Ex Parte Winter et al

Patent Trial and Appeal Board

Oct 22, 2018

13920041 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/920,041 06/17/2013
128144 7590 10/24/2018
Rimon, P.C.
One Embarcadero Center
Suite 400
San Francisco, CA 94111
FIRST NAMED INVENTOR
Thomas Winter
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.
13-30020-US 8892
EXAMINER
KANG, IRENE S
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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):
uspto@rimonlaw.com
eofficeaction@appcoll.com
docketing.rimonlaw@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS WINTER, JOHANNES MULLER,
ALEXANDER MARTIN, SUSANNE PAPE,
ANDREA PETER, and SEBASTIAN POKUTTA
Appeal2018-003506
Application 13/920,041
Technology Center 3600
Before JOSEPH L. DIXON, JENNIFER S. BISK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-003506
Application 13/920,041
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
The claims are directed to a method and system for performing an
opening auction of a derivative by,
determining execution states, market clearing prices and bid and
ask prices for futures products at an opening auction. A plurality
of orders is received, each order is associated with a price limit,
a quantity, a participant and a futures product. For each order a
quantity vector is determined, is based on the futures product
associated with the order. Further, for each order a price vector
is determined, based on the price limit and the futures product
associated with the order. Then, an execution state vector is
determined by using the determined price and quantity vectors to
maximize an objective function subject to constraints. Market
clearing prices and best, not executed, buy and sell orders are
determined for each product using the execution state vector.
Finally the bid and ask prices are given by the price limits of the
best, not executed, buy and sell orders.
(Abstract). Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method for determining an
execution state vector, market clearing prices and bid and ask
prices for futures products at an opening auction, wherein a
futures product is one of a sell futures contract, a buy futures
contract, a sell futures contract combination and a buy futures
contract combination, the method comprising:
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Application 13/920,041
receiving, by at least one computing device, a plurality of
orders, wherein each order is associated with a price limit, a
quantity, a participant and a futures product;
determining, by at least one computing device, for each
order a quantity vector based on the futures product associated
with the order, wherein the quantity vector vanishes at all but two
entries when the futures product is a buy futures contract
combination or a sell futures contract combination;
determining, by at least one computing device, for each
order a price vector based on the price limit associated with the
order and the futures product associated with the order;
determining, by at least one computing device, an
execution state vector by using the determined price and quantity
vectors to maximize an objective function subject to constraints,
wherein the objective function is based on an executed volume
and wherein at least one of the constraints depends on the
determined quantity vectors;
determining, by at least one computing device, market
clearing prices and best, not executed, buy and sell orders for
each futures product using the execution state vector; and
outputting, by at least one computing device, the
determined execution state vector, the determined market
clearing prices, and bid and ask prices for each futures product,
the bid and ask prices being based on the best, not executed, buy
and sell orders of the respective futures product.
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Appeal2018-003506
Application 13/920,041
REJECTION 1
The Examiner made the following rejection:
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in this case. 2
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. That provision "'contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). According to the Supreme Court,
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
1 The Examiner withdrew the obviousness rejection of claims 1, 2, 6, 8, 10,
14, 16, and 19 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Dreyer and Stevens. (Ans. 7).
2 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... If so, we then ask,
"[ w ]hat else is there in the claims before us?" ... To answer
that question, we consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application .... We have
described step two of this analysis as 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." ( citations omitted).
Alice, 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and
the Alice step-two inquiry as looking more precisely at what the claim
elements add-whether they identify an "inventive concept" in the
application of the ineligible matter to which the claim is directed. See
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed.
Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).
According to the Federal Circuit, "[t]he second step of the Alice test is
satisfied when the claim limitations 'involve more than performance of
'well-understood, routine, [and] conventional activities previously known
to the industry."' Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir.
2018) (quoting Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) and Alice, 134
S. Ct. at 2359).
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In this case, the Examiner finds,
The elements of the instant process, when taken alone, each
execute in a manner routinely and conventionally expected of
these elements. The elements of the instant process, when taken
in combination, together do not offer substantially more than the
sum of the functions of the elements when each is taken alone.
That is, the elements involved in the recited process undertake
their roles in performance of their activities according to their
generic functionalities which are well-understood, routine and
conventional. The elements together execute in routinely and
