Ex Parte Himmelstein

Patent Trial and Appeal Board

Dec 26, 2018

14542615 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/542,615 11/16/2014
13010 7590 12/26/2018
The Law Office of Patrick F. O"Reilly III, LLC
1509 Lafayette Drive
Columbus, OH 43220-3869
FIRST NAMED INVENTOR
Richard B. Himmelstein
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.
BAR-0014 1073
EXAMINER
POINVIL, FRANTZY
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
12/26/2018 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 RICHARD B. HIMMELSTEIN
Appeal2017-008750
Application 14/542,615 1
Technology Center 3600
Before, ANTON W. PETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-20, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies BarterSecurities, Inc. as the real party in interest. Br.
4.
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Application 14/542,615
THE INVENTION
Appellant's claims relate to a computer-based website for bartering,
exchanging or selling, (hereinafter referred to as bartering), items or
securities. (Spec. i-f[0002]).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method for trading securities on a computer-based
network, the method comprising:
providing, by the computer-based network, an ordering
module, the ordering module storing a plurality of securities to
trade and associated quantities thereof;
providing, by the computer-based network, a graphical
user interface enabling a user to view their portfolio including a
plurality of user-owned securities and associated quantities
thereof;
receiving, by the computer-based network, a first order
comprising one of the plurality of user owned securities to trade
and associated quantity thereof;
posting, by a database module associated with the
computer-based network, the first order into a database;
searching, by a matching engine associated with the
computer-based network, the database for a second order
matching the first order;
determining, by the computer-based network, if the first
order can be traded with the second order at the current market
price of the first order plus or minus a first value; and
completing, by the computer-based network, a trade
comprising the first order and the second order and charging an
appropriate fee.
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Application 14/542,615
REFERENCES AND REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Lupien et al. ("Lupien") US 5,950,177 Sept. 7, 1999
The following rejections are before us for review.
Claims 1-8, 10-17, and 19-20 stand rejected under pre-AIA 35
U.S.C. § 102 as being anticipated by of Lupien.
Claims 9 and 18 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Lupien.
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea) without significantly more.
ANALYSIS
35 U.S.C. § 101 REJECTION
We affirm the rejection of claims 1-20 under 35 U.S.C. § 101.
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. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
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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."
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)).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed "towards trading securities." (Final
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Act. 7). The Examiner further found "[t]he claims as presented do not
require any specialized computer apparatus, structures or components to
achieve the end results." Id. at 8. The Specification states:
It is an object of this application to provide an
electronic bartering system for bartering items or
securities including but not limited to, stock, cash
(foreign or domestic currencies), web barter
dollars, Hinmelstein Options, CD's, bonds, notes,
Option Put, Option Call, Commodities/Futures,
Annuities, Muni Bond( s ), Government Bonds,
Funds, Strips (Zero Coupon Treasuries), Ginnie
Mae(s), Fannie Mae(s), Freddie Mac(s), UIT (Unit
Investment Trust), T-bills and any future created or
defined security, commodity or commodity
money. A Himmelstein Option is an agreement to
barter items or securities with specific conditions
for a settlement date (i.e. rights to acquire) to occur
after a specified date and before a specified date.
Specification ,r 7. Thus, we conclude and agree with the Examiner that the
claims are directed to trading securities which is a fundamental economic
practice. The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357.
Appellant argues,
While the Office correctly notes Applicant's general recitation
in the preamble, Applicant respectfully submits that the Office
inappropriately evaluates only the gerunds (such as "posting,"
"searching," and "determining," for example) without
consideration of the claims as a whole including all recited
limitations. As set forth in MPEP 2106, this second step
requires the Office to establish the 'broadest reasonable
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interpretation' of the claims when evaluating eligibility under
35 USC § 101. In the present case, by considering only
selected portions of the claims, the Office artificially arrives at
an unreasonably broad interpretation of the claims.
(Appeal Br. 8).
We disagree with Appellant. Based on the record before us, we find
that the Examiner did evaluate eligibility under 35 USC§ 101 based on a
consideration of the claims as a whole. We base this finding on the
Examiner's own statements that, "[i]t is to be noted that each claim as a
whole, does not amount to significantly more than the abstract idea itself."
(Answer 10). "Each of the claims as a whole does not amount to
significantly more than the abstract idea itself." Id. at 11. "Each claim as a
whole, does not amount to significantly more than the abstract idea itself."
(Final Act. 9). In addition, on pages 8-9, of the Answer, the Examiner lists
all the limitations of claim 1, to conclude that, "[ c ]laim 1 is similar to the
functions of organizing human activities such as creating a contractual
relationship as was found in buySafe." (Answer 9). We note that the
Examiner's excluding reference to "computer based network" items in his
Alice step one analysis is not indicative of error because the point of the
Alice step one analysis is generally to show that the claim operates as an
abstraction absent the recitation of a device.
Appellant also argues,
All of claims 1-20 include the "significantly more" required to
be patent eligible. Specifically, the claims recite that any
securities trading is effected based on a determination by the
