Ex Parte Singh

Patent Trial and Appeal Board

Mar 9, 2018

13355092 (P.T.A.B. Mar. 9, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/355,092 01/20/2012 Inderdeep Singh PAT.007.US 7177
12684 7590
Lempia Summerfield Katz LLC/CME
20 South Clark Street
Suite 600
Chicago, IL 60603
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
03/13/2018 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):
mail@lsk-iplaw.com
docket-us @ lsk-iplaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte INDERDEEP SINGH1
Appeal 2016-007568
Application 13/355,092
Technology Center 3600
Before JAMES R. HUGHES, ERIC S. FRAHM, and
JAMES W. DEJMEK, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—15, which constitute all the claims
pending in this application. Final Act. 1—2; App. Br. 2.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Chicago Mercantile
Exchange Inc. App. Br. 2.
2 We refer to Appellant’s Specification (“Spec.”) filed Jan. 20, 2012
(claiming benefit of US 61/579,811, filed Dec. 23, 2011); Appeal Brief
(“App. Br.”) filed Jan. 4, 2016; and Reply Brief (“Reply Br.”) filed Aug. 3,
2016. We also refer to the Examiner’s Answer (“Ans.”) mailed June 6,
2016; and Final Office Action (Final Rejection) (“Final Act.”) mailed
Aug. 4, 2015.
Appeal 2016-007568
Application 13/355,092
Appellant’s Invention
The invention relates to apparatuses and methods for publishing
market information. The method includes receiving financial market
information (a market information feed containing current market
information for financial instruments) by a network device from a financial
market center, storing the current market information in the computing
system, establishing an electronic communication link between the network
device and a client device. The electronic communication link determines
when the client device is ready for receiving market information based on
receipt of previously transmitted data. The electronic communication link
also provides a feedback signal to the network device indicative of the
receipt of the previously transmitted data and informs the network device
when the client device is ready to receive market information. The method
then publishes current market information to the client device. Spec, 2,
10-14; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A method implemented within a computing system
for publishing market information relating to a financial
instrument received from a financial market center to a client
device over an electronic network, the method comprising:
receiving by a network device of the computing system
from a financial market center a market information feed
containing current market information for a financial instrument;
storing with the computing system current market
information received from the market information feed;
establishing with the computing system an electronic
communication link between the network device and a client
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device, said electronic communication link being configured to
determine when the client device is ready for receiving market
information based on receipt thereby of previously transmitted
data and provide a feedback signal to the network device
indicative of the receipt of the previously transmitted data and
for informing the network device when the client device is ready
to receive market information; and
publishing with the computing system current market
information to the client device when, based on the receipt of the
feedback signal, the electronic communications link has
determined that the client device is ready to receive market
information.
Rejections on Appeal
1. The Examiner rejects claims 1—15 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter.
2. The Examiner rejects claims 1—3, 5, 6, and 13—15 under
35 U.S.C. § 103(a) as being unpatentable over Ritter et al. (US
2011/0270732 Al, published Nov. 3, 2011) (“Ritter”) and Lee et al. (US
2008/0279143 Al, published Nov. 13, 2008) (“Lee”).
3. The Examiner rejects claims 4 and 7—12 under 35 U.S.C.
§ 103(a) as being unpatentable over Ritter, Lee, and Morris (US
2008/0077653 Al, published Mar. 27, 2008).
ISSUES
Based upon our review of the record, Appellant’s contentions, and the
Examiner’s findings and conclusions, the issues before us follow:
1. Did the Examiner err in rejecting claims 1—15 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter?
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2. Did the Examiner err in finding that Ritter and Lee collectively
would have taught or suggested
[ajcommunication link being configured to determine when the
client device is ready for receiving market information based on
receipt thereby of previously transmitted data and provide a
feedback signal to the network device indicative of the receipt of
the previously transmitted data and for informing the network
device when the client device is ready to receive market
information
(claim 1) within the meaning of Appellant’s claim 1 and the commensurate
limitations of Appellant’s claims 7 and 13?
