves.
App. Br. 5---6 ( emphasis added)
D.1.b.
Claim 1 recites the following limitations:
(a) receiving ... first criteria from a first market participant, the first
criteria defining conditions according to which two or more non-identical
positions within a first portfolio stored in the portfolio database associated
with the first market participant are regarded as being offsettable against
each other;
(b) receiving, ... independent of the receipt of the first criteria,
second criteria from a second market participant, the second criteria defining
conditions according to which two or more non-identical positions within a
second portfolio stored in the portfolio database associated with the second
market participant are regarded as being offsettable against each other,
wherein at least one position of the two or more non-identical positions
within the second portfolio represents a counter position to at least one
position of the two or more non-identical positions within the first portfolio;
and
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( c) resolving, ... without identifying the first and second market
participants to each other, the two or more non-identical positions within the
first portfolio and/or within the second portfolio based on the first criteria
and the second criteria to identify at least one of the two or more non-
identical positions of the first portfolio and/or the second portfolio that may
be offset against the other of the two or more non-identical positions of the
first portfolio and/or the second portfolio and modifying the identified at
least one position in the portfolio database whereby a margin requirement
and/or a transactional fee associated with the associated portfolio is reduced
thereby.
In short, claim 1 recites, with the exception of generic computer-
implementation ("by the data transaction processing system"), a method of
(a) receiving first criteria regarding a first portfolio; (b) receiving second
criteria regarding a second portfolio; and (c) resolving non-identical
positions within first and second portfolios of first and second market
participants based on the first and second criteria, where the first and second
portfolios comprise financial transactions of the first and second market
participants. That is, we conclude that Appellant's claimed process is
directed to minimizing the risk associated with a portfolio of bilateral
positions within financial transactions.
Appellant acknowledges "[t]he disclosed embodiments relate to a
system for trading using a central counterparty which allows market
participants to minimize risk and/or transactional fees associated with a
portfolio of bilateral positions without substantially altering a risk profile
thereof." Spec. ,r 14. By Appellant's acknowledgment, we conclude the
resolution of non-identical positions within portfolios of financial
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transactions is a known fundamental economic practice to minimize risk in
financial transactions. Thus, like the concept of mitigating settlement risk in
Alice, and the concept of hedging against risk in Bilski, the concept of
minimizing risk associated with portfolios of financial transactions recited in
claim 1 "is a fundamental economic practice long prevalent in our system of
commerce." Alice, 573 U.S. at 219 (citations and internal quotation marks
omitted).
Accordingly, we conclude that claim 1 recites a fundamental
economic practice, which is one of certain methods of organizing human
activity identified in the Revised Guidance, and thus an abstract idea.
D.1.c.
We are not persuaded by Appellant's argument that claim 1 is directed
to a specific transaction protocol. Consistent with the Examiner's findings,
the mere fact that the claim is directed to a specific method of minimizing
risk related to financial transactions does not take the claim out of the realm
of abstract ideas. See Ans. 5. Appellant's argument that claim 1 does not
preempt the trading of financial instruments is also not persuasive, as the
Federal Circuit has made clear that "the absence of complete preemption
does not demonstrate patent eligibility" of a claim. Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also Ans. 7.
D.2. Step 2A, Prong 2
Also as to claim 1, Appellant contends the claim recites "additional
elements that amount to significantly more than [the abstract idea], i.e. a
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practical application of the abstract idea which does not [otherwise] pre-
empt the abstract idea." App. Br. 8. Appellant particularly argues:
[T]he claimed invention improves upon the technical field of
data and transaction processing by providing a system which
automatically nets together offsetting positions of similar but not
identical positions of counterparties therein ... which may have
different criteria, specified by the participants themselves, by
which the positions of their portfolios are to be anonymously
netted together.
[T]he operation of a computer is improved by the operation of
claimed invention and that this renders the claim not abstract.
[T]he combination of elements in Appellant's claims perform
functions which are not merely generic and at least some of the
problems solved by Appellant's invention are specifically rooted
in technology, specifically in anonymized central transaction
processing systems where anonymous participants do not have
access to counter-party positions, and are solved by means of a
technical solution, the claimed automated and anonymized
resolving of positions among separate portfolios for the purpose
of offsetting, thereby reducing, positions, and further thereby
reducing the computational burden on the computational
resources of the Exchange by reducing transactional, data
processing and storage requirements .... [ A ]s with the invention
at issue in [DDR Holdings, LLC v Hotels.com], which was
directed to solving an Internet-centric problem, Appellant's
claimed invention are similarly patentable, and directed to
solving a transaction/data processing-centric problem. As with
the invention of DDR, Appellant's claims do not generically
recite "use of a communications network" to per/ orm a
business practice, but instead recites a specific way to process
transactions in an anonymized and centralized processing
environment.
