Ex Parte Martin

Patent Trial and Appeal Board

Sep 27, 2017

14023213 (P.T.A.B. Sep. 27, 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.
14/023,213 09/10/2013 David Martin FID-233 5032
42532 7590 09/29/2017
PROSKAUER ROSE LLP
ONE INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
TRAN, HAI
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
DocketingPatentBoston@proskauer.com
oandrews@proskauer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID MARTIN
Appeal 2016-0055361
Application 14/023,2132
Technology Center 3600
Before: KENNETH G. SCHOPFER, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—29. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
October 13, 2015) and Reply Brief (“Reply Br.,” filed May 2, 2016), the
Examiner’s Answer (“Ans.,” mailed March 1, 2016), and Final Office
Action (“Final Act.,” mailed April 16, 2015).
2 Appellant identifies FMR LLC as the real party in interest (Appeal Br. 1).
Appeal 2015-005536
Application 14/023,213
CLAIMED INVENTION
Appellant’s claimed invention “relates to market monitoring and more
particularly to conveying market information to users” (Spec. 1,11. 2—3).
Claims 1, 12, and 21 are the independent claims on appeal. Claim 1
reproduced below, with minor formatting changes and added bracketed
notations, is illustrative of the subject matter on appeal:
1. A method, comprising:
[a] receiving by the one or more computers a data stream
of current market data type values for the financial item;
[b] determining by the one or more computers based on
the data stream a change value for one data type of the financial
item, with the change value corresponding to a difference
between a current value of the data type for the financial item
and a historical value of the data type for the financial item;
[c] mapping by the one or more computers the determined
change value of the data type to a set of predefined levels of
change of the type of data for the financial item to provide a
determined status level for the financial item; and
[d] retrieving by the one or more computers based on the
determined status level an audio file associated with the financial
item, with the audio file selected as an audio representation of
the determined status level for the financial item.
REJECTIONS
Claims 1—29 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—29 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Segal (US 2002/0133449 Al, pub. Sept. 19, 2002), Marshall (US
2002/0178096 Al, pub. Nov. 28, 2002), and Purdy (US 6,191,799 Bl, iss.
Feb. 20, 2001).
2
Appeal 2015-005536
Application 14/023,213
ANALYSIS
Non-statutory subject matter
Independent claims 1, 12, and 21, and dependent claims 2—11, 13—20, and
22—29 rejected as being directed to an abstract idea.
Appellant argues claims 1, 2, 4—13, 15—22, and 24—29 as a group (see
Appeal Br. 10-20). We select claim 1 as representative. Claims 2, 4—13,
15—22, and 24—29 stand or fall with independent claim 1. See 37 C.F.R.
§41.37(c)(l)(iv).
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S.Ct. at 2355.
The “directed to” inquiry [jcannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim involving physical products and
actions involves a law of nature and/or natural phenomenon—
after all, they take place in the physical world. See Mayo, 132
S.Ct. at 1293 (“For all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas.”) Rather, the “directed to” inquiry applies a stage-
one filter to claims, considered in light of the specification, based
on whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369, 1375, 2016 WL 1393573, at *5
(Fed. Cir. 2016) (inquiring into “the focus of the claimed advance
over the prior art”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “The
‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the
3
Appeal 2015-005536
Application 14/023,213
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing Elec. Power
Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
In rejecting claim 1, the Examiner finds the claims are directed to “a
series of steps for streaming financial market data, determining change value
between current value and historical value for a financial item, and then
using the determined change value to retrieve audio file” (Final Act. 7). The
Examiner finds claim 1 is nothing more than “a mathematical relationship
and/or a method of organizing human activities,” and as such, directed to a
patent-ineligible abstract idea {id. at 7—8). In the Answer, the Examiner
further determines that the claims are directed to “[mjanaging an
investment” (Ans. 5), and finds “[investment management is considered to
be a fundamental economic practice long prevalent in our system of
commerce, which is in the realm of abstract idea” {id.).
Appellant first argues that “[t]he [Ejxaminer has not properly applied
the first prong of the Alice test to determine patent-eligibility” (Appeal Br.
12 (emphasis omitted)) because the Examiner has “merely stat[ed] a
conclusion that the claims involve[] an abstract idea” {id.; see also Reply Br.
2—5). We cannot agree.
