Ex Parte Jensen et al

Patent Trial and Appeal Board

Oct 24, 2017

13467263 (P.T.A.B. Oct. 24, 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.
13/467,263 05/09/2012 Daniel JENSEN SJP-4010-244 3261
23117 7590 10/26/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
MUNDUR, PADMAVATHI V
ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
10/26/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL JENSEN, BJORN CARLSSON,
and TOBIAS HALLOR
Appeal 2017-003364
Application 13/467,263
Technology Center 2400
Before JOSEPH L. DIXON, CATHERINE SHIANG, and ALEX S. YAP,
Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—6, 9-13, 15—24, and 27—36, which are all the claims
pending and rejected in the application. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
Appeal 2017-003364
Application 13/467,263
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to an
automated exchange system. See generally Spec. 1. Claim 1 is exemplary:
1. A method of processing electronic trading exchange system
trading data, the method comprising:
receiving, by a gateway node, a first trading data message
from a trade order matching engine of an electronic trading
exchange system for trading financial instruments, the first
trading data message having a first data format compatible with
a first protocol in which a trading entity associated with the first
trading data message communicates, the first trading data
message including identification information associated with
the trading entity enabled to trade financial instruments on the
electronic trading exchange system;
retrieving a first set of pre-selected trading information
elements from the first trading data message including an
indicator of a name of a financial instrument affected by the
first trading data message;
modifying the first set of pre-selected trading information
elements by discarding at least one trading information element
from the first trading data message specific to the first data
format, and retaining one or more trading information elements
from the first set of pre-selected trading information elements;
creating, by processing circuitry, a second trading data
message using the modified first set of pre-selected trading
information elements including at least the retained one or more
trading information elements, the second trading data message
having a second data format different from the first data format
and compatible with a second protocol in which multiple client
devices associated with the identified trading entity
communicate;
identifying, on the basis of the identification information
of the received first trading data message, the trading entity
from which the first trading data message is originating; and
transmitting, by the gateway node, the second trading
data message to the multiple client devices associated with the
2
Appeal 2017-003364
Application 13/467,263
identified trading entity to provide the multiple client devices
an aggregated view of a total trading order activity or a total
trade activity of the trading entity for the financial instrument
affected by the first trading data message.
References and Rejections1
Claims 1—6, 9—13, 15—24, and 27—35 are rejected under 35 U.S.C.
§101 because they are directed to patent ineligible subject matter.
Claims 1—6, 9—13, 15, 19-24, 27—32, and 36 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Feilbogen (US 2002/0023045
Al, Feb. 21, 2002) and Kumar (US 2005/0144137 Al, June 30, 2005).
Claims 16, 18, 33 and 35 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Feilbogen, Kumar, NASDAQ-OMX1 (“OMnet API
Conformance Document” April 2010), and NASDAQ-OMX2 (“NASDAQ
OMX Update” June 2010).
Claims 17 and 34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Feilbogen, Kumar, and Green (US 2011/0153521 Al).
ANALYSIS2
35 U.S.C. §101
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
1 The Examiner withdrew a written description rejection. See Ans. 2.
2 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.41(b)(2).
3
Appeal 2017-003364
Application 13/467,263
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.
The Examiner rejects the claims under 35U.S.C. § 101 because they
are directed to patent ineligible subject matter. See Final Act. 4—5, 15—17;
Ans. 2—5. In particular, the Examiner finds the claims are directed to the
abstract idea of “receiving data from one computer in one format and
converting that data to a different format to transmit to another computer.
The . . . conversion performed is analogous to re-organizing data to simply
make the data accessible to different computers” and “[cjlaims 1, 19, and 31
recite generic steps of retrieving a first message, modifying, and creating a
second message all of which are essential parts of any abstract conversion
process from one format to another.” Final Act. 4. The Examiner further
finds the claims use generic computer components to perform generic
computer functions. See Ans. 4. Appellants argue the Examiner erred. See
App. Br. 15—18; Reply Br. 2—7.
Appellants have not persuaded us of error. Section 101 of the Patent
Act provides “[wjhoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title.” 35 U.S.C. § 101. That provision . .
contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)).
According to the Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
4
Appeal 2017-003364
Application 13/467,263
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. ... If so, we then ask,
“[w]hat else is there in the claims before us?” ... To answer
that question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. . . . We have
described step two of this analysis as a search for an “‘inventive
concept’”—i.e., an element or combination of elements that is
“sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself.”
Alice Corp., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLCv.
Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding Alice step one, the Federal Circuit has “treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348-49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Natl Assn, 776 F.3d 1343, 1347 (Fed. Cir. 2014). “In a
similar vein, we have treated analyzing information [including manipulating
5
Appeal 2017-003364
Application 13/467,263
information] by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.” Elec. Power, 830 F.3d at 1354 (emphasis added);
see also Elec. Power, 830 F.3d at 1351—1354; In re TLI Commc ’ns. LLC
Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). “And we have recognized
that merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.”
Elec. Power, 830 F.3d at 1354 (emphasis added); see also Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 714—15 (Fed. Cir. 2014).
