Ex Parte Marynowski et al

Patent Trial and Appeal Board

Apr 24, 2018

14828117 (P.T.A.B. Apr. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/828,117 08/17/2015
35811 7590 04/26/2018
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
John M. Marynowski
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.
DCF-14-1058C-D-C-C-CON 6714
EXAMINER
FELTEN, DANIELS
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
04/26/2018 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN M. MARYNOWSKI, CATALIN D. VOINESCU,
STEP AN PUSCASU, and THOMAS M. O'DONNELL
Appeal2016-008507
Application 14/828, 117 1
Technology Center 3600
Before MICHAEL R. ZECHER, BETH Z. SHAW, and
MICHAEL M. BARRY, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 1-37, all of which are
pending on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 According to Appellants, the real party in interest is DCFB LLC. App. Br.
1.
2 Our Decision refers to the Appeal Brief filed May 26, 2016 ("App. Br.");
Reply Brief filed September 13, 2016 ("Reply. Br."); Examiner's Answer
mailed August 19, 2016 ("Ans."); and Final Office Action mailed April 29,
2016 ("Final Act.").
Appeal 2016-008507
Application 14/828, 117
STATEMENT OF THE CASE
Appellants' invention relates to an automated trading system for use
in an electronic trading exchange network system. Spec. i-f 1.
Claim 1 is illustrative of Appellants' invention, as reproduced below:
1. A system for reducing a response time of
automated trading, comprising:
an electronic exchange system communicatively coupled
to an automated trading system, said electronic exchange
system comprising one or more first backend computers that
generate and transmit information related to a first traded item
to the automated trading system, the automated trading system
comprising a second remote backend computer solely
performing automatic steps of:
receiving the information related to the first traded item
from the electronic exchange system;
comparing at least a portion of the information related to
the first traded item and pre-calculated price information, said
pre-calculated price information having been generated and
stored at said automated trading system, in a searchable format,
prior to receiving the information related to the first traded
item;
automatically determining whether to execute one or
more market transactions based on said comparing;
automatically generating a request for the one or more
market transactions when it is determined to execute the one or
more market transactions,
wherein the request is based at least in part on the
information related to the first traded item and on the pre-
calculated price information;
outputting the request for the one or more market
transactions to the one or more first backend computers; and
causing the electronic exchange system to execute the
one or more market transactions automatically generated for the
first traded item.
2
Appeal 2016-008507
Application 14/828, 117
Examiner's Rejection
Claims 1-37 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final Act. 2--4.
ANALYSIS
The Examiner finds claims 1-37 are directed to ideas that have been
identified as abstract by our reviewing court. Final Act. 3. In particular, the
Examiner finds that the abstract idea underlying these claims is "receiving
information, comparing at least a portion of the information, and
manipulating information by generating a request and transmitting the
information by outputting a request and making a transaction." Ans. 7. The
Examiner also finds additional elements recited in these claims do not
amount to significantly more than the abstract idea itself. Id. at 2--4.
According to the Examiner, the claims require no more than performing
generic computer functions. Final Act. 3--4; Ans. 2--4.
Appellants present several arguments against the 35 U.S.C. § 101
rejection. App. Br. 4--11; Reply Br. 1-5. Appellants contend the claims are
not directed to an abstract idea because the "second remote backend
computer" is a dedicated computer that is solely dedicated to performing
certain automated computer functions, and because the claims improve the
speed at which a computer trading system is able to generate requests for
market transactions. App. Br. 4--11.
We do not find Appellants' arguments persuasive. Instead, we find
the Examiner has provided a comprehensive response to Appellants'
arguments supported by a preponderance of evidence. Ans. 2-7. As such,
we adopt the Examiner's findings and explanations provided therein. Id. At
the outset, we note the Supreme Court has long held that "[l]aws of nature,
3
Appeal 2016-008507
Application 14/828, 117
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)). The "'abstract ideas' category embodies 'the longstanding rule that
'[a]n idea, by itself, is not patentable."' Id. at 2355 (quoting Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). The first step in the analysis
is to "determine whether the claims at issue are directed to one of those
patent-ineligible concepts," such as an abstract idea. Id.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words,
the second step is to "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."' Id. (alteration in original) (quoting Mayo, 132 S. Ct. at
1294). The prohibition against patenting an abstract idea "cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted).
4
Appeal 2016-008507
Application 14/828, 117
Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellants' claims are directed to an abstract idea of
"receiving information, comparing at least a portion of the information, and
manipulating information by generating a request and transmitting the
information by outputting a request and making a transaction." Ans. 7. All
the steps recited in Appellants' claims, including, for example: (i)
"receiving the information," (ii) "comparing at least a portion of the
information," (iii) "automatically determining," (iv) "automatically
generating," (v) and "outputting the request" are abstract processes of
receiving, comparing, determining, generating, and outputting data.
Turning to the second step of the Alice inquiry, we find nothing in
Appellants' claims that adds anything "significantly more" to transform
them into a patent-eligible application. Alice, 134 S. Ct. at 2357. The
claimed steps are ordinary steps in data analysis and are recited in an
ordinary order.
For at least the reasons stated in the Answer, we are not persuaded by
Appellants' unsupported attorney argument that the "second remote backend
computer" is made up of "special-purpose and specially configured
computer components." App. Br. 4--5. Appellants point to paragraphs 5, 22,
23, and 56 of the Specification to support their arguments, but these
paragraphs do not explain how the "second remote backend computer"
works or how it operates as a "special-purpose" computer. Rather, the
Specification describes this computer as one that "may utilize multiple
[computer processing units]" and may "run in a text-based environment or a
Windows or Windows-like environment." See Spec. i-f 37, Fig. 1. Thus,
contrary to Appellants' assertions, the Specification does not describe the
"second remote backend computer" as made up of special-purpose and
5
Appeal 2016-008507
Application 14/828, 117
specially configured computer components, but rather, as a general-purpose
computer that includes generic components. As a result, none of the
hardware recited by the claims "offers a meaningful limitation beyond
generally linking 'the use of the [method] to a particular technological
environment,' that is, implementation via computers." Alice 134 S. Ct. at
1291 (quoting Bilski, 561 U.S. at 610-11).
Appellants argue that "by incorporating [pre-calculated price
information] into the claimed system, the Appellant has further improved the
speed at which a computer trading system is able to generate requests for
market transactions, thereby increasing the automatic trading response
time." App. Br. 8; see also Reply Br. 2 (arguing the same). Yet, limiting an
abstract concept of "receiving information, comparing at least a portion of
the information, and manipulating information by generating a request and
transmitting the information by outputting a request and making a
transaction" to a general purpose computer having generic components, such
as the "second remote backend computer" recited in Appellants' claims,
does not make the abstract concept patent-eligible under 35 U.S.C. § 101.
As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent ineligible abstract idea into a patent-
eligible invention." Alice, 134 S. Ct. at 2358; see id. at 2359 (concluding
claims "simply instruct[ing] the practitioner to implement the abstract idea
of intermediated settlement on a generic computer" are not patent eligible);
see also Ultramercial, 772 F.3d at 715-16 (claims merely reciting abstract
idea of using advertising as currency as applied to particular technological
environment of the Internet are not patent eligible); Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir.
2013) (claims reciting "generalized software components arranged to
6
Appeal 2016-008507
Application 14/828, 117
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" are not patent eligible); Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333-34 (Fed. Cir. 2012) ("[s]imply adding a 'computer aided'
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible").
Contrary to Appellants' arguments (see App. Br. 4, 6-7, 9; Reply Br.
2, 4), the claims are neither rooted in computer technology as outlined in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
nor do they seek to improve any type of computer capabilities, such as a
"self-referential table for a computer database" outlined in Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). The "second remote
backend computer" recited in Appellants' claims, at most, "is dedicated
solely to performing certain automated trading functions" that where
traditionally performed by "the backend [computer] equipment" of
conventional trading systems. App. Br. 5 (emphasis omitted) (citing Spec.
i-f 5). "But merely 'configur[ing]' [a] generic computer[] in order to
'supplant and enhance' an otherwise abstract manual process is precisely the
sort of invention that the Alice Court deemed ineligible for patenting." See
Credit Acceptance Corp. v. Westlake Servs., 859 F .3d 1044, 1056 (Fed. Cir.
2017 (alteration in original)).
Because Appellants' claims are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's rejection of these
claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
7
Appeal 2016-008507
Application 14/828, 117
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-37 under 35 U.S.C.
§ 101.
DECISION
We affirm the Examiner's rejection of claims 1-37.
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
8