Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Status of Claims
This action is in reply to the application filed on 8-14-2024. Claim 1 is currently pending and has been examined.
Priority
Acknowledgment is made of Applicant’s claim for a domestic priority date of 3-16-2007.
Patent-Ineligible Subject Matter - 35 U.S.C. § 101
Under 35 U.S.C. § 101, “[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.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
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 (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 Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “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, 566 U.S. at 79, 78). This is “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.’” Id. at 217–18.
The U.S. Patent and Trademark Office (the “USPTO”) published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50.1
The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54; see also MPEP §§ 2106.04(II)(A)(1), 2106.04(a). If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application of that exception, i.e., whether the additional elements recited in the claim beyond the judicial exception, apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Id.; see also MPEP §§ 2106.04(II)(A)(2), 2106.04(d). Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id.; see also MPEP § 2106.04(II)(A)(2).
If the claim is determined to be directed to a judicial exception under Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56; see also MPEP § 2106.05.
Analysis:
STEP 1
Is the claim(s) directed to a process, machine, manufacture or composition of matter?
Claim1 is rejected under this statute as being software per se. For all statutory categories, except process claims, the eligible subject matter must exist in some physical or tangible form. See Digitech Image Tech., LLC v. Elec. For Imaging, Inc., 758 F.3d 1344, 1348 (Fed. Cir. 2014). A claim that is directed to software and is not otherwise limited to one of the four statutory categories, i.e., process, machine, manufacture, or composition of matter, is non-statutory subject matter. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007) ("Abstract software code is an idea without physical embodiment. .. . "); In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); MPEP § 2106 (I) (noting a computer program per se is ineligible under 35 U.S.C. § 101 (citing Gottschalk v. Benson, 409 U.S. 63, 72 (1972)). That is, "software" per se is not within any of the four statutory categories and is not patent-eligible subject matter.
MPEP 2106.03 guides:
“Non-limiting examples of claims that are not directed to any of the statutory categories include:
• Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations;
• Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave; and
• Subject matter that the statute expressly prohibits from being patented, such as humans per se, which are excluded under The Leahy-Smith America Invents Act (AIA ), Public Law 112-29, sec. 33, 125 Stat. 284 (September 16, 2011).
As the courts' definitions of machines, manufactures and compositions of matter indicate, a product must have a physical or tangible form in order to fall within one of these statutory categories. Digitech, 758 F.3d at 1348, 111 USPQ2d at 1719. Thus, the Federal Circuit has held that a product claim to an intangible collection of information, even if created by human effort, does not fall within any statutory category. Digitech, 758 F.3d at 1350, 111 USPQ2d at 1720 (claimed “device profile” comprising two sets of data did not meet any of the categories because it was neither a process nor a tangible product). Similarly, software expressed as code or a set of instructions detached from any medium is an idea without physical embodiment. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449, 82 USPQ2d 1400, 1407 (2007); see also Benson, 409 U.S. 67, 175 USPQ2d 675 (An "idea" is not patent eligible). Thus, a product claim to a software program that does not also contain at least one structural limitation (such as a “means plus function” limitation) has no physical or tangible form, and thus does not fall within any statutory category. Another example of an intangible product that does not fall within a statutory category is a paradigm or business model for a marketing company. In re Ferguson, 558 F.3d 1359, 1364, 90 USPQ2d 1035, 1039-40 (Fed. Cir. 2009).”
STEP 2
Step 2A(i): Does the Claim Recite a Judicial Exception?
Claim 1 is directed to a system for facilitating transfer of dispute data in a distributed electronic trading system for trading various items in a client system or end-user element. Uses include but are not limited to trade stocks, fixed income securities, currencies, futures contracts, oil, gold, interest rate derivatives, commodities, debentures and derivative trading instruments, in a computer, a workstation, a telephone, an Internet browser, an electronic notebook, a personal digital assistant (PDA) and a pager. The system has a memory operable to store information i.e., trading information about a trading order associated with a client system. A dispute manager is coupled to the memory, and communicates a confirmation message to the client system, where the confirmation message provides an option to send a trading order dispute request that disputes processing of the trading order. The dispute manager receives the trading order dispute request generated in response to a selection of the option, obtains a decision that responds to the trading order dispute request and communicates the decision to the client system.
From this we see that the claims do not recite the judicial exceptions of either natural phenomena or laws of nature. The next issue is whether it recites the judicial exception of an abstract idea. To answer this, we next determine whether it recites one of the concepts the Courts have held to be lacking practical application, viz. mathematical concepts2, certain methods of organizing human interactions3, including fundamental economic practices and business activities, or mental processes4.
The practice of dispute resolution is a means of managing personal behavior or relationships or interactions between people, and a long-practiced human activity, with or without the involvement of technological means. Thus, the invention is an example of a conceptual idea subject to the Supreme Court's "concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity." See Alice, 573 U.S. at 216 (citations omitted). Thus, the claims are directed to a certain method of organizing human activity.
