BGC PARTNERS, INC.

Patent Trials and Appeals Board

Feb 24, 2020

13898657 - (D) (P.T.A.B. Feb. 24, 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.
13/898,657 05/21/2013 James LONGMAN 04-6170-CIP2-C2 4088
63710 7590 02/24/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
HAMILTON, SARA CHANDLER
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
02/24/2020 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 LONGMAN and JOSEPH C. NOVIELLO
Appeal 2019-001136
Application 13/898,657
Technology Center 3600
Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI,
ADAM J. PYONIN, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge Curcuri.

Opinion Dissenting filed by Administrative Patent Judge Baumeister.

CURCURI, 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 25, 26, 28, 31–34, 36, 37, and 40–43.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as BGC Partners, Inc.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to “providing security to a game controller
device for electronic trading.” Spec. 1:8–9. Claim 25, reproduced below, is
illustrative of the claimed subject matter:
25. A method comprising:
storing, by at least one processor, a plurality of controller
signal relationships comprising a plurality of first controller
signal relationships, each controller signal relationship
associating one or more game controller signals with one of a
plurality of trading system commands associated with
electronic trading of financial instruments via a trading
platform;
receiving, by the at least one processor, a plurality of first
game controller signals generated via a first game controller;
determining, by the at least one processor, based on the
first controller signal relationships and the received plurality of
first game controller signals, that one or more of the plurality of
received first game controller signals are erroneous; and
based on the determination that one or more of the
plurality of received game controller signals are erroneous,
communicating, by the at least one processor, an instruction to
lock the first game controller.
Appeal Br. 25 (Claims Appendix).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Mazza US 2002/0070915 A1 June 13, 2002
Niedzwiecki 5,896,125 Apr. 20, 1999
Varley US 2003/0216185 A1 Nov. 20, 2003
REJECTIONS
Claims 25, 26, 28, 31–34, 36, 37, and 40–43 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more. Final Act. 5–7.
Claims 25, 26, 28, 31–33, 36, 37, and 40–43 are rejected under pre-
AIA 35 U.S.C. § 103 as obvious over Mazza and Niedzwiecki. Final Act.
10–18.
Claim 34 is rejected under pre-AIA 35 U.S.C. § 103(a) as obvious
over Mazza, Niedzwiecki, and Varley. Final Act. 18–19.
OPINION
The Judicial Exception Rejection of Claims 25, 26, 28, 31–34, 36, 37, and
40–43
The Examiner determines claims 25, 26, 28, 31–34, 36, 37, and 40–43
are directed to a judicial exception without significantly more. Final Act. 5–
7. In particular, the Examiner determines the following:
The claimed invention is directed to non-statutory subject
matter because the claim(s) as a whole, considering all claim
elements both individually and in combination, do not amount to
significantly more than an abstract idea. The claim(s) is/are
directed to the abstract idea of providing security to a game
controller device for electronic trading. Providing security to a
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game controller device for electronic trading is a fundamental
economic practice and method for organizing human activity.
The additional element(s) or combination of elements in the
claim(s) other than the abstract idea per se amount(s) to no more
than: (i) mere instructions to implement the idea on a computer,
and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry. Viewed as a whole, these additional claim
element(s) do not provide meaningful limitation(s) to transform
the abstract idea into a patent eligible application of the abstract
idea such that the claim(s) amounts to significantly more than the
abstract idea itself. Therefore, claims 25, 26, 28, 31-34, 36-37
and 40-44 are rejected under 35 U.S.C. 101 as being directed to
non-statutory subject matter.
Final Act. 7; see also Ans. 3–11.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[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).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
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in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.” Diehr,
450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court also
indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, . . . and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citing Benson and
Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a
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law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.”).
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 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77)
(alterations in original). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Guidance”); updated by USPTO, October 2019 Update: Subject
Matter Eligibility (Oct. 17, 2019) (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf).
Under the 2019 Guidance, we first look to whether the claim recites
the following:
(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
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. 2018)).
2019 Guidance, 84 Fed. Reg. at 52–55.
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.
2019 Guidance, 84 Fed. Reg. at 56.
Are the claims patent-eligible?
Step 1
Claim 25 recites a method, which falls within the “process” category
of 35 U.S.C. § 101. Claim 40 recites an apparatus, which falls with the
“machine” category of 35 U.S.C. § 101. Claim 43 recites a machine-readable
medium, which falls within the “manufacture” category of 35 U.S.C. § 101.
Thus, we must determine whether the claims recite a judicial exception and
fail to integrate the exception into a practical application. See 84 Fed. Reg. at
54–55. If both elements are satisfied, the claim is directed to a judicial