By way of background, the Examiner finds the claims are directed to
“a concept of determining a change value between a current value and a
historical value of a financial item and using the determined change value to
retrieve an audio file based on the determined change value” (Ans. 5). The
Examiner also finds “[t]he claim does no more than call on a ‘computing
4
Appeal 2015-005536
Application 14/023,213
device’ with basic functionality for comparing the input data and data
change and rules, to do what investors do routinely” (Final Act. 9; see also
Ans. 5). The Examiner further finds
[t]he addition of the determination of the change value and the
mapping to the predefined levels of change to retrieve audio file
narrows the abstract idea to particular types of relationships, but
they do not change the analysis because they are simply
mathematical calculation and mapping data which do not make
the idea non-abstract.
(Ans. 6). Thus, we determine initially the Examiner has adequately
articulated that the claims are directed to an abstract idea.
To the extent Appellant argues that the Examiner erred in adequately
supporting this determination by providing adequate “reasoning and
evidence” (see Appeal Br. 12—17), we are unpersuaded. In this regard, there
is no requirement that examiners must provide evidentiary support in every
case before a conclusion can be made that a claim is directed to an abstract
idea. See, e.g., para. IV “July 2015 Update: Subject Matter Eligibility” to
2014 Interim Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed.
Reg. 74618 (Dec. 16, 2014)
The courts consider the determination of whether a claim is
eligible (which involves identifying whether an exception such
as an abstract idea is being claimed) to be a question of law.
Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any
factual findings.
(Emphasis added.) We agree that evidence may be helpful in certain
situations where, for instance, facts are in dispute. But it is not always
necessary. Based on the above analysis set forth by the Examiner, we are
unpersuaded it is necessary in this case.
5
Appeal 2015-005536
Application 14/023,213
Instead, we need only look to other decisions where similar concepts
were previously found abstract by the courts. See Amdocs (Israel) Limited v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (“Instead of a
definition [for what an ‘abstract idea’ encompasses], then, the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen—what prior cases were about, and
which way they were decided.”)
To that end, as noted above, the Examiner finds the claims are
directed to “a series of steps for streaming financial market data,
determining change value between current value and historical value for a
financial item, and then using the determined change value to retrieve audio
file” (Final Act. 7; see also Ans. 5). Broadly, we agree that the Examiner is
correct. According to Appellant’s Specification, “[t]his invention relates to
market monitoring and more particularly to conveying market information to
users” (Spec. 1,11. 2—3). And, taking independent claim 1 as representative,
the claimed subject matter is generally directed to “[a] method” including
steps for “receiving . . . current market data ... for [a] financial item,”
“determining ... a change value for . . . the financial item” based on
comparing a current value of the financial item and a historical value of the
financial item, “mapping ... the determined change value ... to a set of
predefined levels ... to provide a determined status level for the financial
item,” and “retrieving . . . based on the determined status level an audio file
associated with the financial item.”
In this regard, we agree with the Examiner that independent claim 1 is
directed to “a concept of determining a change value between a current
value and a historical value of a financial item and using the determined
6
Appeal 2015-005536
Application 14/023,213
change value to retrieve an audio file based on the determined change value”
(Ans. 5), and at a higher level directed to “[mjanaging an investment” (id. ).
Furthermore, we are persuaded that independent claim 1 is “directed to” a
fundamental economic practice and method of organizing human activity, in
that it is analogous to the concept of intermediated settlement in Alice, and
the concept of risk hedging in Bilski v. Kappos, 561 U.S. 593 (2010), and,
thus, is an abstract idea beyond the scope of § 101. See Alice Corp., 134
S.Ct. at 2356; see also Bilski, 561 U.S. at 611.
We also note the claim steps for “receiving . . . data,”
“determining ... a change value,” “mapping,” i.e., assigning a “determined
status level” based on “predefined levels of change,” and “retrieving,” i.e.,
presenting an audio file based on the determined status, accomplishes little
more than collecting data, analyzing the data, and then presenting the data
based on the analysis, and is similar to the steps that the Federal Circuit
determined were patent ineligible in Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016). In Electric Power, the method claims
at issue were directed to performing real-time performance monitoring of an
electric power grid by collecting data from multiple data sources, analyzing
the data, and displaying the results. Elec. Power Grp. LLC, 830 F.3d at
1351—52. The Federal Circuit held that the claims were directed to an
abstract idea, explaining that “[t]he advance they purport to make is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions.” Id. at 1354.
