James C. Johnson

Patent Trials and Appeals Board

Mar 25, 2020

11687009 - (D) (P.T.A.B. Mar. 25, 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.
11/687,009 03/16/2007 James C. Johnson 07-6264 7410
63710 7590 03/25/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
NIQUETTE, ROBERT R
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
03/25/2020 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 JAMES C. JOHNSON
____________

Appeal 2019-002306
Application 11/687,009
Technology Center 3600

____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 2–9 and 11–18. 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
Appellant’s invention relates to reducing or eliminating
“disadvantages and problems associated with previous techniques for
disputing the processing of a trading order.” (Spec. 3, ll. 2–5.)
Claims 2 and 11 are the independent claims on appeal. Claim 2 is
illustrative.2 It recites:
2. An apparatus comprising at least one computing device
coupled over a network to a trading platform, the at least one computing
device comprising:
at least one processor; and
a memory, the memory storing software thereon that when
executed causes the processor to:
generate a trading order to transact a financial instrument;
store information related to the trading order in the
memory;
communicate the trading order to the trading platform;
receive a confirmation message from the trading platform;
receive a selection of an option to initiate a dispute;
display a trading parameters section and an objection
section on a graphical user interface;
display, in the objection section, at least one objection
button comprising an incorrect trading parameters button, an
improper order fill button, a technical problems button, or an
other [sic] button;
detect a selection of the at least one objection button in the
objection section;
in response to detecting the selection of the at least one
objection button, communicate a dispute request to a governing
entity over a trading order in the trading parameters section
according to a respective function of the selected objection
button; and
process the trading order.

2 Claim 2 as shown on page 17 of the Appeal Brief is not identical to claim 2
as presented to the Examiner in the amendments of April 20, 2018, and as
entered by the Examiner. We cite to claim 2 as entered.
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REJECTION
Claims 2–9, and 11–18 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.

ANALYSIS
Appellant does not separately argue claims 2–9 and 11–18. We select
claim 2 as representative. Claims 3–9 and 11–18 will stand or fall with
claim 2. See 37 C.F.R. § 41.37(c)(1)(iv).
“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.” 35 U.S.C. § 101. Section 101, however,
“contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out 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, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient
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to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Id. at 221 (internal quotation marks omitted) (citing Mayo, 566 U.S. at 72–
73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two-prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] 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.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that claim 2 “disclose[s] a system for
dispute data transfer in a distributed trading system that is used to trade
items.” (Answer 7.) The Examiner also determines that the method
implemented by the system “is a method of organizing human activity.”
(Id.) The 2019 Guidance identifies “commercial or legal interactions
(including agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business relations)” as
certain methods of organizing human activity, and a category of abstract
ideas. (2019 Guidance at 52.)
Appellant argues that “the claims of the instant case clearly recite an
improved user interface” (Appeal Br. 10), and that “reduc[ing] network
disputes and thereby sav[ing] bandwidth . . . is an unequivocal . . . computer
improvement” (id. at 12).
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
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whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the “directed to” inquiry applies a stage-one filter
to claims, considered in light of the specification, based on
whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to reducing or eliminating “disadvantages and problems associated with
previous techniques for disputing the processing of a trading order.”
(Spec. 3, ll. 2–5.) Claim 2 provides further evidence. Claim 2 recites “at
least one processor; and a memory . . . storing software . . . to: generate a
trading order,” “store information related to the trading order,”
“communicate the trading order,” “receive a confirmation message,”
“receive a selection of an option,” “display a trading parameters section and
an objection section on a graphical user interface,” “display, in the objection
section at least one objection button,” “detect a selection of the at least one
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objection button,” “in response . . . , communicate a dispute request,” and
“process the trading order.”
In short, claim 2 recites a generic processor, a generic memory, and a
generic graphical user interface. (See, e.g., Spec. 8, ll. 1– 10; 9, ll. 9–16; 14,
ll. 17–27.) The memory contains software for generating data (a trading
order), storing data, communicating data, receiving data, displaying data,
detecting input, communicating data, and processing data. The claim does
not recite technological implementation details for any of the steps. Claim 2
merely recites functional results to be achieved by any means, e.g., claim 2
does not recite how the trading order is generated, how the trading order is
communicated, how the graphical user interface displays the trading
parameters and objection sections, how the button selection is detected, how
the dispute request is communicated, or how the trading order is processed.
In other words, claim 2 does not recite any specific asserted improvement to
computer technology.
In cases involving software innovations, such as we have here, the
inquiry as to whether the claims are directed to an abstract idea “often turns
on whether the claims focus on ‘the specific asserted improvement in
computer capabilities ... or, instead, on a process that qualifies as an
“abstract idea” for which computers are invoked merely as a tool.’” Finjan,
Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting
Enfish, LLC, 822 F.3d at 1335–36). Here, the processor, memory, and
graphical user interface are invoked merely as tools.
Appellant argues:
As with the claims in Core Wireless, the claims of the
instant case clearly recite an improved user interface with precise
language delimiting the type of data to be displayed (e.g.,
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“display a trading parameters section and an objection section on
a graphical user interface” and “display in the objection section
at least one objection button comprising an incorrect trading
parameters button, an improper order fill button, a technical
problems button, or another button.” As will be discussed further
below . . . , the claimed GUI [(graphical user interface)] structure
increases the efficiency of the computer by reducing bandwidth.
Accordingly, the claims clearly meet the Core Wireless
guidelines . . . .

