BEADLE, Alastair J.D. et al.

Patent Trials and Appeals Board

Feb 18, 2020

13244994 - (D) (P.T.A.B. Feb. 18, 2020)

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.
13/244,994 09/26/2011 Alastair J.D. BEADLE 03-6182-C1 8856
63710 7590 02/18/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
02/18/2020 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):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte ALASTAIR J.D. BEADLE and MICHAEL SWEETING

Appeal 2018-007655
Application 13/244,994
Technology Center 3600

Before ERIC S. FRAHM, SCOTT B. HOWARD, and
SCOTT E. BAIN, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s Final Rejection of claims 9, 10, 12–18, 21–27, 29–35, and 38–
42. Claims 1–8, 11, 19, 20, 28, 36, and 37 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as BGC
Partners, Inc. (Appeal Br. 3).
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CLAIMED SUBJECT MATTER
The disclosure of the application is entitled “System and Methods for
Managing Relationships Between Brokers and Traders Using a Messaging
Format” (Title), and “relates in general to trading markets” (Spec. 1:2).
Specifically, the claimed subject matter is characterized as utilizing
computer systems to provide online trading of “financial instruments such as
stocks, bonds, currency, futures, or other suitable financial instruments”
(Spec. 2:13–14). Appellant’s Figure 1 shows an example trading network 10
(see Fig. 1; see also Spec. 6:14–13:8 (describing Fig. 1)), where “network 10
includes one or more unmanaged trader terminals 12, managed trader
terminals 14, broker terminals 16, session managers 18, authentication
managers 20, gateways 22, broker proxy servers 24 and trading systems 26”
(Spec. 6:16–19). Independent method claim 9 is illustrative:
9. A method of managing electronic messages in an
electronic trading network that includes communicating
electronic messages to display regions and receiving electronic
messages from input regions of graphical user interfaces of
computer systems, the method comprising:
storing one or more user relationships between a first user
and one or more second users authorized to act on behalf of the
first user in an electronic trading system;
storing an association between a particular connection
with the electronic trading system and a user relationship
between the first user and a particular second user, the particular
connection being one of a plurality of connections with the
electronic trading system, each respective connection being
assigned to a respective user, and wherein electronic trading
messages associated with a respective user are communicated to
and from the electronic trading system via the user's respective
connection;
receiving from an input region of a graphical user
interface of a computer system associated with the particular
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second user an electronic trading message, the electronic trading
message comprising a trading order;
identifying the particular connection from the plurality of
connections based at least on the electronic trading message and
the stored association;
forwarding the electronic trading message to the electronic
trading system via the identified particular connection;
receiving from the electronic trading system an electronic
trading system electronic trading message in response to the
electronic trading message received from the computer system
associated with the second user;
communicating the electronic trading system electronic
trading message to a display region of a graphical user interface
of a computer system associated with the first user;
identifying from the user relationships second users
authorized to act on behalf of the first user; and
for identified second users, communicating the electronic
trading system electronic trading message to respective display
regions of graphical user interfaces of computer systems
associated with the identified second users,
wherein communicating the electronic trading
system electronic trading message to the first user
comprises: generating an electronic signal for
communicating a first carrier message that includes (i) the
electronic trading system electronic trading message and
(ii) routing information associated with the computing
system associated with the first user; and generating an
electronic signal for communicating the first carrier
message to the computing system associated with the first
user,
wherein communicating the electronic trading
system electronic trading message to the identified second
users comprises: generating an electronic signal for
communicating a second carrier message that includes (i)
the electronic trading system electronic trading message
and (ii) routing information associated with the computing
system associated with the identified second users; and
generating an electronic signal for communicating the
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second carrier message to the computing system
associated with the identified second users, and
wherein the second carrier message is
communicated toward user applications associated with
the identified second users based at least on the routing
information included in the second carrier message.

Appeal Br. 20–21, Claims Appendix (emphases added).
Remaining independent claim 26 sets forth “[a] system for managing
messages in an electronic trading network that includes communicating
electronic messages to display regions and receiving electronic messages
from input regions of graphical user interfaces of computer systems” (claim
26, preamble) having limitations commensurate with those in claim 9.
Dependent claims 10, 12–18, 21–25, 27, 29–35, and 38–42 each incorporate
the limitations of their respective independent claims.

REJECTION
Claims 9, 10, 12–18, 21–27, 29–35, and 38–42 are rejected under 35
U.S.C. § 101 as lacking patent-eligible subject matter, without significantly
more. Final Act. 2–3; Ans. 3–5.