Accordingly, we find that independent claim 1 involves nothing more
than receiving data, determining a status level based on predefined levels of
7
Appeal 2015-005536
Application 14/023,213
change, and presenting corresponding information — activities squarely
within the realm of abstract ideas. See, e.g., Elec. Power Grp., LLC, 830
F.3d at 1353—54 (When “the focus of the asserted claims” is “on collecting
information, analyzing it, and displaying certain results of the collection and
analysis,” the claims are directed to an abstract idea.). See also Accenture
Global Servs., GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344-45
(Fed. Cir. 2013) (Claims reciting “generalized software components
arranged to implement an abstract concept [of generating insurance-policy-
related tasks based on rules to be completed upon the occurrence of an
event] on a computer” not patent eligible.).
Step two is “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, 134 S.Ct. at 2355 (citingMayo, 132 S.Ct. at 1294).
And, similar to the situation in Electric Power, we find nothing
sufficient to remove the claims from the class of subject matter ineligible for
patenting. As the court explained in Electric Power, “merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas.” Elec. Power Grp., 830 F.3d at 1355.
Here, as the Examiner points out, independent claim 1 “does no more than
call on a ‘computing device’ with basic functionality for comparing the input
data and data change and rules, to do what investors do routinely” (Final
Act. 9; see also Reply Br. 7). Appellant argues that “[t]he [E]xaminer has
not presented any evidence to support the position that investors routinely
8
Appeal 2015-005536
Application 14/023,213
retrieve audio files according to determined status levels in connection with
managing their investments” (Reply Br. 5). However, the Specification
discloses that “[t]he audio can be merely different, unique sounds” (Spec. 5,
11. 19—21). Thus, we agree with the Examiner that the steps recited by
independent claim 1 amount to nothing more than mere instructions to
implement the abstract idea on a computer (Final Act. 9; see also Reply Br.
7)—none of which add inventiveness because they merely require the
application of conventional, well-known analytical steps. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (“[T]he claimed
sequence of steps comprises only ‘conventional steps, specified at a high
level of generality,’ which is insufficient to supply an ‘inventive concept.’”)
(citing Alice, 134 S. Ct. at 2357).
Appellant argues that the Examiner fails to satisfy the second step of
the Alice analysis, because
[cjlaim 1 requires “mapping by the one or more computers the
determined change value of the financial item to a set of
predefined levels to provide a determined status level for the
financial item; and retrieving by the one or more computers
based on the determined status level an audio file associated with
the financial item, with the audio file selected as an audio
representation of the determined status level for the financial
item.” These features are meaningful limitations that are neither
well-known nor routine in the field and are suitable to transform
the so called abstract idea into patent eligible, statutory subject
matter.
(Appeal Br. 18; see also Reply Br. 5—6). However, there is no indication in
the record that any specialized computer hardware or other “inventive”
computer components are required to perform this “mapping,” “retrieving,”
or any of the other steps in the claim. In fact, the Specification discloses that
9
Appeal 2015-005536
Application 14/023,213
[t]he computing system can be any sort of user client device or
can be a server computing system that generates or retrieves
sounds that are rendered by an acoustic transducer element,
e.g., speakers, headphones, etc. associated with the client device
(e.g., personal computer, tablet computer, smart phone) or can
be a stand-alone acoustic transducer that receives the
generated/retrieved sounds, via the client device and/or server.
(Spec. 3,11. 4—9). And, with respect to “mapping by the one or more
computers the determined change value of the data type to a set of
predefined levels of change of [the type of data for the financial item] to
provide a determined status level for the financial item,” the Specification
merely provides that “[t]he determined value is mapped into or correlated to
one of a plurality of defined bands or levels of interest pertaining to the
financial item” {id. at 6,11. 20-21; see also Reply Br. 6). Thus, each
limitation does no more than require a generic computer to perform generic
computer functions.
And, considered as an ordered combination, the “one or more
computers” of Appellant’s independent claim 1 add nothing that is not
already present when the limitations are considered separately. Viewed as a
whole, Appellant’s independent claim claims simply recite the “concept of
determining a change value between a current value and a historical value of
a financial item and using the determined change value to retrieve an audio
file based on the determined change value” {see Ans. 5) as performed by one
or more generic computing devices.
Appellant also argue that the
claimed features address the network-centric challenge of
notifying a user in a non-visual manner about time sensitive
information, namely, market movements. These are meaningful
limitations that add more than generally linking the use of the
alleged abstract idea to a computer because the claim solves a
10
Appeal 2015-005536
Application 14/023,213
network-centric problem with a claimed solution that is
necessarily rooted in computer technology.