(Appeal Br. 10 (emphasis omitted) (citing Spec. 3, l. 30–4, l. 12).)
We do not find this argument persuasive. Claim 2 does not recite “a
particular way of programming or designing the software . . . , but instead,
merely claim[s] the resulting system[].” Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1241 (Fed. Cir. 2016). In other words, claim 2 simply recites
desired results. Claim 2 is “focused on providing information to [the user]
. . . , not on improving computers or technology.” Trading Techs. Int’l, Inc.
v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019). “Like Electric Power,
the purported advance ‘is a process of gathering and analyzing information
of a specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions.’ 830 F.3d
at 1354. We thus conclude that the claim[ is] directed to an abstract idea.”
Id. at 1385.
Nor do we find persuasive Appellant’s argument that “the claimed
GUI structure increases the efficiency of the computer by reducing
bandwidth.” (See Appeal Br. 10.) The portion of Appellant’s Specification
that Appellant relies on recites that “the dispute manager may provide a
relatively quick response to a trading order dispute request. In some
situations, the quick response may yield a speedy resolution to a trading
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order dispute. Such a resolution of trading order disputes with [sic] reduce
network disputes and thereby save bandwidth.” (Spec. 4, ll. 7–12.)
“Even if we accept [Appellant’s] assertions, the claimed invention
merely improves the abstract concept . . . using a computer as a tool. This is
not what the Supreme Court meant by improving the functioning of the
computer itself nor is it consistent with [the Federal Circuit’s] precedent
applying this concept.” Customedia Techs., LLC v. Dish Network Corp.,
No. 2018-2239, slip op. at 7 (Fed. Cir. Mar. 6, 2020).
In view of the above, claim 2 “do[es] not improve the functioning of
the computer, make it operate more efficiently, or solve any technological
problem. Instead, [it] recite[s] a purportedly new arrangement of generic
information that assists traders in processing information more quickly.”
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019).
The Federal Circuit has concluded that such claims are directed to an
abstract idea. Id. By contrast, in Core Wireless Licensing S.A.R.L. v. LG
Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018), the court determined that “[t]he
asserted claims in this case are directed to an improved user interface for
computing devices,” that the claim “limitations disclose a specific manner of
displaying a limited set of information to the user, rather than using
conventional user interface methods,” and that “[t]he disclosed invention
improves the efficiency of using the electronic device.” Id. at 1362–63. The
court determined that the claims in Core Wireless were not directed to an
abstract idea. Id.
“As many cases make clear, even if a process of collecting and
analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
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abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed.
Cir. 2018). Moreover, the “character of [the] information simply invokes a
separate category of abstract ideas.” Id.
In view of the above, we determine that claim 2 is directed to
“disputing the processing of a trading order.” (See Spec. 3, ll. 2–5.) In other
words, claim 2 is directed to commercial or legal interactions, and, thus, an
abstract idea, characterized as being directed to certain methods of
organizing human activity. (See 2019 Guidance at 52.) This is in accord
with the Examiner’s determination. (See Answer 7.)
Additionally, we do not see how the recitation of a generic processor,
memory, and graphical user interface, even in conjunction with the recited
functions, “ensure[s] ‘that the [claim] is more than a drafting effort designed
to monopolize the [abstract idea].’” See Alice, 573 U.S. at 221 (second and
third brackets in original) (quoting Mayo, 566 U.S. at 77).
Nor do we find any indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in computer technology or functionality to the claimed
invention or that otherwise indicates that the claimed invention “appl[ies],
rel[ies] on, or use[s] 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.” (See 2019
Guidance at 54–55.)
Thus, under prong one of the two prong test in the 2019 Guidance,
claim 2 recites an abstract idea; and, under prong two, additional elements in
claim 2 do not “apply, rely on, or use the judicial exception in a manner that
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imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
(See 2019 Guidance at 54.) As such, under step one of the Alice framework,
the claims are directed to an abstract idea, and we move to step two.
Step two of the Alice framework has been described “as 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.’” Alice, 573 U.S.
at 217–18 (brackets in original) (quoting Mayo, 566 U.S. at 72–73). Under
step two, we examine, inter alia, whether a claim element or combination of
elements “[a]dds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present.” (2019 Guidance
at 56.)
Here, the question is whether the steps of generating data, storing
data, communicating data, receiving data, displaying data, detecting input,
and processing data are well-understood, routine and conventional.
The Examiner finds that “[a]lthough a computer acts as the
intermediary in the claimed method, the claims do no more than implement
the abstract idea[] recited supra. All of these computer functions are ‘well
understood, routine, conventional activities’ previously known in the
industry.” (Final Action 5 (footnote omitted).3)