OPINION
We have reviewed the Examiner’s subject-matter eligibility rejection
(Final Act. 2–3) in light of Appellant’s contentions that the Examiner has
erred (Appeal Br. 10–19). Further, we have reviewed the Examiner’s
response to Appellant’s arguments (Ans. 3–5) and Appellant’s Reply Brief
(Reply Br. 2–4). We are not persuaded by Appellant that the Examiner erred
in rejecting the pending claims 9, 10, 12–18, 21–27, 29–35, and 38–42 under
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35 U.S.C. § 101. Appellant primarily presents arguments as to claim 9, and
relies on those arguments as to the remaining claims on appeal.
Accordingly, we select claim 9 as representative of the claims rejected under
35 U.S.C. § 101, pursuant to our authority under 37 C.F.R. §
41.37(c)(1)(iv).
In support of subject matter eligibility, Appellant does not dispute that
the claims are directed to an abstract idea (see generally Appeal Br. 10–18).
Instead, Appellant contends that “the claimed subject matter is directed to
improvements in computer performance particularly by communicating
messages between graphical user interfaces of users based on routing
information of other users” (Appeal Br. 12) (emphases in original).
Appellant contends the Specification provides support for this by “teaching
about how the claimed invention improves computer performance
which may help control activity over the network and control computer
workload including computer resources such as memory, processor and
network resources such as network bandwidth” (Appeal Br. 12) (emphases
in original). Appellant also contends that paragraphs 8 and 9 of U.S.
Published Application No. 2012/0016790 provides evidence that the claimed
invention improves a computer or other technology (Appeal Br. 11–12, 14;
Reply Br. 3–4).
Appellant also argues that the claims are eligible as being directed to
an improved computer or user interface, citing the Federal Circuit’s
reasoning in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880
F.3d 1356, 1363 (Fed. Cir. 2018). Id. at 13–15. Appellant further argues
that the claimed features are not well-understood, routine, or conventional.
Reply Br. 2–4. Appellant also argues that the rejection neglects to consider
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the lack of preemption reflected in Appellant’s claims. Appeal Br. 16.
Finally, Appellant argues that the lack of prior art references applied under
35 U.S.C. § § 102, 103 indicate patent eligibility. Appeal Br. 17.
With respect to Appellant’s preemption argument, we are not
persuaded because preemption concerns are addressed by the Supreme
Court’s eligibility framework as applied here, infra. Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (stating
“[w]here a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo [Collaborative Servs. v Prometheus Labs.,
Inc., 566 U.S. 66 (2012)] framework, . . . preemption concerns are fully
addressed and made moot”). A lack of complete preemption does not make
the claims any less abstract. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362–63 (Fed. Cir. 2015) (“[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.”).
And, with respect to Appellant’s lack of prior art argument, this
argument is not persuasive because any analysis based upon obviousness is
not relevant to our analysis for patent eligibility under 35 U.S.C. § 101. See
Return Mail, Inc. v. U.S. Postal Service, 868 F.3d 1350, 1370 (Fed. Cir.
2017). Although the second step in the Alice/Mayo test is a search for an
“inventive concept,” the analysis is not directed to novelty or
nonobviousness, but rather searches for elements sufficient to ensure that the
claimed invention is directed to more than a patent ineligible concept, such
as an abstract idea. See Alice, 573 U.S. at 217–18. “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
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576, 591 (2013); see also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981)
(“The ‘novelty’ of any element or steps in a process, or even of the process
itself, is of no relevance in determining whether the subject matter of a claim
falls within the § 101 categories of possibly patentable subject matter.”);
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 n.3
(Fed. Cir. 2016) (noting that an eligibility finding does not turn on the
novelty of using a user-downloadable application for the particular purpose
recited in the claims). As discussed above, an improved abstract idea is still
an abstract idea. See Mayo, 566 U.S. at 90 (holding that a novel and
nonobvious claim directed to a purely abstract idea is, nonetheless patent-
ineligible).
A. Principles of Law
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever 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.
There is, however, an implicit, longstanding exception to patent-
eligible subject matter in 35 U.S.C. § 101: “[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). This exception precludes patenting of “the
basic tools of scientific and technological work” from which all inventions
spring. Id. at 216–17. Invention or discovery under § 101 is distinguished
as being the application of such tools to an end otherwise satisfying the
requirements of the patent statute. See Gottschalk v. Benson, 409 U.S. 63,
67 (1972).
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The Supreme Court has established a framework for this eligibility
determination. Where a claim is directed towards a law of nature, natural
phenomena, or abstract idea, the elements of the claim as a whole must
ensure that the claim, in practice, amounts to significantly more than a patent
on the law of nature, natural phenomena, or abstract idea itself. Alice, 573
U.S. at 217–18. In applying this eligibility analysis, our reviewing court has
stated, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen[,] . . . the
classic common law methodology for creating law when a single governing
definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted).
To address the growing body of precedent, the USPTO published
revised examination guidance on the application of § 101. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50 (Jan. 7,
2019) (hereinafter “2019 Guidance”). The 2019 Guidance seeks to improve
the clarity of the subject-matter-eligibility analysis and improve consistency
of this analysis across the USPTO. Id.
Under the 2019 Guidance, we first look to whether the claim is
directed to a judicial exception because:
(1) the claim recites a law of nature, natural phenomenon, or
abstract idea, the last of which includes certain groupings,
identified as mathematical concepts, certain methods of
organizing human activity, and mental processes; and