ANALYSIS
The 35 U.S.C. § 101 Rejection
Appellant argues independent claims 1, 7, and 13 together as a group
with respect to the § 101 rejection. See App. Br. 5—8. We select
independent claim 1 as representative of Appellant’s arguments with respect
to claims 1-15. 37 C.L.R. § 41.37(c)(l)(iv)(2015).
The Examiner rejects the claims as being directed to patent-ineligible
subject matter in that “[t]he claims ... are directed to an abstract idea of
publishing market information relating to a financial instrument” and the
elements of the claims “are well-understood, routine, and conventional
elements that amount to no more than implementing the abstract idea with a
computerized system” (Ans. 15). See final Act. 3—5; Ans. 14—16.
Appellant contends that claims are not directed to an abstract idea because
“the claimed invention is not a mere statement of a general concept,” “the
Examiner has not shown ... by objective evidence . . . that the claims are
directed to, nor do they pre-empt or otherwise tie up a fundamental
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economic practice” (App. Br. 5), “Appellant’s claims do . . . entirely
preempt or tie up . . . mere transmission of market information over a
network” (App. Br. 6), and instead “are directed to a specific, novel and
patentable communications protocol which improves the efficiency of the
transmission of data over a network” (App. Br. 6). See App. Br. 5—8; Reply
Br. 1-3.
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77—80 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct.
at 2355. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts” {id.), e.g., to an abstract
idea. For example, abstract ideas include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355—57. If
the claims are not directed to an abstract idea, the inquiry ends. Otherwise,
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the inquiry proceeds to the second step where the elements of the claims are
considered “individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 78, 79). This second step is described as “a search for an “‘inventive
concept’”—i.e., an element or combination of elements that is ‘. . .
significantly more than . . . the [ineligible concept] itself.’” Id. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 72—73).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Alice Step 1 Analysis
Turning to the first step of the eligibility analysis, “[t]he first step in
the Alice inquiry . . . asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an ‘abstract idea’ for which computers are invoked merely
as a tool.” Enfish, 822 F.3d at 1335—36. “The abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting
O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)). “We therefore look
to whether the claims . . . focus on a specific means or method that improves
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the relevant technology or are instead directed to a result or effect that itself
is the abstract idea and merely invoke generic processes and machinery.”
McRO, 837 F.3d at 1314.
The Examiner finds claim 1 is directed to the abstract idea of
“publishing market information relating to a financial instrument.” Ans. 15.
The Examiner further explains that the claims are similar to claims
previously found to be directed to abstract ideas — “publishing market
information relating to a financial instrument, as recited in the independent
claims ... is similar to an idea of itself found by the courts to be abstract
ideas (e.g., using categories to organize, store and transmit information in
Cyberfone).” Ans. 14—15 ; see Final Act. 3—5; Ans. 14—16. Conversely, the
Appellant simply attacks the Examiner’s findings, alleging the Examiner has
not properly mapped the abstract concept to specific precedent, without
actually addressing any of the Examiner’s findings. See App. Br. 5—6; Reply
Br. 1—4. We agree with the Examiner that Appellant’s claim 1 (and the
other pending claims) are directed to a patent-ineligible abstract idea.
Instead of using a fixed definition of an abstract idea and analyzing
how claims fit (or do not fit) within the definition, “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.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)). As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
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subject matter.” Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
Here, Appellant’s claims generally, and independent claim 1, 7, and
13 in particular, relate to publishing (streaming) financial information. See
Abstract; Spec. 12. This is consistent with how Appellant describes the
claimed invention. See Spec, 2, 10. Contrary to Appellant’s assertions,
the present claims are analogous to a number of cases in which courts have
identified similar claims as encompassing abstract ideas (see App. Br. 5;
Reply Br. 1^4).
Our reviewing court has held that abstract ideas include presenting or
displaying (i.e., publishing) information. See Elec. Power, 830 F.3d at 1354
(finding “gathering and analyzing information of a specified content, then
displaying the results,” to be directed to an abstract idea).
Here, the publishing market information is similar to the abstract idea
of collecting, analyzing, and manipulating information discussed in Elec.