(Appeal Br. 20; see also Reply Br. 6). Appellant’s argument is not
persuasive. Here, the claims do not, for example, purport to improve the
functioning of the computer itself or involve a solution necessarily rooted in
computer technology to overcome a problem specific to the realm of
computer networks, but instead embodies the use of generic computer
components in a conventional manner to perform an abstract idea, which, as
the Court in DDR Holdings explained, is not patent eligible. DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[T]hese
claims in substance were directed to nothing more than the performance of
an abstract business practice on the Internet or using a conventional
computer. Such claims are not patent-eligible.”). Nor do the claims effect
an improvement in any other technology or technical field. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of “determining a change value between a current
value and a historical value of a financial item and using the determined
change value to retrieve an audio file based on the determined change value”
(see Ans. 5), which under our precedents, is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
Appellant last argues that even if the claims are directed to an abstract
idea, the Examiner “still must show that Claim 1 would improperly tie up
future use of the identified abstract idea(s). Absent this showing the
[EJxaminer cannot have been said to show that the claims involve a patent
ineligible abstract idea” (Appeal Br. 14; see also id. at 15—17).
Although the Supreme Court has described “the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
11
Appeal 2015-005536
Application 14/023,213
eligible subject matter] as one of pre-emption,” Alice, 134 S. Ct. at 2354,
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354). Yet although “preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” Id.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, and claims 2, 4—13, 15—22, and 24—
29, which fall with independent claim 1.
Dependent claims 3, 14, and 23
Appellant separately argues that substantially similar dependent
claims 3, 14, and 23 “add significantly more to the so called abstract idea.”
(see Appeal Br. 21). We find, however, that dependent claims 3, 14, and 23
merely describe further steps related to presenting information, and lack
additional elements that would render the claims patent-eligible. In
particular, dependent claims 3,14, and 23 recite “retrieving the audio file
based on the determined threshold band; causing the retrieved audio file to
be rendered by a transducer,” which we find essentially amounts to a manner
of providing information, which we discern sits squarely within, and does
not alter appreciably, the broader “concept of determining a change value
between a current value and a historical value of a financial item and using
12
Appeal 2015-005536
Application 14/023,213
the determined change value to retrieve an audio file based on the
determined change value” (see Ans. 5). Thus, we also sustain the rejection
under § 101 of these dependent claims on the same basis as the independent
claim from which they depend.
Rejection of independent claims 12 and 21 under 35 U.S.C. § 101 as being
directed to signals.
In rejecting independent claims 12 and 21, the Examiner finds claims
12 and 21 are directed to non-statutory subject matter because Appellant’s
“Specification does not explicitly draw[] a distinction between computer
readable storage media, defining it as hardware discs, and computer readable
transmission media, defining it as signals per se” under a broadest
reasonable interpretation (Final Act. 3—5).
In response, Appellant argues that the subject matter of independent
claims 12 and 21 is directed to statutory subject matter (see Appeal Br. 8—
10; see Reply Br. 1—2). We cannot agree.
Independent claims 12 recites “[a] computer program product tangibly
stored on a computer readable hardware storage device” and independent
claim 21 recites “a computer readable storage device storing a computer
program product.” Appellants’ Specification describes
[sjtorage devices suitable for tangibly embodying computer
program instructions and information include all forms of
nonvolatile memory, including by way of example
semiconductor memory devices, such as EPROM, EEPROM,
and flash memory devices; magnetic disks such as internal hard
disks and removable disks; magneto-optical disks; and
CD_ROM disks. Any of the foregoing can be supplemented
by, or incorporated in, ASICs (application-specific integrated
circuits).
13
Appeal 2015-005536
Application 14/023,213
(Spec. 12,11. 20-25).
Because Appellants’ Specification does not define “storage devices”
to exclude transitory media, the claimed “computer readable hardware
storage device” and “computer readable storage device,” under a broadest
reasonable interpretation, may encompass transitory media, which are not
patent-eligible. See In reNutjen, 500 F.3d 1346, 1353 (Fed. Cir. 2007)
(Holding “physical but transitory forms of signal transmission such as . . .
electrical signals through a wire, and light pulses through a fiber-optic
cable” are not statutory subject matter.); see also Ex parte Mewherter, 107
USPQ2d 1857, 1862 (PTAB 2013) (precedential) (Finding a machine
readable storage medium non-statutory under § 101.).
In view of the foregoing, we sustain the rejection of independent
claims 12 and 21 under 35 U.S.C. § 101 as reciting signals.