exception under the first step of the Alice/Mayo test. See id.
Step 2A—Prong One
The Examiner determines claims 25, 26, 28, 31–34, 36, 37, and 40–43
are directed to an abstract idea. See Final Act. 7; see also Ans. 3–6, 9–10.
Contrary to the Examiner’s determinations, we determine the claim
limitations determined by the Examiner to recite an abstract idea do not
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correspond to certain methods of organizing human activity, mental
processes, or mathematical concepts. In particular, claim 25 recites the
following steps:
storing, by at least one processor, a plurality of controller
signal relationships comprising a plurality of first controller
signal relationships, each controller signal relationship
associating one or more game controller signals with one of a
plurality of trading system commands associated with
electronic trading of financial instruments via a trading
platform;
receiving, by the at least one processor, a plurality of first
game controller signals generated via a first game controller;
determining, by the at least one processor, based on the
first controller signal relationships and the received plurality of
first game controller signals, that one or more of the plurality of
received first game controller signals are erroneous; and
based on the determination that one or more of the
plurality of received game controller signals are erroneous,
communicating, by the at least one processor, an instruction to
lock the first game controller.
We disagree with the Examiner’s determination that these activities recite an
abstract idea, pursuant to USPTO guidance.
In the context of the invention, these steps describe a particular way of
providing security to a game controller device for electronic trading in which
received game controller signals are determined to be erroneous and, based
on this determination, an instruction to lock the game controller is
communicated. We do not see how such steps amount to fundamental
economic principles or practices, or otherwise amount to certain methods of
organizing human activity. Regarding fundamental economic principles or
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practices, we recognize that the game controller signals are associated with
trading system commands; however, the overall process described by the
claim—locking the game controller when signals are erroneous—is not
economic in nature. For example, the process described by the claim is not
“hedging, insurance, [or] mitigating risk.” 84 Fed. Reg. at 52.
Similarly, these recitations are also simply not mathematical concepts
or mental processes, as described in our guidance. See 84 Fed. Reg. at 52.
Put another way, the recited steps are a process that only exists and has
meaning within the context of a computer environment and cannot be
practically performed in the human mind, and are not mere mathematical
relationships. See 84 Fed. Reg. at 52.
The Examiner does not sufficiently articulate why the claimed
concepts fall within the subject matter groupings of abstract ideas of
mathematical concepts, certain methods of organizing human activity, or
mental processes. See 84 Fed. Reg. 52.
Accordingly, we are persuaded by Appellant’s arguments that the
claimed subject matter does not recite an abstract idea. See Appeal Br. 10–
11; see also Reply Br. 2 (“Applicant respectfully submits that the claimed
invention provides an improved user interface which may increase the
efficiency of using the electronic devices.”).
In addition, Appellant’s Specification discloses the following:
Another advantage is that in some embodiments, the
system may identify erroneous game controller signals received
from a game controller based on a set of stored relationships
between game controller signals and trading system commands.
Such erroneous signals may include signals generated by
manipulations of the game controller (such as pressing one or
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more buttons and/or moving one or more joysticks or directional
pads in particular directions) that do not correspond with any
trading system command, or that correspond with a trading
system command that is invalid in a particular trading situation.
Spec. 4:29–5:4
Appellant’s Specification further discloses the following: “Game
controller device 34 may also include an auto-lock feature that locks the
game controller device 34 automatically in response to receiving a particular
number of erroneous inputs or a particular number of simultaneous inputs.”
Spec. 24:27–25:29.
That is, the Specification describes the problem of erroneous game
controller inputs, and the claimed solution in the recited steps is a particular
way of providing security to a game controller device for electronic trading
in which received game controller signals are determined to be erroneous
and, based on this determination, an instruction to lock the game controller
is communicated.
Accordingly, even if arguably the claims were considered to recite an
abstract concept, because claim 25 overcomes a problem specifically arising
in the realm of computers, under Prong 2 “the claimed solution is necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks,” and, accordingly, the claims are
not directed to an abstract idea. DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014). See Appeal Br. 14 (“The useful
improvement of the claimed invention is endemic to its computer
environment.”).
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Thus, we do not sustain the rejection of independent claim 25 under
35 U.S.C. § 101. Claims 26, 28, 31–34, 36, and 37 depend from claim 25.
We, therefore, also do not sustain the rejection of those claims under 35
U.S.C. § 101.
Independent claims 40 and 43 recite similar language as claim 25.
We, therefore, also do not sustain the rejection of independent claims 40 and
43 under 35 U.S.C. § 101. Claims 41 and 42 depend from claim 40. We,
therefore, also do not sustain the rejection of those claims under 35 U.S.C.
§ 101.

The Obviousness Rejection of Claims 25, 26, 28, 31–33, 36, 37, and 40–43
over Mazza and Niedzwiecki
The Examiner finds Mazza and Niedzwiecki teach all limitations of
claim 25. Final Act. 10–12. In particular, the Examiner finds Niedzwiecki
teaches “based on the determination that one or more of the plurality of
received game controller signals are erroneous, communicating, by the at
least one processor, an instruction to lock the first game controller,” as
recited in claim 25. Final Act. 11 (citing Niedzwiecki col. 1, ll. 27–35;
col. 3, ll. 15–37).
Niedzwiecki discloses the following:
Personal computers, which have the ability to run the same
or similar video game programs as do dedicated platform
systems do not typically have the same built in controller
interface hardware that dedicated platforms systems have. This
prevents a game controller, such as a joystick or directional pad
type controller, to be used as input for one or multiple players
playing a video game without specialized controller interface
hardware first being installed.
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Niedzwiecki col. 1, ll. 27–35.
Niedzwiecki further discloses the following:
A second relevant prior art example of technology that
recreates key scan codes for communications with a personal
computer via the keyboard port is the SUNCOM SFX PC
JOYPAD WITH KEYBOARD EMULATION OPTION. This
directional pad type video game controller device uses standard
keyboard emulation technology, allowing the user to send input
to the computer via the keyboard port or industry standard game
port. When functioning in keyboard emulation mode, the device
can be configured to send user specified key scan codes to the
computer’s keyboard port. These configurations are stored in
non-volatile type memory. Like other keyboard emulation type
video game controllers, this device lacks any special hardware
that would allow it to interface and communicate with non-
standard video game controllers, or other type controllers that are
designed to work with other video game platform hardware.
Additionally, the joypad is designed to operate alone, as a single
controller. When multiple joypads are used together, or one
joypad is used while the keyboard is also being used
simultaneously, communications errors between the keyboard,
joypad, and keyboard port can occur. This prohibits the use of
two or more joypads for multiple player games where multiple
controllers are required.
Niedzwiecki col. 3, ll. 15–37.
Among others, Appellant presents the following principal argument:
Notably, while the passage mentions the possibility of
“communication errors,” it does not actually disclose or suggest
any detection by the apparatus of any error in communication.
As a simple game of “telephone” amply demonstrates, it is one
thing to receive a communication that happens to be erroneous,
and quite another to appreciate that the communication is in fact
erroneous. Here, the cited passages do not disclose or suggest
that the system appreciates the error. Thus, the cited passages do
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not actually disclose or suggest any affirmative “determination
that one or more of the plurality of received game controller
signals are erroneous.” Nor can they disclose or suggest
“communicating... an instruction to lock the first game
controller” “based on the determination that one or more of the
plurality of received game controller signals are erroneous.”
Appeal Br. 20; see also Appeal Br. 21 (“The cited passages do not disclose
or suggest that any joystick becomes locked or inoperative, nor do they
disclose that any system component actually communicates any affirmative
instruction to lock a game controller.”).
In response, the Examiner explains as follows:
Niedzwiecki discloses how in some scenarios such as
when multiple game controllers (e.g., joypads, keyboards etc.)
(akin to game controller(s) claimed) are being used
simultaneously, errors such as communication errors (akin to
erroneous game controller signal(s) claimed) between the
multiple game controllers can occur. Niedzwiecki further
discloses how this can result in prohibiting the use of the multiple
game controller(s) (akin to instruction to lock the first game
controller). See also, citations supra including at least
(Niedzwiecki, col. 3, lines 15-37).
Ans. 14.
Appellant’s arguments raise the issue of whether Niedzwiecki teaches
the key disputed limitation of “based on the determination that one or more
of the plurality of received game controller signals are erroneous,
communicating, by the at least one processor, an instruction to lock the first
game controller,” as recited in claim 25. On the record before us, we find
Niedzwiecki does not teach the key disputed limitation.
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The first cited passage of Niedzwiecki discloses that a personal
computer does not typically have the same controller interface hardware as a
dedicated platform system. See Niedzwiecki col. 1, ll. 27–35.
The second cited passage of Niedzwiecki discloses a joypad designed
to operate alone as a single controller, where the joypad emulates a keyboard
to send information to the computer keyboard port. See Niedzwiecki col. 3,
ll. 15–37. In particular, Niedzwiecki discloses “[w]hen multiple joypads are
used together, or one joypad is used while the keyboard is also being used
simultaneously, communications errors between the keyboard, joypad, and
keyboard port can occur. This prohibits the use of two or more joypads for
multiple player games where multiple controllers are required.” Niedzwiecki
col. 3, ll. 32–37. We interpret this particular passage of Niedzwiecki as
describing that communication errors occur when multiple devices are
attempted to be used together. We further interpret this particular passage as
describing that two or more joypads may not be used together.
First, we appreciate Appellant’s argument making a distinction
between the occurrence of a communication error and the detection
(determination) of such an error. Nonetheless, even if we assume that
Niedzwiecki suggests, at least in some sense, that errors are detected,
Niedzwiecki does not describe or suggest “based on the determination that
one or more of the plurality of received game controller signals are
erroneous, communicating, by the at least one processor, an instruction to
lock the first game controller,” as recited in claim 25. Put another way,
Niedzwiecki’s disclosure of prohibiting merely means that multiple devices
should not be used together because it would result in communication errors;
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this disclosure does not teach locking or communicating an instruction to
lock a controller in response to such errors.
We, therefore, do not sustain the obviousness rejection of independent
claim 25. Claims 26, 28, 31–33, 36, and 37 depend from claim 25. We,
therefore, also do not sustain the obviousness rejection of those claims.
Independent claims 40 and 43 recite similar language as claim 25.
We, therefore, also do not sustain the obviousness rejection of independent
claims 40 and 43. Claims 41 and 42 depend from claim 40. We, therefore,
also do not sustain the obviousness rejection of those claims.

