Ex Parte Gilbert et alDownload PDFPatent Trial and Appeal BoardJul 29, 201609982709 (P.T.A.B. Jul. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 09/982,709 10/18/2001 63710 7590 08/02/2016 INNOVATION DIVISION CANTOR FITZGERALD, L.P. 110 EAST 59TH STREET (6TH FLOOR) NEW YORK, NY 10022 FIRST NAMED INVENTOR Andrew C. Gilbert 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. 01-1041 8648 EXAMINER WINTER, JOHN M ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 08/02/2016 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): patentdocketing@cantor.com lkorovich@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 MARIANN GILBERT and ANGELA STERGIOPOULOS Appeal2014-004391 Application 09/982,709 1 Technology Center 3600 Before HUBERT C. LORIN, BIBHU R. MOHANTY, and BRADLEY B. BAY AT, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Mariann Gilbert and Angela Stergiopoulos (Appellants) seek our review under 35 U.S.C. § 134 (2002) of the Final Rejection of claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, 106-11, and 118-20. Claims 30, 31, 39--42 and 112-17 have been withdrawn.2 See Final Act. 3. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 1 The Appellants identify BGC Partners, Incorporated, as the real party in interest. Appeal Br. 5. 2 Although claims 33 and 34 are not withdrawn, the Examiner did not provide a rejection for these claims. See Final Act. 3-16. Therefore, claims 33 and 34 are not before us on appeal. Appeal2014-004391 Application 09/982,709 SUMMARY OF DECISION We AFFIRM but denominate the affirmed rejection as a NEW GROUND OF REJECTION. THE INVENTION Claim 1, reproduced below with bracketed matter added, is illustrative of the subject matter on appeal. 1. A method comprising the steps of: [ 1] by a computer for a trader for use in an electronic trading system, presenting to the trader an order entry user interface, the trader computer being programmed: [2] to receive from the trader a price spread to be applied in generation of a two-sided order, being a bid to buy an item and an offer to sell the same item, the bid and offer to be submitted by the trader to the electronic trading system, the user interface designed to permit rapid entry of two-sided orders; [3] to receive through the order entry user interface simultaneously as part of a single command from the trader, instructions to generate a bid to buy an item and an offer to sell the same item on the electronic trading system, and [ 4] to automatically generate a price for the bid or the offer based on the trader's received price spread; and [5] from the trader's computer, to submit the bid and offer into the electronic trading system to be matched against counterorders. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Broka Nieboer Raykhman us 5,809,483 US 6,418,419 Bl US 7,171,386 Bl 2 Sept. 15, 1998 July 9, 2002 Jan.30,2007 Appeal2014-004391 Application 09/982,709 The following rejections are before us for review: 1. Claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, and 118-20 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, 109, and 118-20 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. 3. Claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, 106-11, and 118-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nieboer, Raykhman, and Broka. ISSUES Did the Examiner err in rejecting claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, and 118-20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter? Did the Examiner err in rejecting claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, 109, and 118-20 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention? Did the Examiner err in rejecting claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, 106-11, and 118-20 under 35 U.S.C. § 103(a) as being unpatentable over Nieboer, Raykhman, and Broka? 3 Appeal2014-004391 Application 09/982,709 ANALYSIS The rejection of claims 1, 2, 4, 5, 10--14, 17, 18, 2 3, 2 5, and 118-20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1, 2, 4, 5, 10---14, 17, 18, 23, 25, and 118-20 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. We take the independent claims as representative of the claims on appeal. Independent claims 1 and 14 are each nominally directed to a computer-implemented method for use in an electronic trading system. The Supreme Court has long held that laws of nature, abstract ideas, and natural phenomena are excluded from patent protection. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012); Diamond v. Diehr, 450 U.S. 175, 185 (1981). Yet, although a law of nature or an abstract idea, by itself, is not patentable, a practical application of the law of nature or abstract idea may be deserving of patent protection. See Mayo; 132 S. Ct. at 1293-94. In Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347 (2014), the Court reiterated the framework, set forth previously in Mayo, "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of [these] concepts." Alice, 134 S. Ct. at 23 5 5 (citation omitted). The first step in this analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. (citation omitted). If so, in the second step, the elements of the claims "individually and 'as an ordered combination'" are considered to determine whether there are additional elements that "'transform the nature of the claim' into a patent-eligible application." Id. (quoting Mayo, 132 S. Ct. at 1297, 1298). Stated 4 Appeal2014-004391 Application 09/982,709 differently, the second step 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. (quoting Mayo, 132 S. Ct. at 1294). The Specification describes the invention as "relat[ing] to systems and methods for electronic trading of a[ n] item or instrument sold in an electronic market." Spec. 1, 11. 4---6. The method of claim 1 comprises two steps (a) presenting a user interface on a trader computer, and (b) submitting a bid to buy and an offer to sell an item. Claim 1 also recites that the trader computer is programmed to receive data from the user interface and to automatically generate a price for the bid and offer, but this programmed functionality is not affirmatively recited as part of the method of claim 1. The method of claim 14 comprises three steps (a) displaying data, (b) receiving a selection of the data, and ( c) displaying a user interface that permits entry of orders to buy and sell an item. The subject matter of claims 1 and 14, as reasonably broadly construed, are drawn to a concept of financial instrument trading; that is, the claims are drawn to a methodology whereby a user submits both buy and sell orders for the same financial instrument to an electronic trading system. Evidence will show that the concept of buying and selling financial instruments per se is a well-established fundamental economic practice. Because we find that claims 1 and 14, as reasonably broadly construed, are directed to the concept of financial