Power. Additional analogous cases where the Federal Circuit has found
claims involving no more than data collection, manipulation, and/or display
to be directed to abstract ideas include OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015) (offer-based
price optimization), Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring information presented to a
user based on particular information), Versata Development Group v. SAP
Am., Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015) (“determining a price, using
organizational and product group hierarchies”), Digitech Image
Technologies, LLC v. Electronics For Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014) (employing “mathematical algorithms to manipulate
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existing information to generate additional information”), and Accenture
Global Services, GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344—
46 (Fed. Cir. 2013) (generating tasks based on rules in response to events).
Thus, we agree with the Examiner that the claims are directed to an abstract
idea of publishing market information. Notably, this characterization is
consistent with Appellant’s description of the claimed invention. See Spec.
12.
Alice Step 2 Analysis
Having found Appellant’s claims are directed to an abstract concept
under Alice’s step 1 analysis, we next address whether the claims add
significantly more to the alleged abstract idea. As directed by our reviewing
Court, we search for an ‘“inventive concept’ sufficient to ‘transform the
nature of the claim into a patent-eligible application.’” McRO, 837 F.3d at
1312 (quoting Alice, 134 S. Ct. at 2355). The implementation of the abstract
idea involved must be “more than performance of ‘well-understood, routine,
[and] conventional activities previously known to the industry.’” Content
Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 116 F.3d 1343,
1347-48 (Fed. Cir. 2014) (alteration in original) (quoting Alice, 134 S. Ct. at
2359). The “inventive concept” “must be significantly more than the
abstract idea itself, and cannot simply be an instruction to implement or
apply the abstract idea on a computer.” Bascom Global Internet Services,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
Here, the Examiner found that Appellant’s claims do not add
significantly more. See Final Act. 3—5; Ans. 14—16. Appellant, on the other
hand, contends the claims do add significantly more, similar to the claims in
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)
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(see App. Br. 8; Reply Br. 1 4) and also contends the claims “are directed to
a specific, novel and patentable communications protocol which improves
the efficiency of the transmission of data over a network,” “at least solves
the technical problem of reducing data communications network congestion
and overloading of recipient devices,” and do not completely preempt the
concept of publishing financial information (App. Br. 6).
With respect to Appellant’s DDR Holdings arguments, Appellant
misconstrues DDR Holdings. In DDR Holdings, the court held that a claim
may amount to more than an abstract idea recited in the claims when it
addresses and solves problems only encountered with computer technology
and online transactions, e.g., by providing (serving) a composite web page
rather than adhering to the routine, conventional functioning of Internet
hyperlink protocol. See DDR Holdings, 773 F.3d at 1257—59. In contrast,
claim 1 performs a process that collects and publishes financial market
information when a client device acknowledges receipt of previously
received data, utilizing conventional computer networks and systems. See
Ans. 15—16; Spec. Tflf 2—6, 10, 17; cf App. Br. 6—8; Reply Br. 1^4. Despite
Appellant’s arguments to the contrary, nothing in the claim recites a “novel”
“communications protocol” (supra), the collection and streaming of market
data (albeit based on a determination that a client device has acknowledged
receipt of previous data), is not a solution to a technical problem as
discussed in DDR Holdings. Conditionally streaming data is a commercial
solution to an efficiency (congestion) problem, not a technical solution. This
commercial solution may be assisted using a general purpose computer to
perform the data collection, analysis, and manipulation processes, but does
not arise specifically in the realm of computer networking or improve how
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the computer itself functions. As we previously explained, the instant claims
are more akin to the claims for analyzing information found to be abstract in
Elec. Power, 830 F.3d at 1353.
With respect to Appellant’s preemption arguments, “[wjhile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015)); see also OIP Techs., 788 F.3d at 1362—63 (“[T]hat 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.”). Further,
“[wjhere a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d
at 1379.
