Ex Parte Gilbert et al

Patent Trial and Appeal Board

Jul 29, 2016

09982709 (P.T.A.B. Jul. 29, 2016)

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112-17 have been withdrawn.2 See Final Act. 3.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2 Although claims 33 and 34 are not withdrawn, the Examiner did not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?
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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
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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
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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
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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.
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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.
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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.
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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 ....
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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)
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