Obviousness
Independent claims 1, 12, and 21, and dependent claims 6—8, 11, 12, 16—18,
20, 21, 25-27, and 29
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting independent claims 1, 12, and 20 under 35 U.S.C. § 103(a)
because the combination of Segal, Marshall, and Purdy does not disclose or
suggest limitations [b], [c], and [d] of independent claim 1, and similarly
recited by independent claims 12 and 21 (see Appeal Br. 22—28; see also
Reply Br. 6—10). Instead, we agree with, and adopt the Examiner’s findings
and rationales (see Final Act. 11—14 (citing Segal Ull, 25, 26, 39, 41—43,
60, 62, Figs. 3—6; Marshall H 9, 21, 23, 24, 29, 30, Figs. 1^4; Purdy, col. 3,
11. 5—36, col. 4,11. 56—67, col. 5, col. 6,11. 1—35, and Fig. 3); see also Reply
14
Appeal 2015-005536
Application 14/023,213
Br. 12-14 (citing Segal H 12, 26, 41, 62; Marshall H 9, 21, 23, 24, 29, 30,
Figs. 1^4)). We add the following discussion for emphasis.
Segal is directed to “an interactive decision support system for
monitoring and responding to system and market events displayed within a
two dimensional view of a three dimensional system model” (Segal 12).
Segal’s system “consolidates the data streams of NYSE® operational
activity into one interactive three-dimensional visualization system to allow
a user to monitor and respond to systems and stock-related events” {id. 19).
Segal discloses that its “[d]ata sources 103 include current market activity,
comprising news and financial information such as stock price, stock trading
volume, [and] selected historical records” {id. 126). “Data sources 103 can
[also] include selected stock price trends, such as composite index of
selected stock of high capitalization companies, daily closings, growth rates,
stock price volatility, yield and P/E ratio, among other things” {id.). Segal
also discloses that “[a]lerts can be provided to indicate business events that
effect individual stocks or stock related by a predefined user group” {id.
139). More particularly, Segal discloses
[exceptional conditions can include business exceptions and
system exceptions. Business exceptions include price, trade,
velocity, queue, message, stock not open, stock halted, news
and hot news, among other things. System exceptions can
include server down, book down, stock down, loss of floor
connectivity, and loss of host connectivity, among other things.
{Id. 140). In this regard, Segal discloses
[e]xceptional conditions for securities can be set according to
several rules defined by thresholds, stock opening, delays or
halts in trading, market conditions or particular news. A
threshold is the point or points at which certain types of
activities or events cause a stock symbol to be flagged with an
indicator or icon that describes the class and intensity of the
15
Appeal 2015-005536
Application 14/023,213
event or activity. Threshold exceptions may be grouped and
categorized by price change, such as net price change in
absolute value, net percept price change as a measure of relative
value, and spread; trade information, such as NYSE® block
trades, reported trades, regional trades, and total volume; order
velocity and specialist orders to name a few.
(Id. 141).
Marshall is directed to “a virtual reality generator for use with
financial information” (Marshall 11). More particularly, Marshall discloses
that its system “uses virtual reality techniques to allow money managers and
financial analysts to easily view otherwise unmanageable amounts of
complex information and in particular, financial information about financial
markets such as information about equities, commodities, currencies,
derivatives and their related markets” (id. 117; see also id. 1128-29).
Marshall discloses that “[vjirtual reality environments can be created using
object-oriented libraries of functions,” e.g., “the WorldToolKit library”
(id. 1 8). Marshall discloses that “[t]he WorldToolKit library’s texturing
functions enable the development of applications with real-time texture
mapping” (id. 19; see also id. 121). Marshall discloses that its system uses
the CAPRI analytic system which “receives as input real-time, financial data
from on-line services such as the Reuters’ and the Knight-Ridder Inc.’s
digital data feed servers” (id. 124). Marshall further discloses that “the
CAPRI analytic system allows a user to define areas of interest from large
areas of financial information, and then create price and volume charts for
any stock issue, including futures, stocks, indexes, currencies, bonds and
commodities” (id.). Marshall discloses that its virtual reality world uses
visual cues “to represent financial information about the stocks, as selected
by the user” (id. 129; see also id. 130). For example, “[t]he color of [a]
16
Appeal 2015-005536
Application 14/023,213
polygon can represent, for example, profit or loss. The height of the
polygon (above or below the plane) can represent, for example, the price
change or volatility of the stock” (id.). Marshall also discloses that “[t]he
user is presented with a virtual reality world of selected financial
information where location, colors, sounds, shapes and movement all specify
financial information that the user has requested information about” (id. 133
(emphasis added)).
Purdy is directed to a system “for altering the appearance of an
animated object to reflect a rate of change in the data being represented by
the animated object” (Purdy, col. 1,11. 9-11; see also id. at col. 7,11. 22—26).