The Obviousness Rejection of Claim 34 over Mazza, Niedzwiecki, and
Varley
Claim 34 depends from claim 25. The Examiner does not find Varley
overcomes the deficiency of Niedzwiecki discussed above when addressing
claim 25. See Final Act. 18–19.
We, therefore, do not sustain the obviousness rejection of claim 34.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
25, 26, 28,
31–34, 36,
37, and 40–
43
101 Eligibility 25, 26, 28,
31–34, 36,
37, and 40–
43
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25, 26, 28,
31–33, 36,
37, and 40–
43
103(a) Mazza and
Niedzwiecki
25, 26, 28,
31–33, 36,
37, and 40–
43
34 103(a) Mazza,
Niedzwiecki, and
Varley
34
Overall
Outcome
25, 26, 28,
31–34, 36,
37, and 40–
43

REVERSED

BAUMEISTER, Administrative Patent Judge, dissenting.
I agree with the Majority regarding the reversal of the obviousness
rejection under 35 U.S.C. § 103. For the following reasons, though, I would
affirm the Examiner’s rejection of the claims under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter without reciting significantly
more.
Independent claim 25 is reproduced below with the paragraphs
enumerated for ease of reference and with emphasis added to indicate the
language that recites one or more abstract ideas:
A method comprising:
[(i)] storing, by at least one processor, a plurality of controller
signal relationships comprising a plurality of first controller
signal relationships, each controller signal relationship
associating one or more game controller signals with one of a
plurality of trading system commands associated with electronic
trading of financial instruments via a trading platform;
[(ii)] receiving, by the at least one processor, a plurality of first
game controller signals generated via a first game controller;
[(iii)] determining, by the at least one processor, based on the
first controller signal relationships and the received plurality of
first game controller signals, that one or more of the plurality of
received first game controller signals are erroneous; and
[(iv)] based on the determination that one or more of the
plurality of received game controller signals are erroneous,
communicating, by the at least one processor, an instruction to
lock the first game controller.
Step 2A, Prong 1
Under step 2A, prong 1, of the 2019 Guidance, we first are to look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
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organizing human activities such as a fundamental economic practice, or
mental processes). 84 Fed. Reg. at 52–54.
Limitation (i) recites “storing . . . a plurality of controller signal
relationships comprising a plurality of first controller signal relationships,
each controller signal relationship associating one or more game controller
signals with one of a plurality of trading system commands associated with
electronic trading of financial instruments via a trading platform.” Storing
data reasonably can be characterized as a mental process, such as making
note of a mental observation either in the mind or with the aid of paper and
pencil. The 2019 Guidance expressly recognizes such mental processes that
can be performed in the human mind as constituting patent-ineligible
abstract ideas. Id. at 52; see also October 2019 PEG Update at 9 (“A claim
that encompasses a human performing the step(s) mentally with the aid of a
pen and paper recites a mental process”) (emphasis omitted). Accordingly,
limitation (i) reasonably can be characterized as reciting a patent-ineligible
abstract idea.
Limitation (iii) recites a step of “determining based on the first
controller signal relationships and the received plurality of first game
controller signals, that one or more of the plurality of received first game
controller signals are erroneous.” Making determinations based on stored
and received information reasonably can be characterized as a mental
process. More specifically, making determinations reasonably can be
characterized as an evaluation, judgment, or opinion that can be performed
in the human mind. As noted above, the 2019 Guidance recognizes mental
processes that can be performed in the human mind as constituting patent-
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ineligible abstract ideas. Id. Accordingly, limitation (iii) reasonably can be
characterized as reciting a patent-ineligible abstract idea.
For these reasons, both of limitations (i) and (iii) reasonably can be
characterized as, at the very least, reciting a judicial exception to patent-
eligible subject matter under step 2A, prong 1, of the 2019 Guidance.
Accordingly, I disagree with the Majority’s determination to the contrary,
and I would proceed to analyze claim 25 under step 2A, prong 2, of the
2019 Guidance.
Step 2A, Prong 2
Under step 2A, prong 2, of the 2019 Guidance, we next are to analyze
whether claim 25 recites additional elements that, individually or in
