Ex Parte Kocher

Patent Trial and Appeal Board

Oct 18, 2018

13588880 (P.T.A.B. Oct. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/588,880 08/17/2012
64828 7590 10/22/2018
Harold McGurk
The Law Office of Clay McGurk
P.O. BOX 1488
Orange, CA 92856
FIRST NAMED INVENTOR
Robert W. Kocher
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.
RK llOO 7546
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
10/22/2018 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):
CLA YMCGURK@GMAIL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT W. KOCHER
Appeal2017-008968
Application 13/588,880 1
Technology Center 3600
Before LARRY J. HUME, JASON J. CHUNG, and
JOHN D. HAMANN, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 33--47. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention allows an online investor or stockbroker to enter a
single transaction order, which will execute an automatic sequenced
transaction strategy for buying and selling a security for a predefined profit.
Spec. ,r 12.
1 According to Appellant, Tradelock, LLC is the real party in interest. App.
Br. 2.
Appeal2017-008968
Application 13/588,880
Claim 33 is illustrative of the invention and is reproduced below:
33. A system for performing a series of automated
securities trades, comprising:
a customer interaction module that interacts with a
plurality of customers over a network where each customer can
place one or more electronic customer trading orders, each
electronic customer trading order comprising a name of a
securities, an initial buy price, an initial buy quantity, a profit
increment, a number of cycles and an authorization to indicate
whether electronic securities orders are authorized to be placed;
an order management module, connected to the customer
interaction module, that receives each of the electronic customer
trading orders, and repeating for the number of cycles by creating
a first electronic securities order and a second electronic
securities order based on each electronic customer trading order,
a buy price of the first electronic securities order and each
successive first electronic securities order being created from the
initial buy price and a number of cycles completed, a sell price
of the second securities order and each successive second
securities order being created from the buy price of the
corresponding first securities order and the profit increment; and
an authorization management module, connected to the
order management module, that (i) transmits, when the
authorization is valid, the first electronic securities order, (ii)
transmits, when the authorization is valid, the second electronic
securities order to a securities exchange, and (iii) when the
number of cycles has not been completed and when the
authorization is valid, transmitting each successive first
electronic securities order, and (iii) when the number of cycles
has not been completed and when the authorization is valid
transmitting each successive second electronic securities order to
the securities exchange.
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Application 13/588,880
REJECTIONS AT ISSUE
Claims 33--47 stand rejected under 35 U.S.C. § 101 as being directed
to a judicial exception to patentable subject matter. Final Act. 2-11.
Claims 33--42 stand rejected under 35 U.S.C. § 101 as being directed
to a disembodied data structure. Final Act. 11-12.
Claims 33--47 stand rejected under 35 U.S.C. § 112, second paragraph
as being indefinite for failing to particularly point out and distinctly claim
the subject matter for which the applicant regards as the invention. Final
Act. 12-13.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
ANALYSIS
35 U.S.C. § 112, second paragraph: Claims 33-47
Appellant presents no arguments pertaining to the Examiner's
indefiniteness rejection of claims 33--47. App. Br. 6. Instead, Appellant
states this rejection is "not discussed herein." Id. Accordingly, we
summarily sustain this rejection. See 37 C.F.R. § 4I.39(a)(l).
35 U.S.C. § 101: Claims 33-42 as being directed to a disembodied data
structure
Appellant presents no arguments pertaining to the Examiner's § 101
rejection as being directed to a disembodied data structure. App. Br. 11-12.
Instead, Appellant states "that this rejection be tabled at this time based on
future correction." Id. at 12. Accordingly, we summarily sustain this
rejection. See 37 C.F.R. § 4I.39(a)(l).
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Application 13/588,880
35 U.S.C. § 101: Claims 33--47 as being directed to a judicial exception
to patentable subject matter
The Examiner concludes, and we agree, independent claims 33--4 7
fall into one of the four statutory categories of invention. Final Act. 3.
Further, the Examiner concludes the claims are directed to the abstract idea
of fundamental economic practices. Final Act. 6-8. And the Examiner
concludes the claims are directed to the abstract idea of mathematical
relationships. Id. at 5-8. The Examiner also concludes the claims do not
amount to significantly more than an abstract idea because the additional
elements other than the abstract idea is a generic computer that performs
generic computer functions that are well-understood, routine, and
conventional functions previously known to the industry. Id. at 9-10.