instrument trading, i.e., a fundamental 5 Appeal2014-004391 Application 09/982,709 economic practice, claims 1 and 14 are directed to a patent-ineligible abstract idea. Turning to the second step outlined in Alice, we next consider whether there is an inventive concept, defined by an element or combination of elements in claims 1 and 14, which is significantly more than the abstract idea of financial instrument trading. We conclude here that there is no such inventive concept. The method as claimed is an application of trading financial instruments to a known trading environment; that is, to a known electronic trading system whereby participants transact to buy and sell an item at a desired price. The trading is accomplished by matching orders against counterorders in the system. Trading financial instruments is a known technique that is insufficient to transform the abstract idea of trading into an inventive concept. With regard to implementing said method on a computer, as in the context of a known electronic trading system, as claimed, "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358. The Appellants contend that "programming [a computer] 'creates a new machine' and that such a new machine is a patentable 'machine' that meets§ 101." Appeal Br. 12 (citing, e.g., In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en bane)). This may be true in some cases, but not here. In this case, it is clear that the Appellants' invention serves only to more quickly enter routine commands to buy and sell a financial instrument by simultaneously issuing the appropriate instructions to a known electronic trading system. "[R ]elying on a computer to perform routine tasks more 6 Appeal2014-004391 Application 09/982,709 quickly or more accurately is insufficient to render a claim patent eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701 (2015) (citing Alice, 134 S. Ct. at 2359 ("use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions" is not an inventive concept)). For the foregoing reasons, we find that claims 1 and 14 do not include additional inventive features such that the claim scope does not solely capture the abstract idea. Therefore, claims 1 and 14 are rejected under 35 U.S.C. § 101. For similar reasons, we also reject claims 2, 4, 5, 10-13, 17, 18, 23, 25, 106-11, and 118-20. Our reasoning differs from that of the Examiner and accordingly we denominate the affirmed rejection as a new ground of rejection. The Examiner did not include claims 106-11 in the rejection under 3 5 U.S.C. § 101. Claims 106-11 depend from claim 1 and do not add any significant limitations under Alice step 2. Therefore, we hold that claims 106-11 are also directed to patent-ineligible subject matter for the reasons set forth above. The rejection of claims 1, 2, 4, 5, 10--14, 17, 18, 23, 25, 109, and 118-20 stand rejected under 35 U.S. C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. The Examiner rejected claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, 109, and 118-20 because the term "the trader computer" in claim 1 lacks antecedent basis. Ans. 5. 7 Appeal2014-004391 Application 09/982,709 The Appellants contend that there is no ambiguity because "the trader computer" clearly refers to "computer for a trader" in claim 1. Appeal Br. 14. We agree with the Appellants. We also note that the Examiner has not explained how this rejection applies to independent claim 14 or its dependent claims, which do not contain the language which the Examiner finds unclear. Accordingly, the rejection of claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, and 118-20 under 35 U.S.C. § 112, second paragraph, is not sustained. The Examiner rejected claim 109 because "[t]he term 'better' in claim 109 is a relative term" and "one of ordinary skill in the art would not be reasonably apprised of the scope of the invention." Ans. 6. The Appellants contend that the "everyday usage" of the term "better" leaves no ambiguity, and that "a 'better' price for a bid to buy is a higher price" and "[a] 'better' price for an offer to sell is a lower price." Appeal Br. 15. We do not agree. The question is "better for whom?" Contrary to Appellants' arguments, a "better" price for one party to a financial transaction is a worse price for the other party. A better price for a seller is a higher price, and a better price for a buyer is a lower price. The claims do not specify a frame of reference (e.g., "better for the trader"), and consequently the scope of the claim cannot be ascertained. Accordingly, the rejection of claim 109 under 35 U.S.C. § 112, second paragraph, is sustained. 8 Appeal2014-004391 Application 09/982,709 The rejection of claims 1, 2, 4, 5, 10--14, 17, 18, 23, 25, 106--11, and 118-20 under 35 U.S.C. § 103(a) as being unpatentable over Nieboer, Raykhman and Broka. Because we have rejected claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, 106-11, and 118-20 under 35 U.S.C. § 101 as being directed to non- statutory subject matter, we find it unnecessary to reach a decision about the rejection of claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, 106-11, and 118-20 under 35 U.S.C. § 103(a) as being unpatentable over Nieboer, Raykhman, and Broka. See 37 C.F.R. § 41.50(a)(l) ("The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim .... ") See also, Ex Parte Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009) (precedential) (declining to reach prior art rejections because decision regarding patentability under 35 U.S.C. §§ 101 and 112 was dispositive). CONCLUSIONS The rejection of claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, and 118-20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is sustained but denominated as a new ground of rejection. The rejection of claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, and 118-20 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention is not sustained. The rejection of claim 109 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention is sustained. 9 Appeal2014-004391 Application 09/982,709 The rejection of claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, 106-11, and 118-20 under 35 U.S.C. § 103(a) as being unpatentable over Nieboer, Raykhman, and Broka is not reached. DECISION The decision of the Examiner to reject claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, 106-11, and 118-20 is affirmed. Claims 1, 2, 4, 5, 10-14, 17, 18, 23, 25, 106-11, and 118-20 are newly rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. NEW GROUND OF REJECTION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that the Appellant(s), WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the exammer .... (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same record .... 10 Appeal2014-004391 Application 09/982,709 Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED; 37 C.F.R. § 41.50(b) 11 Copy with citationCopy as parenthetical citation