Ex parte Wolf

• Decision Date: 29 May 2018
• Docket Number: Appeal 2016-007431,416[,Application 13/534
• Parties: Ex parte BRIAN M. WOLF, JOHN F. CURRAN, JAMES W. FARRELL, PAUL J. CALLAWAY, BARRY L. GALSTER, ANDREW MILNE, GIUSEPPE SCIMECA, PEARCE PECK-WALDEN, and JAMES WILCOX Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte BRIAN M. WOLF, JOHN F. CURRAN, JAMES W. FARRELL, PAUL J. CALLAWAY, BARRY L. GALSTER, ANDREW MILNE, GIUSEPPE SCIMECA, PEARCE PECK-WALDEN, and JAMES WILCOX Technology Center 3600

Appeal 2016-007431

Application 13/534, 416[^1]

United States Patent and Trademark Office, Patent Trial and Appeal Board

May 29, 2018

FILING DATE: 06/27/2012

Before: ROBERT E. NAPPI, CATHERINE SHIANG, and SCOTT B HOWARD, Administrative Patent Judges.

DECISION ON APPEAL

HOWARD, ADMINISTRATIVE PATENT JUDGE.

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1, 3, 9-14, 16, and 22-27, which constitute all of the claims pending in this application. Claims 2, 4-8, 15, 17-21, and 28-30 have been cancelled. See App. Br. 12-14, 16 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

THE INVENTION

According to Appellants, the disclosed and claimed invention "relates to software, systems and methods for electronic trading in a commodities exchange, derivatives exchange or similar business involving tradable items where orders from buyers are matched with orders from sellers." Spec. ¶ l.[^2]

Claim 1, reproduced below, is illustrative of the claimed subject matter:

1. A computer implemented method for improving the efficiency of a trading system, the system comprising a processor, the method comprising:

receiving, by the processor from at least one market participant of a plurality of market participants, a first order for a first instrument and a second order for a second instrument, the first and second orders having a relationship there between from which at least a third order for a third instrument may be implied;

selectively generating, by the processor, the implied third order based on the first and second orders; and

preventing by the processor, the generation of the implied third order when the best bid price in the market for the third instrument is within a threshold number of price ticks of the best ask price in the market for the third instrument, when a delivery month of the third instrument is a defined delivery month, when a delivery month for the third instrument is the current month, when a likelihood of receiving an order, at a better price with respect to a resting counter order thereto, for the third instrument satisfying the relationship between the first and second orders from one of the plurality of market participants exceeds a threshold, and/or when the implied third order will not improve a spread between a best bid price and a best ask price in the market for the third instrument and otherwise making the generated implied third order available in a market for the third instrument for trading by the plurality of market participants.

REFERENCES

The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is:

Milne ("Milene '633")

US 2010/0174633 A1

July 8, 2010

Milne ("Milne '536")

US 2011/0066536 A1

Mar. 17, 2011

REJECTIONS

Claims 1, 3, 9-14, 16, and 22-27 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2-6; Adv. Act. 2-6.

Claims 1, 3, 9-12, 14, 16, 21-25, and 27 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Milne '633. Final Act. 7-9; Adv. Act. 6.

Claims 13 and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Milne '633 in view of Milne '536. Final Act. 10-11.

ANALYSIS

We have reviewed the Examiner's rejection in light of Appellants' arguments that the Examiner erred. In reaching this decision, we have considered all evidence presented and all arguments made by Appellants.[^3] We are not persuaded by Appellants' arguments regarding the pending claims. Instead, we agree with and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2-11); and (2) the reasons and rebuttals set forth in the Advisory Action and the Examiner's Answer in response to Appellants' arguments (Adv. Act. 2-6; Ans. 2-14). We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments for emphasis as follows.

I. Section 101 Discussion

A. Appellants' Arguments

Appellants argue because the Examiner did not rely on objective evidence and the claims do not preempt a fundamental business practice, the Examiner erred in determining the claims are directed to an abstract idea:

In particular, the Examiner has not shown, e.g. by objective evidence, and a person of ordinary skill in the art would not find, that the claims are directed to, nor do they pre-empt or otherwise tie up a fundamental economic practice, such as the operation of an economic market to buy and sell, nor directed to methods of organizing human activities, an idea in and of itself or a mathematical relationship or formula.