The rejected claims “fall into a familiar class of claims ‘directed to’ a
patent-ineligible concept.” Elec. Power, 830 F.3d at 1353. Contrary to
Appellants’ arguments (App. Br. 15—17; Reply Br. 2—6), the claims are
similar to the claims of Electric Power, and are focused on the combination
of abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354.
For example, claim 1 is directed to receiving or collecting information
(“receiving ... a first trading data message . . .; transmitting ... the second
trading data message to . . .”), and analyzing and manipulating information
(“retrieving . . . information elements . . .; modifying . . . information
elements . . .; creating ... a second trading data message . . .; identifying. . .
the trading entity . . .”). Claim 19 is a system claim directed to similar
functions. And claim 31 is directed to similar receiving or collecting
information, and analyzing and manipulating information functions. See
Elec. Power, 830 F.3d at 1353. The dependent claims are directed to similar
functions or processes, and Appellants have not shown such claims are
directed to other non-abstract functions or processes. See claims 2—6, 9-13,
6
Appeal 2017-003364
Application 13/467,263
15—18, 20—24, and 27—30, 32—36. In fact, Appellants acknowledge the
claims “are directed to receiving data messages related to orders of financial
transactions and modifying the data messages[.]” App. Br. 16; see also
Reply Br. 4. Contrary to Appellants’ argument (Reply Br. 3) and as
discussed above, the Examiner does not merely find the claims “are directed
to just ‘communication of trading data for financial instruments,’” as
Appellants assert (Reply Br. 3).
Regarding Alice step two, contrary to Appellants’ assertion (App. Br.
17—18; Reply Br. 6—7), Appellants have not shown the claims in this case
require an arguably inventive set of components or methods, or invoke any
assertedly inventive programming. See Elec. Power, 830 F.3d at 1355.
Further, contrary to Appellants’ arguments (App. Br. 17—18; Reply
Br. 6—7), the claims are similar to the claims of Electric Power, because they
do not require any nonconventional computer or network components, or
even a “non-conventional and non-generic arrangement of known,
conventional pieces,” but merely call for performance of the claimed
information collection, analysis and manipulation functions on generic
computer or network components. See Elec. Power, 830 F.3d at 1355; see
also claim 1 (reciting “receiving, by a gateway node . . .; creating, by
processing circuitry . . .; transmitting, by the gateway node . . .”) (emphases
added); claim 19 (reciting “<2 receiver configured to receive . . .; processing
circuitry configured to ...; a transmitter configured to . . .”) (emphases
added); claim 31 (reciting “<2 receiver configured to receive . . .; processing
circuitry configured to ...; a transmitter configured to . . .”) (emphases
added). The dependent claims call for similar generic components and
devices, and Appellants have not shown such claims require any non-
7
Appeal 2017-003364
Application 13/467,263
conventional components or devices. See claims 2—6, 9—13, 15—18, 20-24,
and 27-30, 32-36.
Contrary to Appellants’ assertion (Reply Br. 5), the rejected claims
are unlike the claims in Enfish. In Enfish, the court finds:
The . . . patents are directed to an innovative logical model for a
computer database. ... A logical model generally results in the
creation of particular tables of data, but it does not describe how
the bits and bytes of those tables are arranged in physical
memory devices. Contrary to conventional logical models, the
patented logical model includes all data entities in a single
table, with column definitions provided by rows in that same
table. The patents describe this as the “self-referential”
property of the database.
Enfish, 822 F.3d at 1330.
[T]he plain focus of the claims is on an improvement to
computer functionality itself, not on economic or other tasks for
which a computer is used in its ordinary capacity.
[T]he claims ... are directed to a specific improvement to the
way computers operate, embodied in the self-referential table.
Enfish, 822 F.3d at 1336.
The rejected claims are unlike the claims of Enfish because they are
not “an improvement to computer functionality itself.” Enfish, 822 F.3d at
1336. Instead, they are similar to the claims of Electric Power, because “the
focus of the claims is not on such an improvement in computers as tools, but
on certain independently abstract ideas that use computers as tools.” Elec.
Power, 830 F.3d at 1354. In particular, the Examiner finds—and Appellants
fail to persuasively dispute—discarding incompatible protocol-specific
elements during data processing is routine and conventional technology. See
Ans. 5. Appellants’ attorney arguments (App. Br. 18; Reply Br. 6) are
unpersuasive because they are not supported by persuasive evidence.
8
Appeal 2017-003364
Application 13/467,263
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer and
network technology for collecting, analyzing, and manipulating the desired
information. See Elec. Power, 830 F.3d at 1354. Such invocations of
computers and networks are “insufficient to pass the test of an inventive
concept in the application” of an abstract idea. See Elec. Power, 830 F.3d at
1355.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claims 1—6, 9-13, 15—24, and 27—36
under 35 U.S.C. § 101.
35 U.S.C. § 103
On this record, the Examiner did not err in rejecting claim 1.
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.