In one example, Purdy discloses
if the animated object is a propeller representing the price of a
particular stock on the New York Stock Exchange, the data
animation program determines a rate of motion for the propeller
expressed in revolutions per minute (RPMs) based on a
percentage change in the stock price and then causes the
propeller to rotate at the determined rate of motion.
(Id. at col. 1,11. 60-67; see also id. at col. 5,11. 16—39). Purdy discloses that
a “user is given an immediate visual, and perhaps aural or interactive,
indication of how the data in which the user is interested is changing” (id. at
col. 3,11. 34—36; see also id. at col. 4,11. 60—61; col. 6,11. 23—28). Purdy
also discloses that “[a]n animated object may actually refer to several frames
of visual display information, and not one solitary visual image” (id. at col.
3,11. 61—63). Purdy also discloses that “[i]n one actual embodiment of the
present invention, the change in stock price is one color, e.g., green, for a
positive change and another color, e.g., red, for a negative change in stock
price” (id. at col. 5,11. 47—50). With reference to the propeller example
above, Purdy further discloses
17
Appeal 2015-005536
Application 14/023,213
if the maximum percentage change for a particular stock is +or
-10% per day, and the propeller of the animated propeller object
has a maximum rate of motion equal to 60 RPMs, then the rate
of motion conversion factor is 6, i.e., 60+10. Consequently,
using the rate of motion formula, the rate of motion of the
propeller is calculated by multiplying the percentage change by
the rate of motion conversion factor, i.e., using a rate of motion
conversion factor of 6 and a percentage change of +5% , the
calculated rate of motion is 30 RPMs.
(Id. at col. 11,11. 4—12).
Appellant argues that “Segal does not teach . . . determining a
change value for one data type” (Appeal Br. 22—23; see also Reply Br. 7—8).
More particularly, Appellant argues that “Segal’s discussion of ‘exceptional
conditions for securities’ etc., in [0041] are properly viewed as stock
opening indicators of the status of the trading of a particular stock when the
market opens” (Reply Br. 7). We cannot agree.
Instead, we agree with the Examiner that the combination of Segal,
Marshall, and Purdy discloses the argued limitation. In making this
determination, we find that Segal discloses that “[ajlerts can be provided to
indicate business events that effect individual stocks or stock related by a
predefined user group” (Segal 139). In this regard, Segal discloses that its
alerts or “[exceptional conditions for securities can be set according to
several rules defined by thresholds” (id 140). Segal discloses “[a] threshold
is the point or points at which certain types of activities or events cause a
stock symbol to be flagged with an indicator or icon that describes the class
and intensity of the event or activity” (id. 141), and further discloses
“[threshold exceptions may be grouped and categorized by price change,
such as net price change in absolute value, net percept price change as a
18
Appeal 2015-005536
Application 14/023,213
measure of relative value” (id.). Thus, Appellant’s argument is not
persuasive.
Appellant next argues that “Marshall does not teach any feature that
resembles Appellant’s claimed feature of mapping the change value to a set
of levels of change” (Appeal Br. 23—26; see also Reply Br. 8—10). More
particularly, Appellant argues “while Marshall mentions the word ‘mapped,’
Marshall maps ‘functions’ to a ‘virtual reality world’ in relation to analytics
produced by the CAPRI system” (Appeal Br. 25; see also id. at 26—27). We
cannot agree.
Instead, we agree with the Examiner that the combination of Segal,
Marshall, and Purdy discloses the argued limitation. In making this
determination, we find Marshall discloses that its virtual reality world uses
visual cues “to represent financial information about the stocks, as selected
by the user” (Marshall 129; see also id. 130). For example, “[t]he color of
[a] polygon can represent, for example, profit or loss. The height of the
polygon (above or below the plane) can represent, for example, the price
change or volatility of the stock” (id.). Thus, Marshall discloses “mapping
the change value to a set of levels of change,” as called for by limitation [c]
of independent claim 1.
We note this interpretation is commensurate in scope with Appellant’s
Specification which describes “mapping” as “[t]he determined value is
mapped into or correlated to one of a plurality of defined bands or levels of
interest pertaining to the financial item” (Spec. 6,11. 20-21). We also note
that Purdy discloses “the change in stock price is one color, e.g., green, for a
positive change and another color, e.g., red, for a negative change in stock
price” (Purdy, col. 5,11. 47—50; see also id. at col. 1,11. 60-67; col. 3,11. 61—
19
Appeal 2015-005536
Application 14/023,213
63; col. 5,11. 16—39; and col. 11,11. 4—12), and as such, we find the
“mapping” limitation also reads on Purdy’s disclosure. Thus, Appellant’s
argument is not persuasive.