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[T]he claims are directed to "a specific improvement to the way
computers operate", providing a system which facilitates
transaction consolidation via offsetting of positions between
anonymized portfolios, thereby improving transactional
throughput as well as minimizing the consumption of
communications bandwidth and resources, e.g. because there is
now less data to process for transactions with the substantially
same economic results and thereby encouraging participation by
market participants. In particular, the claimed invention solves
the technical problem of identifying related transactions across
portfolios. The claimed invention solves this problem via novel
automated and anonymized resolving of positions among
separate portfolios for the purpose of offsetting, thereby
reducing, pos1t10ns, and further thereby reducing the
computational burden on the computational resources of the
Exchange by reducing transactional, data processing and storage
requirements .... Appellant submits that the claims are directed
to a specific implementation of a solution to a problem in the
software arts.
App. Br. 11-12, 14 (Appellant's citations omitted; panel's emphasis added);
see also Reply Br. 4--7.
Appellant's argument that claim 1 is directed to an improvement upon
either a "technical field of data and transaction processing" or "the way
computers operate" is not persuasive. App. Br. 11, 14. Consistent with the
Examiner's findings, Appellant's alleged technical improvement of
resolving groups of non-identical positions with portfolios of financial
transactions to minimize risk and/or transactional fees associated with
portfolios of bilateral positions without substantially altering a risk profile
thereof is not an improvement to a technical field, but instead is an
improvement to the underlying economic practice of minimizing risk
associated with financial transactions. See Ans. 8. We further agree with
the Examiner that neither claim 1, nor Appellant's Specification (including
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paragraphs 14, 16, and 22 cited by Appellant), recite the technical details
that describe the alleged improvement to the way computers operate, nor
describe how claim 1 is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks. See Ans. 9--10; see also Spec. ,r,r 64---66 ("computer system 400
can include a set of instructions that can be executed to cause the computer
system 400 to perform any one or more of the methods or computer based
functions disclosed herein"; "[ t ]he computer system 400 can also be
implemented as ... any other machine capable of executing a set of
instructions ... that specify actions to be taken by that machine"). Thus, we
agree with the Examiner that claim 1 merely links the use of the abstract
idea to a particular technology environment ( e.g., "data transaction
processing system"). See Ans. 10.
Accordingly, as found by the Examiner, claim 1 does not include an
improvement to another technology or technical field, an improvement to the
functioning of the computer itself (see MPEP 2106.0S(a)), or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment (see MPEP 2106.0S(h)). See Ans. 8-
10. Further, in view of Appellant's Specification (see, e.g., Spec. ,r,r 64---66),
and consistent with the Examiner's findings, we conclude that claim 1 does
not integrate the judicial exception into a practical application. We
determine claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
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(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.0S(a}-(c), (e}-(h). We agree with the Examiner
that claim 1 is directed to a judicial exception.
D.3. Step 2B
Also as to claim 1, Appellant contends:
The claims allow for the implementation of a particular, non-
routine, novel approach to offsetting bilateral positions in an
electronic marketplace. . . . [T]his is neither a routine nor
conventional activity previously known in the industry, but is
instead a meaningful limitation beyond generally linking the
use of an abstract idea to a particular technological
environment.
The combination of steps recited show that the claim is not to the
idea of offsetting positions in a portfolio, but rather that the steps
impose meaningful limits that allow for offsetting related
positions across portfolios in an anonymized environment.
[ A ]utomatically identifying and resolving offsetting positions
across multiple portfolios according to user defined criteria in an
anonymized transaction processing system to reduce one or more
positions stored therein without identifying the affected
participants to each other, form a specific solution/application
which have NOT been used before and therefore are not well
understood, routine or conventional in the art. . . . [T]he
specifically disclosed and claimed generation of response
message and financial data messages coupled with the
synchronization of the transmission of those messages, are
additional elements that provide "something more" than mere
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data communications .... The combination of steps recited show
that the claim is not to the idea of manipulating financial data,
but rather that the steps impose meaningful limits that allow for
reduction of inter-dependent positions, and commensurate
reduction of risk and transaction fees, in an anonymized
environment.
App. Br. 7-10 (emphasis added).