Appellants contend neither Feilbogen nor Kumar teaches:
modifying the first set of pre-selected trading information
elements by discarding at least one trading information element
from the first trading data message specific to the first data
format, and retaining one or more trading information elements
from the first set of pre-selected trading information elements',
creating, by processing circuitry, a second trading data
message using the modified first set of pre-selected trading
information elements including at least the retained one or
more trading information elements,
9
Appeal 2017-003364
Application 13/467,263
as recited in claim 1 (emphases added). See App. Br. 18—21; Reply Br. 7—9.
In particular, Appellants assert:
Feilbogen does not convert a data message specific to one
format based on a first protocol of communication into a data
message specific to a second format based on a second protocol
of communication. Nor does Feilbogen do so by discarding
data elements specific to the first format, while retaining data
elements common to the first and second formats.
App. Br. 19.
Appellants have not persuaded us of error. The Examiner responds:
[Feilbogen’] Par. [0057] also describes using different
communication protocols such as TCP/IP protocol of a web-
based portal to the preferred protocol of a price provider.
However, the Examiner interprets the terms “first protocol of
communication” and “second protocol of communication” as
used by the Appellant to mean the protocols of TOP, FIX,
FpML, FinXML, OMNet, OUCH, and BD6 used by financial
transaction systems.
As noted in the Office Action, Feilbogen teaches
modifying the message during the conversion process through
“eliminating redundancy and ambiguity in the data and
translating the data into a (preferred) format”, [Par. [0057]].
The Examiner understands the terms “eliminating redundancy”
to mean the same as the claim recitation of “retaining” common
data elements between the two formats and “eliminating
ambiguity” to mean “discarding” protocol-specific data
elements. The fundamental step of protocol/format conversion
where if a particular field or data element in one format does
not map to a corresponding field or element in the other
protocol/format, that element will be dropped is inherent in
Feilbogen. Notice the use of look-up tables (LUTs) mentioned
in Par. [0057].
Ans. 6—7.
10
Appeal 2017-003364
Application 13/467,263
Appellants’ response that “simply mentioning the ‘elimination of
redundancy and ambiguity’ does not at all reasonably correspond to
retaining or discarding certain data elements” (Reply Br. 8) is unpersuasive,
because it fails to respond to the Examiner’s detailed explanation above, and
fails to show why such explanation is incorrect. See In re Baxter Travenol
Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this
court [or this Board] to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”). See
Baxter Travenol Labs., 952 F.2d at 391.
Cumulatively, the Examiner also finds Feilbogen and Kumar
collectively teach the disputed limitations. See Ans. 7. Appellants’
arguments against Kumar individually (App. Br. 19—20; Reply Br. 8) are
unpersuasive. Because the Examiner relies on the combination of Feilbogen
and Kumar to teach the disputed claim limitations, Appellants cannot
establish nonobviousness by attacking Kumar individually. See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claim 1, and independent
claims 19 and 31 for similar reasons.
We also sustain the Examiner’s rejection of corresponding dependent
claims 2—5, 9, 11—13, 15—18, 20-23, 27, 29, 30, and 32—36, as Appellants do
not advance separate substantive arguments about those claims.
Separately Argued Dependent Claims
Regarding dependent claims 6 and 24, we agree with Appellants that
the Examiner has not adequately mapped “creating ... an additional, third
11
Appeal 2017-003364
Application 13/467,263
trading data message using the retrieved second set of pre-selected trading
information elements but not using the at least one discarded information
element from the first data message,” as recited in claims 6, and similarly
recited in claim 24. See App. Br. 21—22; Reply Br. 9—10. The Examiner
cites Feilbogen’s Figure 8 and paragraphs 58 and 73 for teaching the
disputed limitation (Final Act. 8—9, 11; Ans. 9-10), but the cited Feilbogen
portions do not describe the detailed limitation required by the claims.
Because the Examiner fails to provide sufficient evidence or explanation to
support the rejection, we are constrained by the record to reverse the
Examiner’s rejection of dependent claims 6 and 24.
Regarding dependent claims 10 and 28, we agree with Appellants that
the Examiner has not adequately mapped the limitation “creating the fifth
trading data message based on the retrieved trading information elements
from the first data trading message and the fourth trading data message,
respectively,” as recited in claim 10 and 28. See App. Br. 22—23; Reply Br.
10-11. The Examiner cites Feilbogen’s Figure 3 and a number of
paragraphs for teaching the disputed limitation (Final Act. 10-11; Ans. 11),
but the cited Feilbogen portions do not describe the detailed limitation
required by the claims. Because the Examiner fails to provide sufficient
evidence or explanation to support the rejection, we are constrained by the
record to reverse the Examiner’s rejection of dependent claims 10 and 28.
DECISION
We affirm the Examiner’s decision rejecting claims 1—6, 9—13, 15—24,
and 27—36 under 35 U.S.C. § 101.
12
Appeal 2017-003364
Application 13/467,263
We affirm the Examiner’s decision rejecting claims 1—5, 9, 11—13,
15—23, 27, and 29—36, but reverse the Examiner’s decision rejecting claims
6, 10, 24, and 28, under 35 U.S.C. § 103.
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
13