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computer that "the first order can be traded with the second
order at the current market price of the first order plus or minus
a first value," a processing technique that was previously
unknown before Applicant's invention.
(Appeal Br. 9).
We disagree with Appellant that the "processing technique" which
Appellant says "was previously unknown before Applicant's invention"
(Appeal Br. 9) is a technique which is directed to a technological
improvement. Rather, we find that it is a technique directed to a securities
trading industry technique. Nothing in the claims purports to improve
computer functioning or "effect an improvement in any other technology or
technical field." Alice, 134 S. Ct. at 2359. Nor do claims solve a problem
unique to the Internet. See DDR Holdings, 773 F.3d at 1257. We fail to find
that the claims focus on a specific means or method that improves the
relevant technology, but instead are directed to a result or effect of trading
management that itself is the abstract idea and merely invoke generic
processes and machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016). Also, as to Appellant's assertion that its
"processing technique was previously unknown", we note that a claim for a
new abstract idea is still an abstract idea." Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (citing Mayo, 566 U.S. at 90).
35 U.S.C. § 102 (b) REJECTION
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Each of independent claims 1 and 12 require "determin[e ... ] if the
first order can be traded with the second order at the current market price of
the first order plus or minus a first value."
The Examiner found concerning this limitation:
Lupien et al. inherently teach if the first order can be traded
with the second order at the current market price of the first
order plus or minus a first value because Lupien et al teach
trading a maximum quantity (see column 6, lines 53-60) and a
minimum and maximum buy/sell price. See column 5, lines 27-
34 of Lupien et al.
(Answer 4).
Appellant argues,
The Office relies on Lupien at col. 6, lines 53-60 and col. 6, line
67 to column 7, line 13 as disclosing this element, but the cited
portions disclose nothing about determining if two orders can
be traded at a current market price of the first order plus or
minus a first value. Consequently, Applicant submits that the
disclosure of Lupien is clearly lacking the determining element,
and Applicant's invention is therefore distinguishable from the
Lupien reference.
The first passage cited by the Office, Lupien at col. 6, lines 53-
60, almost exclusively concerns quantities to be traded.
Although not identified by the Office with respect to the
"determining" element, the cited passage makes reference to an
example user interface shown in FIG. 4. Even considering all
of the information disclosed in FIG. 4 of Lupien, there is still
no disclosure of the "determining" as claimed by Applicant; a
"current market price" as claimed by Applicant; nor a range of
"plus or minus a first value" as claimed by Applicant.
The Office actually admits that the cited portion of Lupien is
different from Applicant's limitation when the Office
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characterizes the disclosure of Lupien as being merely "similar
to" Applicant's limitation. Applicant submits that ( 1) a price
range is certainly not the same as "the current market price of
the first order plus or minus a first value"; and (2) a price range
is dissimilar to Applicant's limitation in that Applicant's
limitation envisions an equal distance either higher or lower
than the current market price, and that limitation is not
represented by Lupien's range.
(Appeal Br. 11-12)
We agree with Appellant. Our review of Lupien at column 6, lines
53-60 reveals that Lupien at best discloses "[a] Maximum Quantity
indicator 26 allows the trader to set the maximum quantity to be traded."
Col. 6, 11. 57-58 (bold emphasis omitted). There is nothing in this section
which discloses "the first order can be traded with the second order at the
current market price of the first order plus or minus a first value." Similarly,
our review of Lupien at Column 5, lines 27-34 reveals the disclosure of only
computing capabilities of the system by a "supercomputer that can perform
matrix calculations at rates of multiple gigafiops, such as, for example with
present technology, an IBM SP2 or an Intel PARAGON supercomputer".
Id. at Col. 5, 11. 32-35.
Nor is there anything in these passages which inherently meets the
limitations cited above. When relying upon the theory of inherency, the
examiner must provide a basis in fact and/ or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.
See Ex parte Levy, 17 USPQ2d 1461, 1464 (BP AI 1990). Under principles
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of inherency, when a reference is silent about an asserted inherent
characteristic, it must be clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill. Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). We are not persuaded
that the silence in Lupien of the above noted limitation would be so
recognized by persons of ordinary skill as to constitute a disclosure. Nor has
the Examiner provided technical reasoning to support how the disclosed,
"Maximum Quantity indicator 26 allows the trader to set the maximum
quantity to be traded", meets the claim limitation. Accordingly, we do not
find that a prima facie case of anticipation of the claimed invention over
Lupien has been established.
Since claims 2-8, 10, 11, 13-17, 19 and 20 depend from one of claims
1 and 12, and since we cannot sustain the anticipation rejection of claims 1
and 12, the anticipation rejection of claims 2-8, 10, 11, 13-17, and 19
likewise cannot be sustained.
Dependent claims 9 and 18 are rejected under 35 U.S.C. § 103(a) but
the Examiner's findings under this section of the statute does not remedy the
deficiency noted above with the anticipation rejection. Therefore, we will
not sustain the obvious rejection of claims 9 and 18.
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CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-20 under
35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1-8, 10-17 and
19-20 under 35 U.S.C. § 102(b).
We conclude the Examiner did err in rejecting claims 9 and 18 under
35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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