Glinberg, Dmitriy et al.

Patent Trials and Appeals Board

Oct 2, 2019

13864851 - (R) (P.T.A.B. Oct. 2, 2019)

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.
13/864,851 04/17/2013 Dmitriy Glinberg 4672-09720FUS 6618
12684 7590 10/02/2019
Lempia Summerfield Katz LLC/CME
20 South Clark Street
Suite 600
Chicago, IL 60603
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
docket-us@lsk-iplaw.com
mail@lsk-iplaw.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DMITRIY GLINBERG, TAE S. YOO,
DALE A. MICHAELS, and EDWARD GOGOL1
____________________

Appeal 2017-010970
Application 13/864,851
Technology Center 3600
____________________

Before ST. JOHN COURTENAY III, ELENI MANTIS MERCADER, and
JOYCE CRAIG, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge JOYCE CRAIG

Opinion Dissenting filed by Administrative Patent Judge
ELENI MANTIS MERCADER

CRAIG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 According to Appellants, the real party in interest is Chicago Mercantile
Exchange Inc. App. Br. 2.
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Appellants request rehearing of the decision entered July 1, 2019
(“Decision”) affirming the rejection of claims 1–7 and 9–19 under 35 U.S.C.
§ 101. We deny the requested relief.
ANALYSIS
Requests for Rehearing are limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See
37 C.F.R. § 41.52. A request for rehearing “‘must state with particularity
the points believed to have been misapprehended or overlooked by the
Board”’ and “must specifically recite ‘the points of law or fact which
appellant feels were overlooked or misapprehended by the Board.”’ Ex
parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting
MPEP § 1214.03).
Appellants argue in the Request for Rehearing that “the Majority has
misapprehended or otherwise overlooked the applicability of Prong Two of
the USPTO’s Revised Patent Subject Matter Eligibility Guidance, i.e.
whether the claim recites additional elements that integrate the judicial
exception into a practical application.” Reh’g Req. 2–3. In particular,
Appellants argue that the “means for creating” limitation recited in claim 1
“is not a fundamental economic practice,” and “thus is not an abstract idea
under Step 2A, Prong 1.” Id. at 3–4. Appellants further argue that the
“means for creating” step “is not fundamental to the analysis of risk of a
portfolio of derivative products.” Id. at 4.
Appellants’ arguments based on the Board’s Revised Guidance are
timely, as the Revised Guidance went into effect on January 7, 2019, after
Appellants’ Reply Brief was filed and before the Decision issued. We are
not persuaded by Appellants’ arguments, however. The majority opinion in
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the Decision did not determine that the “means for creating” limitation
standing alone is a fundamental economic practice. Rather, the majority
opinion explained why the “means for creating” step is an operation that
would generally occur when analyzing the risk of a portfolio of derivative
products and, thus, is part of the fundamental economic practice recited in
the claim. See Decision 6. Moreover, Appellants’ argument that the “means
for creating” limitation is not fundamental to analyzing the risk of a portfolio
of derivative products depends on unsupported attorney argument, which is
not persuasive.
Appellants further argue that the recited “means for grouping” and
“means for assigning” limitations are not part of the fundamental economic
practice, but instead are “additional elements” that integrate the fundamental
economic practice into a practical application under Step 2A, Prong 2.
Reh’g Req. 4. Appellants reargue that “the claimed invention solves the
technical problem of product offset computation, i.e. by providing a means
by which such computations may be performed ahead of time and
selectively avoided at the time the portfolio is analyzed.” Id. at 6. This
time, Appellants’ argument rests on the reasoning set forth in the dissenting
opinion in the Decision. See id. at 6–7. Appellants also rely on Ex parte
Smith, Appeal 2018-000064, 2019 WL 764497 (PTAB Feb. 1, 2019)
(informative).
Smith is an informative decision that, although not binding authority,
nonetheless provides instructive guidance and Board norms on patent
eligibility issues. See PTAB Standard Operating Procedure 2, Rev. 10 § III,
at 11. In Smith, however, the claimed timing mechanisms and associated
temporary restraints on execution of trades were additional elements that
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provided a specific technological improvement over prior derivative trading
systems. See Smith, 2019 WL 764497, at *5. Here, consistent with the
Revised Guidance, the recited determinations are not additional elements
beyond the identified abstract idea because they are part of the abstract idea.
Appellants’ contention that the recited determinations are analogous
to additional elements of Smith that integrated a recited judicial exception
into a practical application (Reh’g Req. 3–7) is unpersuasive. Those
determinations are part of the abstract idea, as noted above and in our
Decision. Therefore, Appellants’ reliance on Smith is not germane to the
holding in our decision and is, therefore, unpersuasive.
The Decision already addressed Appellants’ “improvement” argument
made in the briefs. See Decision 9–13. A request for rehearing may not
rehash arguments originally made in the briefs. A request for rehearing is
not an opportunity to merely express disagreement with a decision.
In summary, we grant the Request to the extent that we have
reconsidered the record. The Request for Rehearing is denied.