(2) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see
Manual of Patent Examination Procedure (hereinafter “MPEP”)
§§ 2106.05(a)–(c), (e)–(h) (9th ed. rev. 08.2017 Jan. 2018).
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
adds a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or instead, simply appends well-
understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the
judicial exception.

See 2019 Guidance, passim.
B. “Recites an Abstract Idea”
In the Final Action, the Examiner described claim 9 as being directed
to a judicial exception, identified as “managing messages in a trading
network,” and described as a method of organizing activity similar to the
concepts that have been identified by the courts such as (i) managing risk
(hedging) during consumer transactions, and (ii) mitigating settlement risk in
financial transactions. Final Act. 2 (citing Bilski v. Kappos, 561 U.S. 593
(2010) and Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014)). Appellant
does not specifically argue that claim 9 does not recite an abstract idea. The
Examiner also determines that “[t]he concept of managing messages as
recited in the claim can be performed mentally or by using a ‘computer
system.’” Final Act. 2. Again, Appellant does not specifically argue that
claim 9 contains any steps that cannot be performed mentally or with a
computer system.
We do not find error in the Examiner’s determination that the actions
set forth in claim 9 recite acts of trading by managing messages in an
electronic trading network. Final Act 2. Because these activities are
commercial or legal interactions characterizing those certain methods held
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by the courts as abstract ideas (2019 Guidance, 84 Fed. Reg. at 52), we agree
with the Examiner’s unrebutted conclusion that claim 9 is directed to a
method of organizing activity and mental steps, and therefore, to an abstract
idea.
C. Directed to an Abstract Idea
The Examiner has determined, and we agree, that claim 9
does not include additional elements that are sufficient to
amount to significantly more than the judicial exception
because the additional elements are simply a generic recitation
of a computer system performing its generic computer
functions. The claim amounts to no more than managing
messages according to rules. Taking the elements both
individually and as a combination, the processor components in
claim 9 performs purely generic computer functions.