Appellant also argues that “Purdy in combination with Segal and
Marshall does not actually describe anything remotely resembling the
claimed retrieving feature” (Appeal Br. 26—27; see also Reply Br. 8—9).
Appellant acknowledges that Purdy discloses that “an aural indication can be
given” (Appeal Br. 26), but argues that “the aural indication would be the
sound of the animated object, e.g., the propeller” (id.). Appellant’s
argument is not persuasive to show Examiner error.
Here, we find that Purdy discloses that a “user is given an immediate
visual, and perhaps aural or interactive, indication of how the data in which
the user is interested is changing” (Purdy col. 3,11. 34—36). Purdy also
discloses that the indication is altered based on a percentage change in the
stock price (id. at col. 1,11. 64—67). For example, Purdy discloses “the rate
of motion of the propeller is calculated by multiplying the percentage change
by the rate of motion conversion factor, i.e., using a rate of motion
conversion factor of 6 and a percentage change of +5% , the calculated rate
of motion is 30 RPMs” (id. at col. 11,11. 4—12). Marshall also discloses that
“[t]he user is presented with a virtual reality world of selected financial
information where location, colors, sounds, shapes and movement all specify
financial information that the user has requested information about”
(Marshall 133 (emphasis added)).
Appellant further argues “[a]t best, when Purdy is combined with
Segal and Marshall, Purdy would modify the combination to add sounds to
the virtual trading floor of Segal in the virtual representation of securities as
20
Appeal 2015-005536
Application 14/023,213
taught by Marshall” (Reply Br. 9). However, Appellant’s argument is not
persuasive at least because independent claims 1, 12, and 21 utilize the
transitional term “comprising,” which is inclusive or open-ended and does
not exclude additional, unrecited elements or method steps. See Mars Inc. v.
H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). Here, we note that
the presence of both audio and video does not prevent Purdy’s disclosure
from satisfying the argued limitation.
Appellant last argues that “[t]he motivation to apply Marshall and
Purdy to Segal originates solely from Appellant’s claims/ specification”
(Appeal Br. 28; see also Reply Br. 10). More particularly, Appellant argues
“[t]he [Ejxaminer’s motivation is solely derived from Appellant” (Appeal
Br. 28) because
Segal teaches a virtual trading floor, whereas Marshall teaches
metaphors for representing abstract information, such as
financial information, in a virtual reality world, as real world
objects in three dimensional form with Purdy mentions that
perhaps an aural indication can be the sound of the animated
object, (e.g., the propeller).
(Id. ). However, the Supreme Court has made clear that when considering
obviousness “the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ” (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).
And to the extent Appellant seeks an explicit suggestion or motivation
in the reference itself, this is not the law (see id. at 418). We find that the
Examiner has provided an “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” (see id. (citing
21
Appeal 2015-005536
Application 14/023,213
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, the Examiner
reasons
[i]t would have been obvious to one of ordinary skill in the art
at the time of the invention to combine the mapping function as
taught by Marshall and the audio function as taught by Purdy
with the method of Segal to arrive at the claimed invention to
provide an enhanced method for monitoring the market through
virtual reality generator and audio generator and without having
to look the numbers. The motivation is simply to enhance the
monitoring method/system and make it more user friendly.
(Final Act. 13—14). We note that Appellant’s arguments do not address
whether the modification described by the Examiner is more than the
predictable use of prior art elements according to their established functions
nor do they specifically mention or contest the substance of the Examiner’s
rationale, but rather only generally assert that “[t]he [Ejxaminer’s motivation
is solely derived from Appellant” (see Appeal Br. 28; see also Reply Br. 10).
We also note that Marshall also discloses that “[t]he user is presented with a
virtual reality world of selected financial information where location, colors,
sounds, shapes and movement all specify financial information that the user
has requested information about” (Marshall 133 (emphasis added)). Thus,
Appellant’s argument is not persuasive.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claims 1, 12, and 21 under 35 U.S.C. § 103(a). We also sustain
the Examiner’s rejection of dependent claims 6—8, 11, 12, 16—18, 20, 21,
25—27, and 29, which are not argued separately.