Appellant argues the claims cannot be performed in the human mind
or by a human using pen and paper because of the limitation "electronic"
recited throughout the claims. App. Br. 7-8. Also, Appellant argues there is
no evidence or prior art to support the notion that the claims recite an
abstract idea of fundamental economic practices that predates the filing date
of 2001. Id. at 8-9; Reply Br. 1-2. Additionally, Appellant argues the
claims amount to significantly more than an abstract idea because a new
system shown in Figure 5 of Appellant's Specification illustrate the
improvement over Figure 42 of Appellant's Specification; the improvement
removing the need for a person to sit in front of a computer and place trades
when the opportunity arises by automating the process of buying and selling
securities. App. Br. 9-11. Moreover, Appellant argues the claims do not
2 In the event of further prosecution, the Examiner should considering
requiring Appellant to file a new Figure 4 labeled as "Prior Art."
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Application 13/588,880
preempt every way of placing a buy-sell order for securities on an electronic
exchange because the old system in Figure 4 of Appellant's Specification
could still be used. Id. at 11. We disagree with Appellant.
Following the decision in Alice Corp., (citing Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-84 (2012)), we
analyze claims where the abstract idea judicial exception to the categories of
statutory subject matter is at issue using the following two-part analysis set
forth in Mayo: 1) determine whether the claim is directed to an abstract
idea; and 2) if an abstract idea is present in the claim, determine whether any
element, or combination of elements, in the claim is sufficient to ensure that
the claim amounts to significantly more than the abstract idea itself. See
Alice, 134 S. Ct. at 2350.
As to the first part of the analysis, examples of abstract ideas
referenced in Alice include: fundamental economic practices; 3 certain
methods of organizing human activities; 4 "[a]n idea ofitself'; 5 and,
mathematical relationships or formulas. 6 Claims that include abstract ideas
like these are examined under the second part of the analysis to determine
whether the abstract idea has been applied in an eligible manner.
3 Alice Corp., 134 S. Ct. at 2350: e.g., intermediated settlement, i.e., the use
of a third party intermediary to mitigate settlement risk.
4 Id. at 2356: e.g., a series of steps instructing how to hedge risk ( citing
Bilski, 561 U.S. at 599).
5 Id. at 2355: e.g., a principle, an original cause, a motive (citing Gottschalk
v. Benson, 409 U.S. 63, 67 (1972) and Le Roy v. Tatham, 14 How. 156, 175
(1852)).
6 Id. at 2350: e.g., a mathematical formula for computing alarm limits in a
catalytic conversion process (Parker v. Flook, 437 U.S. 584, 594--95
(1978)), or a formula for converting binary-coded decimal numerals into
pure binary form (Benson, 409 U.S. at 71-72).
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As to the second part of the analysis, we consider the claim as a whole
by considering all claim elements, both individually and in combination. Id.
at 2355. Limitations referenced in Alice that may be enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: improvements to another
technology or technical field; 7 improvements to the functioning of the
computer itself; 8 and meaningful limitations beyond generally linking the
use of an abstract idea to a particular technological environment. 9
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) with an abstract idea; 10 mere instructions to implement an
abstract idea on a computer; 11 or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 12
If there are no meaningful limitations in the claim that transform the
abstract idea into a patent eligible application such that the claim amounts to
7 Id. at 2358: e.g., a mathematical formula applied in a specific rubber
molding process (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)).
8 Id. at 2359.
9 Id. at 2360: noting that none of the hardware recited "offers a meaningful
limitation beyond generally linking 'the use of the [method] to a particular
technological environment,' that is, implementation via computers" ( citing
Bilski, 561 U.S. at 610-11).
10 Id. at 2357-58.
11 Id.: e.g., simply implementing a mathematical principle on a physical
machine, namely a computer ( citing Mayo, 566 U.S. at 84--85).
12 Id. at 2359: e.g., using a computer to obtain data, adjust account balances,
and issue automated instructions.