Consistent with the Examiner's findings, the additional element of
"data transaction processing system" is a generic computer limitation similar
to what courts have recognized as well-understood, routine, and
conventional. See Final Act. 4; see also Ans. 6. Further, Appellant's
Specification provides objective evidence that the claimed "data transaction
processing system" comprises generic computer components that perform
functions that are routine, conventional, and well-understood to one of
ordinary skill in the relevant art. See, e.g., Spec. ,r,r 64--66 ("computer
system 400 can include a set of instructions that can be executed to cause the
computer system 400 to perform any one or more of the methods or
computer based functions disclosed herein"; "[t]he computer system 400 can
also be implemented as ... any other machine capable of executing a set of
instructions ... that specify actions to be taken by that machine"; "computer
system 400 may include a processor 402 ... processor 402 may be one or
more ... now known or later developed devices for analyzing and
processing data"). Appellant's aforementioned arguments do not
persuasively rebut the Examiner's findings as supported by the objective
evidence disclosed in Appellant's Specification.
Further, Appellant's argument that claim 1 recites a specific
solution/application which has not been used before is not persuasive that
the claim is patent-eligible because the argument conflates the novelty and
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non-obviousness tests under 35 U.S.C. §§ 102, 103 with the patent-
eligibility test under 35 U.S.C. § 101.
In view of Appellant's Specification, and consistent with the
Examiner's determinations, we determine the claims do not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity m the field or
unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.0S(d).
E. Panel's§ 101 Analysis for Claim 22
As to claim 22, the Examiner finds that claim 22 is commensurate in
scope with claim 1, the representative claim, and thus, the means-plus-
function elements do not impart patent-eligibility on claim 22. See Ans. 10.
Regarding claim 22, Appellants further contend:
[W]ith respect to claim 22, Appellant submits that while the
Patent Trial and Appeal Board's recent decision may not be
precedential, it does provides an alternative method for
evaluating the patentability of a claim and should not be
discounted. In particular that a claimed "means for matching"
could not be performed by a generic computer and, rather, as a
means-plus-function limitation, the "means for matching"
encompassed the processing steps recited in the Specification
that, according to the Board, amounted to a "specific algorithm
that transforms an otherwise general purpose computer into a
special purpose computer programmed to perform the recited
function of 'matching."' Thus, according to the Board, "when,
as here, a special purpose computer constitutes the structure
that performs the recited function of 'matching,' in practical
terms it imparts a meaningful limitation or adds significantly
more to the abstract idea, itself' See Chicago Mercantile
Exchange, Inc. v. 5th Market, Inc., CBM2015-00061 (PTAB
July 16, 2015) (Paper 9), pages 37-38 (denying institution of the
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request for covered business method post grant review and
finding that CME had not demonstrated that claims 1 and 2 of
the '3 87 patent lacked the limitations required for an inventive
concept. Id. at 3 8) .... Claim 22 of the present application recites
means-plus-function elements for rece1vmg financial
transactions and augmenting them for deterministic purposes
which amount to "specific algorithm that transforms an
otherwise general purpose computer into a special purpose
computer programmed to perform the recited function" and
therefore imparts a meaningful limitation or adds significantly
more to the abstract idea, itself.
App. Br. 14--15 (emphasis added) (footnote omitted).
We are not persuaded by Appellant's argument. As a threshold
matter, the cited decision of Chicago Mercantile Exchange has not been
designated precedential by the Patent Trial and Appeal Board, and, thus, is
not binding on this panel. Further, the panel in Chicago Mercantile
Exchange did not hold that a means-plus-function claim element per se adds
something significantly more to the claim than an abstract idea itself.
Instead, the panel merely held that the petitioner failed to adequately address
a means-plus-function element of a claim, and thus, failed to establish that it
was more likely than not that the claim was directed to patent-ineligible
subject matter under§ 101. See Chicago Mercantile Exchange at 37-38. In
the present appeal, Appellant provides no specific arguments or evidence
that the algorithm or structure disclosed in Appellant's Specification adds
something significantly more to the claim than the abstract idea itself. Thus,
the Examiner did not err in concluding that claim 22 is also directed to
patent-ineligible subject matter.
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Appeal 2017-011399
Application 13/921,776
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 3---6, 8, 10-16,
and 18-22 under 35 U.S.C. § 101.
(2) Claims 1, 3---6, 8, 10-16, and 18-22 are not patentable.
DECISION
We affirm the Examiner's rejections of claims 1, 3---6, 8, 10-16, and
18-22 under 35 U.S.C. § 101.
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
20