App. Br. 4-5; see also Reply Br. 4 ("Further, the claimed invention does not pre-empt all use of an abstract idea but instead recite a specific and discrete implementation.").

Instead, according to Appellants, the claims are directed to a patentable system for improvements in the "technical field of transaction processing and risk management by reducing transactional load on the system." Reply 5. The claims are not directed to "a routine, a long standing business practice nor conventional activity previously known in the industry, or a generic computerization thereof and, instead, "[t]he claimed system at least solves the technical problem of reducing transactional load of resource intensive operations." Id.; see also Reply Br. 2 ("Appellants submit that the combination of elements in Appellants' claims perform functions which are not merely generic and at least some of the problems solved by Appellants' invention are specifically rooted in technology, specifically in electronic transaction processing systems where unnecessary transactions consume limited available processing resources.").

Appellants further argue that the pending claims are similar to those found patent-eligible in DDR[^4] and Enfish.[^5] Reply Br. 2-3. Specifically, Appellants argue the pending claims are "directed to solving a transaction/data processing-centric problem. As with the invention of DDR, Appellants' claims do not generically recite 'use of a communications network' to perform a business practice, but instead recites a specific way to restrict the number of open/pending transactions of a given participant." Id. at 2. Appellants further argue the "combination of steps recited show that the claim is not to an abstract idea, but rather that the steps impose meaningful limits that allow for evaluation of the transactional environment and selective prevention of transaction generation, thereby minimizing wasted computations resources and improving the overall efficiency of the system." Id. at 3 (citing Spec. ¶ 7).

Appellants further argue that even if the claims are directed to an abstract idea, the claims amount to something more than the abstract idea. See App. Br. 5-8; Reply Br. 1-4. Specifically, according to Appellants, "the claimed invention solves the technical problem of devoting significant computational resources to the calculating implied orders when some of those calculations may be unnecessary." App. Br. 6. Appellants further contend that "[t]he claimed invention solves this problem via novel evaluation of the transactional environment and selective prevention of transaction generation, thereby minimizing wasted computations resources and improving the overall efficiency of the system." Id. Thus, Appellants argue, "[t]he claims include meaningful limitations that are 'other than what is well-understood, routine and conventional in the field' and do not seek to monopolize the exception." Id. at 7.

B. Examiner's Determinations and Conclusions

Applying the two-step Alice/Mayo[^6] framework, the Examiner concludes the claims are directed to patent-ineligible subject matter. See Final Act. 2-7; Adv. Act. 2-6; Ans. 2-12. Specifically, the Examiner determines that "the claim is directed to suppression of implied contract generation, which is a fundamental economic practice and therefore an abstract idea." Final Act. 2. The Examiner further determines "that the courts have recently found claims drawn to concepts involving human activity relating to commercial practices ineligible" and that pending claims, which are directed to managing market data, "is similar to the commercial practices that have been found by the courts to be abstract ideas." Id. at 2- 3;[^7] see also Ans. 4-5.[^8]

The Examiner further determines that a determination of patent eligibility under section 101 is a matter of law and does not require evidentiary support. Ans. 2-4. Instead "the Examiner [may] identif[y] abstract ideas ... by correlating the claimed invention to examples of other inventions identified by the courts as being abstract ideas." Id. at 3. The Examiner further determines that preemption is not a requirement for determining whether or not a claim is patent-eligible. Adv. Act. 2-4; Ans. 6-7. The Examiner also determines that Appellants' "argument regarding novelty is not persuasive because judicial exceptions need not be old or long-prevalent, and even newly discovered judicial exceptions are still exceptions, despite their novelty." Ans. 7.

The Examiner further determines that, "[v]iewed as a whole the additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself." Final Act. 5; see also Adv. Act. 4-6; Ans. 8-12. Specifically, the Examiner determines "the...