Ex Parte Lutnick et al

Patent Trial and Appeal Board

Apr 28, 2017

12406260 (P.T.A.B. Apr. 28, 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.
12/406,260 03/18/2009 HOWARD W. LUTNICK 09-2307 5080
63710 7590 05/02/2017
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
ABDI, KAMBIZ
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
patentdocketing @ cantor.com
lkoro vich @ c antor. com
phowe @ cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD W. LUTNICK, BIJOY PAUL,
and MICHAEL SWEETING1
Appeal 2015-002531
Application 12/406,260
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing (“Request”) under 37 C.F.R.
§ 41.52 for reconsideration of our Decision on Appeal mailed February 2,
2017. The Decision affirmed the Examiner’s § 101 Rejection and reversed
the Examiner’s § 103 Rejection of claims 1—21, 23—41, and 43^49 on
appeal. We have jurisdiction over the Request under 35 U.S.C. § 6(b).
1 Appellants identify “CFPH, L.P.” as the real party in interest (Appeal Br.
4).
Appeal 2015-002531
Application 12/406,260
ANALYSIS
We note at the outset that a Request for Rehearing “must state with
particularity the points believed to have been misapprehended or overlooked
by the Board.” 37 C.F.R. § 41.52(a). A Request for Rehearing is not an
opportunity to rehash arguments raised in the Briefs. Neither is it an
opportunity to merely express disagreement with a decision without setting
forth points believed to have been misapprehended or overlooked.
Arguments not raised in the briefs before the Board and evidence not
previously relied on in the briefs also are not permitted except in the limited
circumstances set forth in §§ 41.52 (a)(2) though (a)(4). Id.
To the extent Appellants present supplemental or new arguments in
the Request, those arguments are untimely and, as such, will not be
considered except where the arguments are based on a recent relevant
decision of either this Board or a federal court, or on an allegation that the
Board’s decision contains an undesignated new ground of rejection. See id.
Independent claims 1, 16, 32, and 49
Turning to the Request, Appellants’ first and third arguments allege
that the Office failed to establish a prima facie case under step one and step
two, respectively, of the Alice framework. Req. Reh’g 2—3; 5—6. In this
regard, Appellants contend that there is no “evidence presented regarding the
fundamentality or long prevalence of the allegedly abstract idea.” Id. at 3.
We are not aware of any controlling precedent that imposes such a
requirement, and Appellants have not identified any such precedent. As we
indicated in our Decision, the Examiner properly complied with the Office’s
Interim Guidance on Subject Matter Eligibility at the time of mailing of the
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Application 12/406,260
Answer. Dec. 4—5. The Examiner set forth the statutory basis of the
rejection, applied Alice’s two-part framework, and sufficiently articulated
reasoning in an informative manner, thus, meeting the notice requirement of
35U.S.C. § 132. Appellants do not maintain that they did not understand
the Examiner’s rejection. Therefore, the Examiner established a prima facie
case of unpatentability. The burden then shifted to Appellants to rebut the
Examiner’s prima facie case.
Appellants’ second and fourth arguments, respectively, contend that
the claims pass muster under steps one and two of Alice. Id. at 3—5; 6—10.
Appellants argue that “there is no risk that the claims would preempt all
trading using engines.” Id. at 5. According to Appellants, the invention is
“directed to an improvement in computer-related technology that increases
the speed and reduces delays found in conventional trading systems.” Id. at
3. Appellants contend that the claims are directed to improvements in
technology like the claims in DDR, Enfish, Bascom, McRO, Amdocs, and
Trading Techs. Id. at 2—10. Appellants argue in particular that the claims
fall under the ruling in Trading Techs. Inti, Inc. v. CQG, INC., No. 2016-
1616, 2017 WL 192716 (Fed. Cir. Jan. 18, 2017). Id. at 2-3; 7-10.
We disagree.
In Trading Techs., the Federal Circuit affirmed the district court’s
holding that the claims were not directed to an abstract idea because the
claims required “a specific, structured graphical user interface paired with a
prescribed functionality directly related to the graphical user interface’s
structure that is addressed to and resolves a specifically identified problem in
the prior state of the art.” Trading Techs, at *3. Here, the claims do not
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Application 12/406,260
recite a graphical user interface, and thus are readily distinguishable from
the claims in Trading Techs.