Final Act. 2–3.
Appellant contends that “the claimed subject matter is directed to
improvements in computer performance particularly by communicating
messages between graphical user interfaces of users based on routing
information of other users.” Appeal Br. 12 (emphases omitted). Appellant
further argues that such a process “improves computer performance which
may help control activity over the network and control computer workload”
Id. at 12 (bold emphases omitted and italic emphasis added). Appellant
analogizes the claims under appeal to those found eligible in Core Wireless.
Id. at 13–15.
In Core Wireless, the claimed invention specified particular
technological functionality in the form of “an application summary that can
be reached directly from [a] menu” such that the summary window “is
displayed while the one or more applications are in an un-launched state.”
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Core Wireless, 880 F.3d at 1362–63. The court in Data Engine
Technologies characterized the claimed invention in Core Wireless as not
“merely directed to the abstract idea of indexing information,” but instead
providing “an improved user interface for electronic devices” such that the
claim was “directed to ‘an improvement in the functioning of computers.’”
Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1009 (Fed. Cir.
2018).
In Data Engine Technologies, the court addressed a set of claims
directed to a specific method of navigating three-dimensional spreadsheets
through the use of tabs. Id. at 1008–09. The inventive tabs permitted easy
access to spreadsheet workspaces that previously required a user to “search
through complex menu systems” and “memorize frequently needed
commands.” Id. at 1008. Certain claims “require[d] at least one user-
settable identifying character to label the notebook tab and describes
navigating through the various spreadsheet pages . . . that are identified by
their tabs.” Id. The court found the claims to require a “specific interface
and implementation for navigating complex three-dimensional spreadsheets
using techniques unique to computers.” Id. at 1009. The court distinguished
the claimed invention from one that would merely recite “a generic method
of labeling and organizing” spreadsheet data. Id. at 1008–09.
The court in Data Engine further addressed claims that recited
“associating each of the cell matrices with a user-settable page identifier”
without “the specific implementation of a notebook tab interface.” Id. at
1012. The court held that these were claims not limited to the “specific
technical solution and improvement in electronic spreadsheet functionality”
set forth in the eligible tab claims and were, thus, found ineligible. Id.
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Claim 9 does not recite an interface such as was found to provide
eligibility in Core Wireless. At most, the claim recites “graphical user
interfaces of computer systems” usable by first and second users and having
input and display regions. Appeal Br. 20. Claim 9 does not set forth any
particular interface for such communicating, much less any particular
technological functionality or improvement of an interface itself, and is
therefore more akin to the ineligible claims in Data Engine than to the
eligible claims in Core Wireless.
To the extent that Appellant alleges improvement to computer
workload and computer resources such as memory resources, processor
resources, and network resources like bandwidth, such alleged improvement
is not to the technological implementation set forth in claim 9, but instead to
the decision making that is part of the abstract idea (e.g., routing trading
messages to the correct user). The claimed communication of messages
containing trading orders by generating carrier messages including the
trading message and routing information does not reduce the memory
required, or improve the operation of a computer system. The alleged
improvement to computer workload and computer resources is the use of
such electronic trading system electronic trading messages to order trading
transaction commands in a particular manner. See Appeal Br. 20. Thus, the
alleged improvement has not been shown to be to the computer
implementation of the abstract idea rather than a consequence of an
improvement to an abstract itself; i.e., an improved manner of
communicating trading messages by identifying relationships between first
and second users. The Bilski Court held that identifying trading partners for
buyers and sellers, and initiating transactions therebetween, is itself an
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unpatentable abstract idea. Bilski v. Kappos, 561 U.S. 593, 611 (2010). As
discussed in Alice Corp., the Court there did not find an improvement to a
particular type of bookkeeping, practiced on a generic computer, to be an
improvement to the functioning of a computer that implemented such a
bookkeeping idea. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014).
Accordingly, we agree with the reasoning and conclusion of the Examiner
that claim 9 is not directed to an improvement to a computer system or an
improvement to another technology or technical field, but instead directed to
an abstract idea.
D. Significantly More Than the Abstract Idea
Where a claim is directed to an abstract idea, the additional limitations
of the claim may provide an inventive concept so as to provide subject-
matter eligibility. An inventive concept may be shown where a limitation or
combination of limitations is more than well-understood, routine,
conventional activity.
Appellant argues that the additional elements are not well-understood,
routine, or conventional, as understood by reference to paragraphs 8 and 9 of
U.S. Published Application No. 2012/0016790). Reply Br. 2–4. Similar to
Appellant’s claim 9 on appeal, paragraph 8–9 of U.S. Published Application
No. 2012/0016790 merely provide for the routing of messages to appropriate
users (brokers, traders, etc.). This extrinsic evidence does not outweigh
Appellant’s description in the Specification and illustration in Figure 1 of
only generic computer components, terminals, and networks (see Fig. 1; see
also Spec. 6:14–13:8 (describing Fig. 1)).
The additional elements identified by the Examiner are generic
computer system components, such as graphical user interfaces for the
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performance of trading operations. Final Act. 2; Ans. 3–4. The Examiner
has determined that the claimed functions of managing messages according
to rules are conventional functions of a computer. Final Act. 2; Ans. 3–4.
The Examiner has cited to Alice Corp. (Final Act. 2), which stands for the
proposition that the use of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions is not an inventive
concept. The Examiner’s determination is consistent with the guidance set
forth in USPTO Memorandum, Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF), which permits showing an element to be well-understood,
routine, conventional through a citation to a court decision discussed in
MPEP § 2106.05(d)(II). The Alice Corp. decision is discussed in MPEP
§ 2106.05(d)(II)(iii) for the proposition that electronic recordkeeping,
including creating and maintaining accounts (e.g., of financial transactions),
has been recognized by the courts as well-understood, routine, conventional
activity. Accordingly, Appellant has not shown error in the Examiner’s
determination that the additional elements in the claim are well-understood,
routine, conventional activity.
Consequently, we determine that claim 9 is ineligible subject matter
under 35 U.S.C. § 101, and we sustain the Examiner’s rejection of claim 9,
as well as claims 10, 12–18, 21–27, 29–35, and 38–42 grouped therewith, on
that ground.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
9, 10, 12–18,
21–27, 29–
35, 38–42
101 Eligibility 9, 10, 12–18, 21–
27, 29–35, 38–42

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED