Stuart Fraser et al.

Patent Trials and Appeals Board

Dec 27, 2019

13550011 - (D) (P.T.A.B. Dec. 27, 2019)

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.
13/550,011 07/16/2012 Stuart Fraser 99-1002-C5 7026
63710 7590 12/27/2019
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
12/27/2019 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 STUART FRASER, ANDREW C. GILBERT, PHILIP M.
GINSBERG, GIENN D. KIRWIN, HOWARD W. LUTNICK, and
MICHAEL E. WILLIAMS
Appeal 2018-008888
Application 13/550,011
Technology Center 3600

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
JOYCE CRAIG, Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 22–25 and 38–53.2 See Final Act. 1.
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,
L.P. Appeal Br. 1.
2 Claims 1–21 and 26–37 were previously cancelled. Appeal Br. 6.
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CLAIMED SUBJECT MATTER
The claims are directed to systems and methods for trading. Spec. ¶ 2.
Claim 22, reproduced below, is illustrative of the claimed subject matter:
22. A method, comprising:
detecting, by at least one processor from a graphical user
interface of a first workstation, a presence of a first data source
including data representing a queue having a first bid or a first
offer;
detecting, by at least one processor from the first work
station, instructions defining conditions upon which a second
data source including data representing a queue having a second
bid or a second offer is to be automatically generated on behalf
of the first workstation;
detecting, by at least one processor from a graphical user
interface of a second workstation, a hit of the first bid thereby
accepting the first bid or a lift of the first offer thereby accepting
the first offer, the hit of the first bid or the lift of the first offer
resulting in a trade between the first workstation and the second
workstation; and
responsive to the trade between the first workstation and
the second workstation resulting from the hit of the first bid or
the lift of the first offer, automatically generating, by at least one
processor, the second bid or offer for the first workstation based
upon the instructions.
REJECTIONS
Claims 22–25 and 38–53 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter.
Final Act. 2–3.
Claims 22–25 and 38–53 stand rejected under 35 U.S.C. § 112, first
paragraph, as lacking written description support. Final Act. 3–4.
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ANALYSIS
Rejection of Claims Under 35 U.S.C. § 112, First Paragraph
Claim 22 recites, in part, “detecting, by at least one processor from a
graphical user interface of a first workstation, a presence” and “detecting, by
at least one processor from a graphical user interface of a second
workstation, a hit of the first.” Appeal Br 15 (Claims App’x).
The Examiner rejected claims 22–25 and 38–53 as failing to comply
with the written-description requirement of § 112 because the originally
filed Specification lacks support for the limitations set forth above. Final
Act. 4.
Appellant argues that one of ordinary skill in the art would have
understood from Figure 17 and paragraph 41 of the Specification that “the
GUI being executed by the processor would detect the ‘presence of a first
data source . . . having a first bid or a first offer,’” as recited in claim 22.
Appeal Br. 12 (emphasis omitted). Appellant further argues that an artisan of
ordinary skill would have understood that paragraph 72 of the Specification
provides support for the limitation “detecting, by at least one processor from
a graphical user interface of a second workstation, a hit of the first bid
thereby accepting the first bid or a lift of the first offer,” as recited in claim
22. Id. Appellant did not reply substantively to the Examiner’s finding that
“[h]aving the processor detect such information from the interface is not
supported in the specification.” See Ans. 5; see also Appeal Br. 12
According to the Examiner, there is a fundamental difference between
“detecting, by a processor from a graphical user interface,” as claim 22
requires, and “detecting, by a graphical user interface from a processor,” as
Appellant describes the support in the Specification. Ans. 5. The Examiner
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found that “[h]aving the processor detect such information from the interface
is not supported in the specification.” Id.
“The test for the sufficiency of the written description ‘is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.”’ Vasudevan Software, Inc, v. MicroStrategy, Inc., 782 F.3d
671, 682 (Fed. Cir. 2015) (citing Ariad Pharms., Inc, v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)).
Appellant has persuaded us that the Examiner erred. The Specification
describes that “information about trading progress and participants is
provided to each participant at a workstation in the form of one or more
selectively configured screen displays.” Spec. ¶¶ 40–41. Paragraph 72 of the
Specification describes a “process” performing steps related to the
processing of a bid/offer. An artisan of ordinary skill, reading Figure 17 and
paragraphs 40, 41, and 72 of Appellant’s Specification, would have
appreciated that a process makes determinations based on information from
a graphical user interface using a processor. Thus, the Specification
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.
For these reasons, on the record before us, we are persuaded the
Examiner erred, and we reverse the written description rejection under
35 U.S.C. § 112, first paragraph, of independent claim 22 and grouped
claims 23–25 and 38–53.

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Rejection of Claims Under 35 U.S.C. § 101
Appellant argues that the Examiner’s rejection of claims 22–25 and
38–53 under 35 U.S.C. § 101 is in error. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv) (2017).
Appellant argues claims 22–25 and 38–53 as a group. Appeal Br. 6. Given
our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the § 101
rejection of claims 22–25 and 38–53 based on representative claim 22.
Legal Standard
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014). In addition, the Office published revised
guidance for evaluating subject matter eligibility under 35 U.S.C.
§ 101, specifically with respect to applying the Alice framework. USPTO,
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Office Guidance”). If a claim falls within one of the
statutory categories of patent eligibility (i.e., a process, machine,
manufacture, or composition of matter) then the first inquiry is whether the
claim is directed to one of the judicially recognized exceptions (i.e., a law of
nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217.
As part of this inquiry, we must “look at the ‘focus of the claimed advance
over the prior art’ to determine if the claim’s ‘character as a whole’ is
directed to excluded subject matter.” Affinity Labs of Tex., LLC v.
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DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). Per Office
Guidance, this first inquiry has two prongs of analysis (i) does the claim
recite a judicial exception (e.g., an abstract idea), and (ii) if so, is the judicial
exception integrated into a practical application. 84 Fed. Reg. at 54. Under
the Office Guidance, if the judicial exception is integrated into a practical
application, see infra, the claim is patent eligible under § 101. 84 Fed. Reg.
at 54–55. If the claim is directed to a judicial exception (i.e., recites a
judicial exception and does not integrate the exception into a practical
application), the next step is to determine whether any element, or
combination of elements, amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56. If the claim is
“directed to” an abstract idea, we turn to the second step of the Alice and
Mayo framework, where “we must examine the elements of the claim to
determine whether it contains an ‘“inventive concept”’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (citation omitted).
To summarize, under the current Office Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“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:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See Office Guidance.
Step 1
Claim 22, as a method claim, falls within the process category of
§ 101. See Office Guidance, 84 Fed. Reg. at 53–54 (citing MPEP
§§ 2106.03, 2106.06).
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 22 is directed to “trading
between certain conditions or instructions,” which is a certain method of
organizing human activity, and thus an abstract idea. Final Act. 2.
Appellant describes the present invention as relating to “managed
trading of select classes of assets, especially currencies and options, but also
securities, financial instruments, commodities, and their derivatives in
accordance with specific protocols in an auction format with controlled
sequences of auction events.” Spec. ¶ 2.
Consistent with Appellant’s description of the claims, we agree with
the Examiner that the claims at least recite certain methods of organizing
human activity, specifically an interface for a fundamental economic
practice of trading. See Office Guidance, 84 Fed. Reg. at 52. The recent
precedential decision in Trading Technologies International, Inc. v. IBG
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LLC, 921 F.3d 1084 (Fed. Cir. 2019), is instructive. That case involved, in
part, “a user interface for an electronic trading system that allows a remote
trader to view trends in the orders for an item, and provides the trading
information in an easy to see and interpret graphical format.” Id. at 1087
(quotation omitted). Under Alice Step 1, the Federal Circuit agreed with the
Board that the claims were “directed to the abstract idea of graphing (or
displaying) bids and offers to assist a trader to make an order” and “placing
an order based on displayed market information is a fundamental economic
practice.” Id. at 1092 (quotation omitted). Given that the Federal Circuit held
the claims for a trading interface in Trading Technologies v. IBG were
directed to an abstract idea, the claims for a trading interface here at least
recite an abstract idea that is fairly characterized as a fundamental economic
practice, which falls into the “certain methods of organizing human activity”
category of abstract ideas. See 84 Fed. Reg. at 52.
Appellant argues that the Examiner erred in oversimplifying the
claims “by looking at them generally without any analysis of the specific
features recited in the claims.” Appeal Br. 9 (emphasis omitted). In Trading
Technologies v. IBG the Federal Circuit stated, “[t]he fact that the claims
add a degree of particularity as to how an order is placed in this case does
not impact our analysis at step one.” 921 F.3d at 1092. The same is true here.
Because we agree with the Examiner that the claim recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
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Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Because we determined that claim 22 recites a patent-ineligible
concept, we next determine whether the recited judicial exception is
integrated into a practical application of that exception by: (a) identifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
Office Guidance, 84 Fed. Reg. at 55 n.24. In claim 22, the additional
elements include the recited “processor” and “workstation.” Final Act. 3.
The Examiner determined that none of the additional limitations is
sufficient to amount to significantly more than the judicial exception
because the “recited generic processor components perform no more than
their basic processor functions.” Final Act. 3.
Appellant argues that the claims amount to an improvement in
computer performance. Appeal Br. 8. Appellant argues that claim 22
improves network communication between a first workstation
and a second workstation with respective graphical user
interfaces that may help reduce the number of transactions over
the network. That is, the claimed subject matter is drawn to
graphical user interfaces that provide advantages over the prior
art systems including improving the efficiency of electronic
devices.
Id.(emphasis omitted). In particular, Appellant argues that the
Specification’s description of a touch screen, interactive features, and the
automatic translation of date indicators improves the graphical user interface
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by “improving specific structures and coordinated functionality of the
graphical user interface and by enabling a variety of inputs and outputs via
networked communication.” Appeal Br. 8 (emphasis omitted). According to
Appellant, “these features at least help reduce computer workload including
computer resources such as memory resources, processor resources, and
network resources.” Id. (emphasis omitted).
Appellant’s arguments are not persuasive. Appellant has not shown
that claim 22 includes additional elements that improve the underlying
computer, or other technology. The fact that the steps can be performed
more efficiently via a computer does not materially alter the patent eligibility
of the claimed subject matter. See Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). See
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (“[M]erely adding computer functionality to increase
the speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea.”); cf. Trading Techs. Int’l, Inc. v. IBG LLC, 921
F.3d 1084, 1090 (Fed. Cir. 2019) (“This invention makes the trader faster
and more efficient, not the computer. This is not a technical solution to a
technical problem.”). The features Appellant cites in the Specification are
not recited in claim 22.
Appellant’s reliance on Core Wireless Licensing S.A.R.L. v. LG
Electronics Inc., 880 F.3d 1356 (Fed. Cir. 2018) is unavailing. See Appeal
Br. 7. In Core Wireless, the court stated that “[t]he disclosed invention
improves the efficiency of using the electronic device[s].” Core Wireless,
880 F.3d at 1363. However, the court also explained that “[w]e also ask
whether the claims are directed to a specific improvement in the capabilities
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of computing devices” (id. at 1361), and then determine that “the claims are
directed to an improvement in the functioning of computers” (id. at 1363).
Thus, in Core Wireless, the improved efficiency of using the electronic
devices was related to an identified improvement in the functioning of
computers. The court found that the claims were directed to an improved
user interface and not the abstract concept of an index because the claim
limitations “disclose a specific manner of displaying a limited set of
information to the user, rather than using conventional user interface
methods to display a generic index on a computer.” Id.
Here, there are no additional elements or other limitations directed to
how the user interacts with the displayed data. Rather than presenting a
specific interface and implementation for navigating, as in Core Wireless,
Appellant’s claimed invention lacks a specific technical improvement in
functionality.
Appellant further argues that “the Examiner is unable to assert a prior
art reference,” which demonstrates that the claims recite a set of rules that
were not previously performable by the computer. Appeal Br. 10 (emphasis
omitted).
Appellant’s argument is not persuasive. 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. Diamond v. Diehr, 450 U.S.
175, 188–89 (1981). Our reviewing court further guides that “[e]ligibility
and novelty are separate inquiries.” Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016)
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(holding that “[e]ven assuming” that a particular claimed feature was novel
does not “avoid the problem of abstractness”).
Considering claim 1 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem. Claim 1 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. Here, the additional
limitation(s) do not integrate the judicial exception into a practical
application. More particularly, the claims do not recite (i) an improvement to
the functionality of a computer or other technology or technical field (see
MPEP § 2106.05(a)); (ii) a “particular machine” to apply or use the judicial
exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an
article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other
meaningful limitation (see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55.
Rather, claim 1 recites an abstract ideas as identified in Step 2A(i), supra,
and none of the limitations integrates the judicial exception into a practical
application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
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Cir. 2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
Considering the claim elements individually and as an ordered
combination, the Examiner determined that the additional elements in claim
22 amount to a well-understood, routine, and conventional limitation that
amounts to mere instructions to implement the abstract idea on a computer.
Appeal Br. 3.
Appellant does not direct our attention to anything in the Specification
that indicates the processor and workstation perform anything other than
well-understood, routine, and conventional functions. See buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive”); In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives data,
extracts classification information from the received data, and stores the
digital images insufficient to add an inventive concept); Alice, 573 U.S. at
225–26 (receiving, storing, sending information over networks insufficient
to add an inventive concept).
The Specification describes the recited “workstation” in general
terms. See, e.g., Spec. ¶ 31 (“Workstations 202 and 218 may be any suitable
means for presenting data and, in preferred embodiments, accepting
participant input.”). Although the Specification does not describe a
processor, it describes a server in general terms. Spec. ¶ 32 (“Server 206
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may be any suitable computer or server, such as a network or Internet
server.”).
Because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the claim limitations
may be broadly but reasonably construed as reciting conventional computer
components and techniques, particularly in light of Appellant’s
Specification, as cited above. See Berkheimer Memo3 § III.A.1; Spec. ¶¶ 31–
32. We conclude that claim 22 does not have an inventive concept because
the claim, in essence, merely recites various computer-based elements along
with no more than mere instructions to implement the identified abstract idea
using the computer-based elements.
Because the claims fail under both the Step 2A and Step 2B analyses,
we sustain the Examiner’s § 101 rejection of independent claim 22 and
grouped claims 23–25 and 38–53, not argued separately with particularity.
CONCLUSION
We affirm the decision of the Examiner rejecting claims 22–25 and
38–53 under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.

3 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (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).
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We reverse the decision of the Examiner rejecting claims 22–25 and
38–53 under 35 U.S.C. § 112, first paragraph, as lacking written description
support.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 22–25 and
38–53 is affirmed. See 37 C.F.R. § 41.50(a)(1).
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
22–25, 38–53 112, first
paragraph
Written
Description
22–25, 38–53
22–25, 38–53 101 Eligibility 22–25,
38–53

Overall Outcome 22–25,
38–53

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