We agree with the Examiner that the additional limitations, separately,
or as an ordered combination, do not provide meaningful limitations (i.e., do
not add significantly more) to transform the abstract idea into a patent
eligible application. See e.g., Ans. 15—16. Indeed, the claim merely recites
processes for increasing efficiency and reducing network congestion by
conditionally streaming data. Such steps are all routine and conventional
and well-understood computer functions (i.e., mathematical operations) of a
general processor. The Specification supports this view in discussing the
processes implemented in software which operates on generic computers to
perform the recited data manipulation steps. See Spec. H 2, 10. “[T]he use
of generic computer elements like a microprocessor” to perform
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conventional computer functions “do not alone transform an otherwise
abstract idea into patent-eligible subject matter.” FairWarning IP, 839 F.3d
at 1096 (citing DDR Holdings, 773 F.3d at 1256).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner’s rejection under § 101 of independent claims 1, 7, and 13, and
also dependent claims 2—6, 8—12, 14, and 15, which are not argued
separately.
The 35 U.S.C. § 103(a) Rejection
Appellant argues independent claims 1,7, and 13 and dependent
claims 2—6, 8—12, 14, and 15 together as a group with respect to the § 103(a)
rejection. See App. Br. 13—15. We select independent claim 1 as
representative of Appellant’s arguments with respect to claims 1—15.
37 C.F.R. § 41.37(c)(l)(iv).
The Examiner rejects independent claim 1 as being obvious in view of
Ritter and Lee. See Final Act. 5—7; Ans. 16—18. Appellant contends Ritter
and Lee do not teach the disputed features of claim 1. See App. Br. 8—13;
Reply Br. 4—5. Specifically, Appellant contends that “Ritter merely
discloses sending [market] data to the workstation upon request, i.e. when
the user of the workstation selects a tradable item via the graphic user
interface” (App. Br. 9). See App. Br. 8—10. Appellant further contends Lee
describes a wireless handshake protocol (App. Br. 13) — specifically, a
Time Division Duplexing-Orthogonal Frequency Division Multiple Access
(TDD-OFDMA) frame structure (App. Br. 11—12) — in which “the receiver
acknowledges correct receipt of data using a feedback signal and, based
thereon, the transmitter immediately either sends the next data or retransmits
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the previously sent data” (App. Br. 13); however, Lee does not describe
utilizing “the feedback signal to indicate to the transmitter that [the receiver]
is ready to receive the next data” or “that the receiver contemplates whether
it is, in fact, ready to receive that data, e.g. because it is busy or otherwise
still processing previously received data” (App. Br. 13). Appellant also
contends that one of ordinary skill in the art would not have combined Ritter
and Lee, absent hindsight and, even if the references are combined, Ritter
and Lee do not teach the recited limitation —that is, publishing market
information to the client device when client device is ready to receive the
market information, based on the received feedback signal. See App. Br. 13.
Appellant persuades us of error in the Examiner’s obviousness
rejection for the reasons set forth by Appellant {supra). The Examiner
provides no clear explanation of how Ritter and Lee would be combined to
provide feedback on the readiness of a receiver to receive streamed market
data and transmitting the market data under such a condition. Simply
pointing to Ritter for teaching market data transmission and Lee for
providing feedback in a (wireless) communication network (a “disparate
technology” (App. Br. 13)) is insufficient. Because the Examiner has not
fully developed the record to establish how Ritter and Lee teach or suggest
the disputed limitation, we find speculation would be required to affirm the
Examiner on this record.
We decline to engage in speculation. “A rejection . . . must rest on a
factual basis . . . .” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The
Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not. . . resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.” Id.
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With respect to independent claim 7, rejected as being obvious in
view of Ritter, Lee, and Morris (see Final Act. 9—14), the Examiner has not
established on this record that the additionally cited Morris reference
overcomes or cures the aforementioned deficiencies of the Ritter and Lee
combination.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Ritter and Lee teach the disputed limitations
of Appellant’s claim 1. Independent claims 7 and 13 include limitations of
commensurate scope. Dependent claims 2—6, 8—12, 14, and 15 depend on
claims 1,7, and 13, respectively, and stand with their respective independent
claims. Accordingly, we reverse the Examiner’s obviousness rejections of
claims 1—15.
CONCLUSIONS
Appellant has not shown that the Examiner erred in rejecting claims
1-15 under 35 U.S.C. § 101.
Appellant has shown that the Examiner erred in rejecting claims 1—15
under 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
DECISION
We affirm the Examiner’s rejection of claims 1—15.
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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
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