Dependent claims 2, 10, 13, 19, 22, and 28
Appellant argues that claims 2, 10, 13, 19, 22, and 28 stand or fall
together based on claim 2 (see Appeal Br. 28—29). Accordingly, we take
22
Appeal 2015-005536
Application 14/023,213
claim 2 as representative. Claims 10, 13, 19, 22, and 28 stand or fall with
dependent claim 2. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues that the Examiner erred in rejecting dependent claim
2 under 35 U.S.C. § 103(a) because Segal, upon which the Examiner relies,
fails to disclose or suggest “determining for the current price of the financial
item the determined status level as a threshold price band corresponding to a
current change value in price for the financial item” (Appeal Br. 28—29).
However, we agree with the Examiner that Segal discloses the argued
limitation (see Final Act. 14 (citing Segal 39, 41—46)). In this regard, we
note that Segal discloses that “[ejxception condition flags and display
segments of a trading post can be color coded to indicate the nature of the
exception condition” (Segal 141). Segal further discloses an “activity map
504 displays a gradient ramp to indicate changes in activity intensity level”
(id. 146).
In view of the foregoing, we sustain the Examiner’s rejection under 35
U.S.C. § 103(a) of dependent claim 2, and claims 10, 13, 19, 22, and 28,
which fall with dependent claim 2.
Dependent claims 3, 14, and 23
Appellant argues that claims 3,14, and 23 stand or fall together based
on claim 3 (see Appeal Br. 29). Accordingly, we take claim 3 as
representative. Claims 14 and 23 stand or fall with dependent claim 3. See
37 C.F.R. §41.37(c)(l)(iv).
Appellant argues that the Examiner erred in rejecting dependent claim
3 under 35 U.S.C. § 103(a) because the combination of Segal, Marshall, and
Purdy fails to disclose or suggest “the audio file that is retrieved is based on
23
Appeal 2015-005536
Application 14/023,213
the determined threshold band, which corresponds to price changes, and
which triggers selection of the audio file” (Appeal Br. 29). More
particularly, Appellant argues “Purdy, does not retrieving the audio file
based on the determined threshold band” because the mentioning of “aural”
only relates to optional characteristics of the animated objects that Purdy
describes” (id.). However, we agree with the Examiner that the combination
of Segal, Marshall, and Purdy discloses the argued limitation (see Final Act.
14 (citing Segal 33, 41, 42, 46, 62; Purdy, Figs. 1, 3)). Again, as
discussed above, the presence of both audio and video in Purdy does not
otherwise prevent Purdy’s disclosure from satisfying the argued limitation.
In view of the foregoing, we sustain the Examiner’s rejection under 35
U.S.C. § 103(a) of dependent claim 3, and claims 14 and 23, which fall with
dependent claim 3.
Dependent claims 4, 5, 15, 16, 24, and 25
Claim 4 recites “constructing by the one or more computers a playlist
based on user selections of ratings for audio files that are associated with the
threshold value bands.”
In rejecting claim 4, the Examiner cites paragraphs 11, 39, 41, 42, 43,
62, and Figures 3—6 of Segal, as well as Figures 1 and 3 of Purdy, along with
their accompanying description, as disclosing the argued limitation (see
Final Act. 14). However, we agree with Appellant that the cited portions of
Segal and Purdy fail to disclose or suggest the argued limitation. The
Examiner does not respond to Appellant’s argument in the Answer.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 4 under 35 U.S.C. § 103(a), and claims 15 and 24, which include a
24
Appeal 2015-005536
Application 14/023,213
substantially similar limitation. We also do not sustain the Examiner’s
rejection of claims 5, 16, and 25, which depend from claims 4, 15, and 24,
respectively.
Dependent claims 9, 18, and 27
In response to the rejection of claims 9, 18, and 27, Appellant merely
reproduces the language of dependent claim 9 (Appeal Br. 30). As such,
Appellant fails to challenge the Examiner’s rejection of claims 9, 18, and 27
because the mere reproduction of a claim does not rise to the level of a
substantive argument for patentability. Cf. In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (holding that the Board reasonably interpreted 37 C.F.R.
§ 41.37 (c)(l)(vii) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”).
Therefore, in the absence of any specific, technical argument as to
why the combination of Segal, Marshall, and Purdy fails to disclose or
suggest the subject matter of claims 9, 18, and 27, we sustain the Examiner’s
rejection of dependent claims 9, 18, and 27 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 1—29 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1—3, 6—14, 17—23, and 26—29
under 35 U.S.C. § 103(a) is affirmed.
The Examiner’s rejection of claims 4, 5, 15, 16, 24, and 25 under 35
U.S.C. § 103(a) is reversed.
25
Appeal 2015-005536
Application 14/023,213
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
26