conventionally accepted coordinated manners and interact with
their partner elements to achieve an overall outcome which,
similarly, is merely the combined and coordinated execution of
generic computer functionalities which are well-understood,
routine and conventional activities previously known to the
industry.
(Final Act. 6-7). The Examiner maintains,
The claim as a whole, does not amount to significantly
more than the abstract idea itself. This is because the claim does
not affect an improvement to another technology or technical
field; the claim does not amount to an improvement to the
functioning of a computer system itself; and the claim does not
move beyond a general link of the use of an abstract idea to a
particular technological environment.
The claim merely amounts to the application or
instructions to apply the abstract idea (i.e. determining an
execution state vector, market clearing prices and bid and ask
prices for futures products at an opening auction) on a computer,
and is considered to amount to nothing more than requiring a
generic computer system (e.g.[,] a computer system comprising
a processor, a memory, and a program stored in memory) to
merely carry out the abstract idea itself. As such, the claim, when
considered as a whole, is nothing more than the instruction to
implement the abstract idea (i.e.[,] determining an execution
state vector, market clearing prices and bid and ask prices for
futures products at an opening auction) in a particular, albeit
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well-understood, routine and conventional technological
environment.
(Final Act. 8).
In the Appeal Brief, Appellants argue with respect to the Alice step-
two analysis,
The Examiner has failed to provide any reasoning or
evidence on the record regarding how any of claims relate to an
abstract idea. Other than the conclusory comments above which
do not take into account the claims as a whole. To simply assert
that the claimed invention relates to an abstract idea without
providing the required reasoning and evidence on the record is a
clear oversimplification of the recited claims, requires a selective
reading of the claim language, and disregards the plainly recited
claim limitations.
(App. Br. 7). Appellants further contend,
The statement that "specific details of determining an
execution state vector, market clearing prices and bid and ask
prices for futures products at an opening auction recited in the
independent claim and dependent claims do not change the fact
that the claim is drawn to an abstract idea" also has no analytical
support. These steps are an ordered series of steps that solve a
problem.
(App. Br. 8). Appellants further contend, "The Examiner's assertion
regarding generic computer hardware cannot take the place of analysis of the
express claim language." (App. Br. 8). Additionally, Appellants argue,
"There is no analysis of the ordered combination of claim elements." (App.
Br. 10).
In response to Appellants' argument that the Examiner provides no
support or evidence to show that the claimed sequence of steps was well-
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understood, routine, and conventional, the Examiner maintains that all the
steps after the receiving step are directed to the abstract idea of instructing
how to determine an execution state vector. (Ans. 8). The Examiner further
maintains that the claims do not amount to "significantly more" than the
judicial exception and it do not improve the computer-based technology.
(Ans. 8-9). The Examiner interprets the claims
as applying an abstract idea on a computer or conventional
computer implementation. The limitations of determining data
and using a computer to perform a calculation with respect to
determining an execution state vector, market clearing prices and
bid and ask prices for futures products at an opening auction are
not interpreted as significantly more, rather routine, well
understood and conventional steps of performing a calculation,
which does not improve functions of a computer.
(Ans. 9).
Appellants further argue "[ w ]hen addressing the second step of the
Alice test, the Examiner presents merely conclusion, without analysis or
rationale." (Reply Br. 3). Appellants contend
[ fJor example, the Examiner states, "( t )he limitations of
determining data and using a computer to perform a calculation
with respect to determining an execution state vector, market
clearing prices and bid and ask prices for futures products at an
opening auction are not interpreted as significantly more, rather
routine, well understood and conventional steps of performing a
calculation, which does not improve functions of a computer."
Page 9 of the Answer. There is no explanation of why the
Examiner arrives at this conclusion, only the mere conclusion.
(Reply Br. 3). Appellants argue that all of the steps except the receiving step
are not well-known individually or in the combination and that the Examiner
has merely concluded that all of the steps are well known. (Reply Br. 5; see
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also Ans. 4 "The elements together execute in routinely and conventionally
accepted coordinated manners and interact with their partner elements to
achieve an overall outcome."). Appellants finally contend "[t]he claimed
features ... are not well known individually or in combination and the
Examiner cannot change that fact merely by concluding as such." (Reply
Br. 5).
We agree with Appellants that the Examiner's assertion contradicts
the case law, as the Berkheimer court held"[ w ]hether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination." Berkheimer, 881 F.3d at 1369.
Therefore, we are constrained by the record to reverse the Examiner's
rejection of claims 1-20 on procedural grounds.
CONCLUSION
The Examiner erred in rejecting claims 1-20 based upon a lack of
patent-eligible subject matter under 35 U.S.C. § 101.
DECISION
For the above reasons, reverse the Examiner's rejection of claims 1-
20 based upon a lack of patent eligible subject matter under 35 U.S.C. § 101.
REVERSED
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