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significantly more than the abstract idea itself, the claim is directed to non-
statutory subject matter under 35 U.S.C. § 101.
Step 1
On this record, we see no error in the Examiner's analysis and
conclusion that claims 3 3--4 7 are directed to an abstract idea of fundamental
economic practices and mathematical relationships. Final Act. 5-8.
The present claims are similar to the abstract idea of mathematical
relationships in Digitech Image Technologies, LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). In Digitech, the Federal
Circuit held claims directed to organizing and manipulating information
through mathematical correlations are abstract. 758 F.3d at 1350-51.
Similarly, the present claims are directed to executing an automatic
algorithm through mathematical correlations for buying and selling a
security for a predefined profit.
Regarding Appellant's arguments pertaining to an abstract idea of
fundamental economic practices, to the extent that Appellant is arguing that
any case law that we present must pre-date the 2001 priority date (App.
Br. 8-9; Reply Br. 1-2), we disagree because Appellant is conflating
providing prior art references that pre-date the 2001 priority date under
§ § 102 and 103 with a later development of the case law under § 101. 13 In
addition, the present claims are similar to the abstract idea of fundamental
economic practices in OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d
13 We have reviewed and considered the Inventor's Declaration included in
the Evidence Appendix. Our rationale regarding the 2001 priority date also
applies to the Declaration. In particular, our analysis applies to paragraph 5
of the Declaration.
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1359 (Fed. Cir. 2015). In OIP Technologies, the Federal Circuit held that
claims directed to offer based price optimization are abstract. 788 F.3d at
13 63. Similarly, the present claims are directed to selling securities for a
predefined profit.
As for Appellant's argument that the claims are not a mental process
(App. Br. 6-8), we disagree, and note automating a mental process and
making trades does not make the claims patent eligible. Bancorp Servs.,
LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1279 (Fed. Cir. 2012)
("Using a computer to accelerate an ineligible mental process does not make
that process patent-eligible.").
Because claims 3 3--4 7 are directed to an abstract idea, we proceed to
step (2) of the Alice, two-part test.
Step 2
On this record, we see no error in the Examiner's analysis and
conclusion that claims 33--47 are not directed to significantly more than an
abstract idea of fundamental economic practices and mathematical
relationships. Final Act. 9--10. We agree with the Examiner's conclusion
that the claims do not amount to significantly more than an abstract idea
because the additional elements other than the abstract idea is a generic
computer that performs generic computer functions that is well-understood,
routine, and conventional previously known to the industry. 14 Alice at 2359.
We disagree with Appellant's argument that the claims amount to
significantly more than an abstract idea because of an improvement over
prior art by removing the need for a person to sit in front of a computer and
14 Paragraph 75 of Appellant's Specification describes a generic computer as
"individual computer workstations" that executes algorithms.
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place trades when the opportunity arises (i.e., automating the process of
buying and selling securities). App. Br. 9--11. See Bancorp Servs., 687 F .3d
at 1279, cited above.
Further, we disagree with Appellant's preemption arguments. App.
Br. 11. While preemption may denote patent ineligibility, its absence does
not demonstrate patent eligibility. See FairWarning, IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a patent-
ineligible concept, preemption concerns "are fully addressed and made
moot" by an analysis under the Mayol Alice framework. Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellant does not separately argue dependent claims 34--42, 44, 45,
and 47 with particularity, but assert the rejections of those claims should be
withdrawn for at least the same reasons as argued in independent claims 33,
43, and 46. App. Br. 6-12. Accordingly, for the reasons stated supra, we
sustain the Examiner's rejection of: (1) independent claims 33, 43, and 46;
and (2) dependent claims 34--42, 44, 45, and 47 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's decision rejecting claims 33--47 under
35 U.S.C. § 101 as being directed to a judicial exception to patentable
subject matter.
We summarily affirm the Examiner's decision rejecting claims 33--42
under 35 U.S.C. § 101 as being directed to a disembodied data structure.
We summarily affirm the Examiner's decision rejecting claims 33--47
under 35 U.S.C. § 112, second paragraph. Final Act. 12-13.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). See 3 7
C.F.R. § 41.50(±).
AFFIRMED
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