Alternately, this is an example of concepts performed in the human mind as mental processes because the invention as drafted is a process that under its broadest reasonable interpretation covers a mental process. That is, other than generic computer components, nothing in the claim element precludes the step from practically being performed as mental process. The steps mimic human thought processes, perhaps with paper and pencil, where the data interpretation is perceptible only in the human mind. See Planet Bingo, 961 F. Supp. 2d at 851 (“The district court correctly concluded that managing the game of bingo “consists solely of mental steps which can be carried out by a human using pen and paper”). Other than the recitation of generic computer components, the examiner finds that the instant case clearly falls within the “mental processes” grouping of abstract ideas. The examiner further finds that this type of activity represents longstanding conduct that existed well before the advent of computers and the Internet. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson").
Moreover, the instant claims are abstract because they are similar in essence to the claims in ex parte Rule, appeal number 2017-003690. “(Our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter. Alice, 573 U.S. at 221 (intermediated settlement); Bilski, 561 U.S. at 611---6112 (risk hedging).”5 The claims in Rule disclose automated dispute resolution. Therefore, the claims in Rule appear to be similar in concept and commensurate in scope with those of the instant case and therefore abstract.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
The 2019 Revised Guidance sets forth a non-exhaustive listing of considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55; see also MPEP § 2106.04(d). In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if, inter alia, the additional element reflects an improvement in the functioning of a computer or an improvement to other technology or technical field. Id. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id.
The Examiner finds each of the limitations of claim 1 recites abstract ideas as Identified in Step 2A(i), supra, and none of the limitations integrate the means of managing interpersonal relationships between people into a practical application as determined under one or more of the MPEP sections cited above. The claim as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea.
Thus, on this record, Applicant has not shown eligibility under the guidance of Manual for Patent Examining Procedure section 2106.05(a) (“Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”) or section 2106.05(e) (“Other Meaningful Limitations”).
Step 2B – “Inventive Concept” or “Significantly More”
Evaluating representative claim 1 under step 2 of the Alice analysis, the Examiner concludes it lacks an inventive concept that transforms the abstract idea of dispute resolution into a patent-eligible application of that abstract idea. As evidence of the conventional nature of the recited “system,” ” the Examiner refers to paragraphs 24-26 of the published Specification. The Examiner finds the disclosed generic computer parts are well-understood, routine, and conventional. The generic computers described in the Specification are well-understood, routine, and conventional, at least because the Specification describes the computers in a manner that indicates they are sufficiently well-known that the Specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112 ¶ 1(a). See Berkheimer Memo6 § III.A.1. Thus, because the Specification describes the additional elements in general terms, without describing the particulars, the Examiner concludes the claim limitations may be broadly but reasonably construed as reciting conventional computer components and techniques, particularly in light of Applicant’s Specification, as quoted above.7
Conclusion of Law
The examiner concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception. From these determinations the examiner further notes that the claims do not recite an improvement to the functioning of the computer itself or to any
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other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this the examiner finds the claims are directed to a certain method of organizing human activity and a mental process without significantly more.
Claim Rejections - 35 USC § 102 (Pre-AIA )
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claim 1 is rejected under 35 U.S.C. 102(b) as being anticipated by US 6766307, Israel et al.
As per claim 1, Israel teaches:
a memory operable to store information about a trading order associated with a client system (At least column(s) 4, lines 12-14 and column 11, lines 28-32, storage of data);
and a dispute manager coupled to the memory and operable to: (At least claim 1 and abstract);
communicate a confirmation message to the client system, the confirmation message providing an option to send a trading order dispute request that disputes processing of the trading order (At least column(s) 21, lines 58-60);
receive a trading order dispute request generated in response to a selection of the option (At least column(s) 2, line 65 to column 3, line 4 and column 10, lines 1-6);
obtain a decision that responds to the trading order dispute request (At least column(s) 4, lines 56-59, column 19, lines 16-18);
and communicate the decision to the client system (Claims 40 and 42).
Conclusion
Additional prior art made of record and not relied upon that is considered pertinent to Applicant’s disclosure can be found on the attached PTO-892. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert R. Niquette whose telephone number is 571-270-3613. The examiner can normally be reached on Monday through Friday, 5:30 AM to 2:00 PM Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Abhishek Vyas, can be reached at 571-270-1836.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT R NIQUETTE/
Primary Examiner, Art Unit 3691
1 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).
2 See e.g., Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
3 See e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B. V., 2018 WL 6816331 (Fed. Cir. 2018).
4 See e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-1372 (Fed. Cir. 2011); Intellectual Ventures I LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
5 Ex parte Benoit et al, PTAB Appeal 2017-005911 at 8.
6 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), USPTO 3 (2018) (available at https://www.uspto.gov/ sites/default/files/documents/memo-berkheimer-20180419.PDF) (explaining that a specification that describes additional elements “in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well understood, routine, and conventional).
7 Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).