REHEARING DENIED

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DMITRIY GLINBERG, TAE S. YOO, DALE A.
MICHAELS, and EDWARD GOGOL
____________________

Appeal 2017-010970
Application 13/864,851
Technology Center 3600
____________________

MANTIS MERCADER, Administrative Patent Judge, dissenting.
I respectfully dissent from the majority’s opinion denying the request
for rehearing of claims 1–7 and 9–19 under 35 U.S.C. § 101.
I continue to respectfully disagree with the majority’s determination
that the “means for grouping together into a single asset the products and/or
the positions on products within the portfolio that are common to at least one
of the one or the plurality of predefined sets” (i.e., “means for grouping”)
and the “means for assigning to the single asset at least a portion of the
offset value associated with the at least one of the one or the plurality of
predefined sets that holds the products and/or the positions on products that
are common to the single asset” (i.e., “means for assigning”) are part of the
abstract idea claimed. See claim 1 and Dec. 6–7. Rather, I agree with
Appellants that the “means for grouping” and the “means for assigning”
limitations recite additional elements integrating the abstract idea of
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fundamental economic practice into a practical application under Step 2A,
Prong 2.
I agree with Appellants that the recited determinations are analogous
to the additional elements of Smith that integrated a recited judicial
exception into a practical application. See Reh’g Req. 3–7. I disagree with
the Majority’s conclusion that those determinations are part of the abstract
idea. See Decision Req. Reh’g 4.
Similar to Smith the current claimed invention improves prior art
trading systems because the claimed “means for grouping” and “means for
assigning” solves the problem of product offset computation by pre-defining
and pre-assigning offsets such that an offset need not be calculated for a
product but instead assigned to the product based on its membership in a set
having the assigned offset, and thereby reducing the computational burden
on the computational resources leading to a technical field improvement in
electronic trading. See App. Br. 4, 5–6 (citing ¶¶ 378–379 and 383) and Ex
parte Smith, Appeal 2018-000064, 2019 WL 764497 (PTAB Feb. 1, 2019)
(informative).
The steps of “determining whether any of the products and/or the
positions on products within the portfolio are common to any of the one or
the plurality of predefined sets” and “grouping together into a single asset
the products and/or the positions on products within the portfolio that are
common to at least one of the one or the plurality of predefined sets,” are
operations that do not generally occur when analyzing the risk of a portfolio
of derivative products. This is because unlike the conventional Theoretical
Intermarket Margin System (i.e., TIMS) as described in paragraph 42 of
Appellants’ Specification, which addresses combining the risk of closely
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related products into integrated portfolios by calculating risk exposure at
different account levels for different account types, the current invention
avoids these calculations as claimed by creating predefined sets wherein
each set has an associated offset value and grouping together into a single
asset the products within the portfolio that are common to at least one of the
predefined sets as required by claim 1. Cf. Spec. ¶ 42 and Spec. ¶¶ 386, 387;
also see Figs. 2, 3.
The extensive calculations and process of TIMS for assessing risk in
portfolios alluded in paragraph 42 are explained in more detail in paragraphs
43–48 of the Specification. See Spec. ¶ 43–48. In other words, the problem
solved by the claimed invention is not solved through mathematical
operations but rather through this pre-defining and pre-assigning offsets.
The Specification explicitly states that “[t]he disclosed embodiments allow
for the flexibility of assigning a known offset to a set of products quickly
and easily without significant computational efforts.” See Spec. ¶ 379. As
stated in Enfish, the “conclusion that the claims are directed to an
improvement of an existing technology is bolstered by the specification’s
teachings that the claimed invention achieves other benefits . . . such as
increased flexibility, faster search times, and smaller memory requirements.”
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Furthermore, the Majority has not provided any supporting evidence
for its assertion that, the last limitation of claim 1 reciting, “assigning to the
single asset at least a portion of the offset value associated with the at least
one of the one or the plurality of predefined sets that holds the products
and/or the positions on products that are common to the single asset” is an
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operation that would occur when analyzing the risk of a portfolio of
derivative products. See Dec. 7.
Accordingly, the limitations of:
[c] means for grouping together into a single asset the
products and/or the positions on products within the portfolio
that are common to at least one of the one or the plurality of
predefined sets; and
[d] means for assigning to the single asset at least a
portion of the offset value associated with the at least one of the
one or the plurality of predefined sets that holds the products
and/or the positions on products that are common to the single
asset.
as recited in claim 1 serve to integrate the abstract idea into a practical
application.
The claims as written constitute patent eligible subject matter
consistent with the analysis in Smith. Accordingly, I respectfully dissent
from the majority’s opinion denying the request for rehearing for claims 1–7
and 9–19 under 35 U.S.C. § 101.