3 In the footnote, the Examiner cites to a Federal Circuit slip opinion for
Case No. 2016-1077 issued on March 7, 2017. The case name recited by the
Examiner is not correct. Case No. 2016-1077 issued on March 7, 2017, is
Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332
(Fed. Cir. 2017).
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Appellant argues that in view of Berkheimer v. HP Inc., 881 F.3d
1360 (Fed. Cir. 2018), and “Formulating a Subject Matter Eligibility
Rejection and Evaluating the Applicant’s Response to a Subject Matter
Eligibility Rejection,” Memorandum, Robert W. Bahr, Deputy
Commissioner for Patent Examination Policy, May 4, 2016, the conclusory
analysis in the Final Action is insufficient. (Appeal Br. 14.) We do not find
this argument persuasive.
Generating data, storing data, communicating data, receiving data,
displaying data, detecting input, and processing data are all routine and
conventional functions for a computer processor and were previously known
to the industry. See Elec. Power Grp., 830 F.3d at 1356 (The claims “do not
include any requirement for performing the claimed functions of gathering,
analyzing, and displaying in real time by use of anything but entirely
conventional, generic technology. The claims therefore do not state an
arguably inventive concept . . . .”); see also In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a
possible narrower construction of the terms ‘processing,’ ‘receiving,’ and
‘storing,’ . . . those functions can be achieved by any general purpose
computer without special programming.”). Moreover, like claim 2 at issue
here, the claims at issue in Intellectual Ventures I, the case cited by the
Examiner (see Final Action 5; see also Answer 14), “recite both a generic
computer element––a processor––and a series of generic computer
‘components’ that merely restate their individual functions––i.e., organizing,
mapping, identifying, defining detecting, and modifying. That is to say, they
merely describe the functions of the abstract idea, without particularity. This
is simply not enough under step two.” Intellectual Ventures I LLC, 850 F.3d
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at 1341. In sum, taking the claim elements separately, the functions
performed in claim 2 by the generic processor, generic memory, and generic
graphical user interface are purely routine and conventional.
Considered as an ordered combination, the generic computer
components of Appellant’s claimed invention add nothing that is not already
present when the limitations are considered separately. For example,
claim 2 does not, as discussed above, purport to improve the functioning of
the computer components themselves. Nor does it effect an improvement in
any other technology or technical field. Instead, claim 2 amounts to nothing
significantly more than an instruction to apply the abstract idea using generic
computer components performing routine computer functions. (See Final
Action 5; see also Answer 14.) That is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
Appellant’s other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. (See 2019 Guidance at 51 (“Eligibility-related guidance issued
prior to the Ninth Edition, R–08.2017, of the MPEP (published Jan. 2018)
should not be relied upon.”).)
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 2. Claims 3–9 and 11–18 fall with claim 2. See 37 C.F.R.
§ 41.37(c)(1)(iv).

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CONCLUSION
The Examiner’s rejection of claims 2–9, and 11–18 under 35 U.S.C.
§ 101 is affirmed.
Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–9, 11–18 101 eligibility 2–9, 11–
18

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