We find the claims on appeal to be more similar to the claims held
ineligible in Accenture Global Services, GmbHv. Guidewire Software, Inc.,
728 F.3d 1336 (Fed. Cir. 2013).
Each of the independent claims requires an event engine, a matching
engine, and a bus that couples the two. More specifically, claims 1, 32, and
49 recite “a data bus,” and claim 16 recites “a communication bus.” Each
claim requires that instructions are transmitted through the bus from the
event engine to the matching engine.
Our reviewing court addressed similar claim limitations in Accenture
and found them ineligible under Alice. In Accenture, the claims recited,
inter alia, a “server component including an event processor, a task engine
and a task assistant” and “wherein the event processor is triggered by
application events associated with a change in the information, and sends an
event trigger to the task engine.” Accenture presented arguments that the
claims were directed to a narrow “combination of computer components
including an insurance transaction database, a task library database, a client
component, and a server component, which includes an event processor, a
task engine, and a task assistant” and that “the complexity and detail of the
specification demonstrate that the patent is an advance in computer software
and not simply a claim to an abstract idea.” Accenture, 728 F.3d at 1344.
The court rejected Accenture’s first argument because “simply
implementing an abstract concept on a computer, without meaningful
limitations to that concept, does not transform a patent-ineligible claim into
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Application 12/406,260
a patent-eligible one.” Id. at 1345 (citing Bancorp Servs., LLC v. Sun Life
Assurance Co. of Can., 687 F.3d 1266, 1280 (Fed. Cir. 2012)). Regarding
preemption, the court held that “Accenture’s attempts to limit the abstract
concept to a computer implementation and to a specific industry thus do not
provide additional substantive limitations to avoid preempting the abstract
idea . . .” Id. The court also stated “[Regarding Accenture’s argument
concerning the complexity of the specification, including the specification’s
detailed software implementation guidelines, the important inquiry for a
§ 101 analysis is to look to the claim.” Id.
We find the claimed “event engine” and “matching engine” to be
analogous to the claimed “event processor” and “task engine” in Accenture,
respectively. Here, notwithstanding that detailed implementations may be
disclosed in certain embodiments of Appellants’ Specification, the claims
merely add conventional computer components to well-known business
practices. Appellants’ argument that there is no risk of preemption is
undermined by the breadth of the claims, which describe the claim elements
purely in functional terms. For example, in light of the Specification, the
claimed “bus” encompasses any network or component that allows
communication between an event engine and a matching engine. See, e.g.,
Spec. 28,11. 22—23 (“In some embodiments, communication network 215
may include a data bus. The data bus may allow communication from the
event engine to the matching engine.”); Spec. 29,11. 11—12 (“a data bus may
include a communication network that is used to transport information
among/between/to/from component(s) of a machine”).
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We note the point about pre-emption. Req. Reh’g 5 (“no risk that the
claims would preempt all trading using engines”). However, while pre­
emption “might tend to impede innovation more than it would tend to
promote it, ‘thereby thwarting the primary object of the patent laws’” {Alice,
134 S. Ct. at 2354 (citing Mayo at 1293)), “the absence of complete
preemption does not demonstrate patent eligibility” (Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). While the
specific claim limitations may prevent pre-emption of all trading using
engines, that does not make the claimed subject matter any less directed to
an abstract idea. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362—63 (Fed. Cir. 2015), cert, denied, OIP Techs., Inc., 136 S. Ct. 701, 193
(2015) (“[Tjhat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”). Moreover, because we determine the claimed subject
matter covers patent-ineligible subject matter, the pre-emption concern is
necessarily addressed. “Where a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, [] preemption
concerns are fully addressed and made moot.” Ariosa Diagnostics, 788 F.3d
at 1379.
We note the discussion of delay in the Specification. See, e.g.. Spec.
18,11. 21 (“[djelay may result in suboptimal trading results”). While some
techniques for reducing delay in a system may constitute technological
improvements, that is not necessarily true in every case. See OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.), cert, denied, 136
S. Ct. 701, 193 L. Ed. 2d 522 (2015) (“relying on a computer to perform
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Application 12/406,260
routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible”). Here, providing a bus (e.g., network) that transports
information between two components of a computer is not even arguably
inventive. Cf. BuySAFE v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (“That a computer receives and sends the information over a
network—with no further specification—is not even arguably inventive.”).
In fact, transporting information between components of a computer is — by
definition — the function of any bus. For example, Webster’s New World
Computer Dictionary defines “bus” as “[a]n internal electrical pathway
along which signals are sent from one part of the computer to another”2 and
defines “data bus” as “[a]n internal electronic pathway that enables the
microprocessor to exchange data with random access memory (RAM).”3 Cf.
Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a
‘communications controller’ and a ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”); see also, Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims, understood in light of
the specification, requires anything other than off-the-shelf, conventional
computer, network and display technology for gathering, sending, and
presenting the desired information”). In other words, the claimed bus
2 Webster’s New World Computer Dictionary (2003) retrieved from
http://search.credoreference.eom/content/entry/webstercom/bus/0 (Accessed
Apr. 26, 2017)
3 Webster’s New World Computer Dictionary (2003) retrieved from
http://search.credoreference.eom/content/entry/webstercom/data_bus/0
(Accessed Apr. 26, 2017)
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Application 12/406,260
operates precisely in its normal, expected manner to transport information.
Cf. DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed.
Cir. 2014) (finding a computer-implemented method patent eligible where
the claims recite a specific manipulation of a general-purpose computer such
that the claims do not rely on a “computer network operating in its normal,
expected manner”). Accordingly, we find the claimed arrangement of a bus
that couples an event engine and a matching engine to be insufficient to root
the claimed invention in technology.
Finally, we disagree with Appellants’ argument that our “position
would make all claims that touched economics or trading directed to an
abstract idea.” Req. Reh’g 2. Our Decision makes no such sweeping
holding. Moreover, nothing in our Decision contradicts the Federal Circuit’s
statement in Enfish that “[sjoftware can make non-abstract improvements to
computer technology just as hardware improvements can.” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Rather, as discussed
above, our Decision is based on the particular facts and evidence of record
before us in the instant case.
For the forgoing reasons, we deny Appellants’ request as to
independent claims 1,16, 32, and 49.
Dependent claims
Appellants present separate arguments for the patentability of various
dependent claims for the first time in the Request. Req. 10—12.
The Board regulation governing requests for rehearing provides in
relevant part:
The request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the
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Application 12/406,260
Board. Arguments not raised, and Evidence not previously relied
upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in
the request for rehearing except as permitted by paragraphs (a)(2)
through (a)(4) of this section.
37 C.F.R. § 41.52(a)(2014). Paragraph (a)(2) provides that upon showing of
good cause, a new argument may be presented based on a recent relevant
decision of either the Board or a Federal Court. Paragraph (a)(3) provides
that new arguments may be presented responding to a new ground of
rejection made pursuant to § 41.50(b). Paragraph (a)(4) provides that new
arguments may be presented responding to the Board’s decision containing
an undesignated new ground of rejection.
Appellants have not directed our attention to arguments in its principal
briefs on appeal with regards to any of the dependent claims. Indeed, none
of the dependent claims were mentioned at all. See Reply Br. filed January
7, 2015 at 10—11. Thus, we cannot have misapprehended or overlooked
these arguments. Moreover, we did not enter a new ground of rejection, nor
have Appellants requested that we denominate our affirmance as a new
ground. We note that the Federal Circuit’s decision in DDR was issued one
month prior to the filing of Appellants’ Reply Brief. Appellants have
provided no explanation as to why the dependent claims could not have been
separately argued prior to the Request. Accordingly, neither basis for raising
a new argument has been satisfied, and we therefore deny the request for
relief on that basis as to the dependent claims.
Thus, we conclude that Appellants have failed to show that the Board
misapprehended or overlooked points raised in the appeal or that the
Decision to affirm the Examiner was erroneous.
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Application 12/406,260
DECISION
To summarize, our decision is as follows:
We have considered the Request for Rehearing.
We deny the request that we reverse the Examiner’s rejection under 35
U.S.C. 101 as to claims 1—21, 23—41, and 43^49.
DENIED
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