combination, integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance provides
exemplary considerations that are indicative of an additional element or
combination of elements integrating the judicial exception into a practical
application, such as an additional element reflecting an improvement in the
functioning of a computer or an improvement to other technology or
technical field. Id. at 55; MPEP § 2106.05(a).
Limitation (ii) recites “receiving, by the at least one processor, a
plurality of first game controller signals generated via a first game
controller.” This step only entails the processor receiving signals. It does
not further entail a controller generating or sending signals.
As such, this step reasonably can be characterized as merely
constituting insignificant pre-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
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about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
Limitation (iv) recites “based on the determination that one or more
of the plurality of received game controller signals are erroneous,
communicating, by the at least one processor, an instruction to lock the first
game controller.” The language “to lock the first game controller merely
describes the intended purpose for why the processor sends an instruction.
The step, as currently written, does not further entail a controller receiving
the instructions or affirmatively locking itself.
Similar to limitation (ii), then, limitation (iv) does not add any
meaningful limitations to the abstract idea because it reasonably may be
characterized as merely being directed to the insignificant post-solution
activity of transmitting data. E.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1241–42 (Fed. Cir. 2016) (holding that printing or downloading
generated menus constituted insignificant extra-solution activity).
Limitation (i), discussed above in the prong-1 portion of the Analysis,
more fully recites that the act of storing the control signal relationships is
performed “by at least one processor.” It was well understood that received
computer data typically must be stored—either in long-term storage or in a
short-term cache or buffer so that the data can be processed as intended. By
determining that gathering, transmitting, and displaying data constitutes
insignificant extra-solution activity, the courts implicitly have determined
that storing data, without more, also constitutes insignificant extra-solution
activity. As such, limitation (i) also reasonably can be characterized as
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merely being directed to the insignificant extra-solution activity of storing
data by a processor.
Appellant argues that the claims are not directed to patent-ineligible
subject matter because they do not preempt an abstract idea. Appeal Br. 13.
This argument is unpersuasive.
The Supreme Court has described “the concern that drives this
exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption.” Alice, 573 U.S. at 216.
However, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. As our reviewing court has explained: “The Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability” and “[f]or this reason, questions on
preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 573 U.S. at 216). Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa, 788 F.3d at 1379.
Appellant further argues “the ‘claimed solution is necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks:”
Similar to the claims in DDR Holdings, [the] present
claims solve a problem rooted in computer technology to
improve functionality of gaming controller devices by
automatically locking such devices after detecting erroneous
electronic communication signals. The claimed solution is
necessarily implemented in a networked computer environment
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wherein game controllers communicate signals to a processor of
a computer system. The useful improvement of the claimed
invention is endemic to its computer environment.
Appeal Br. 14.
This argument is unpersuasive because it is not commensurate in
scope with the actual language of claim 25. Specifically, claim 25 does not
affirmatively recite a game controller, much less recite one that contains
improved capabilities or functionality for locking. Claim 25 merely recites
that the noted mental steps and extra-solution activity are performed by “at
least one processor.”
More specifically, claim 25 merely recites that the processor “stores
. . . controller signal relationships” (limitation (i)), receives signals from a
controller (limitation (ii)), determines whether the received signals are
erroneous based upon the stored instructions (limitation (iii)), and transmits
an additional signal or “instruction to lock the first game controller” in
response to making a determination (limitation (iv)). That is, claim 25
currently is written so broadly as to recite a processor that is programmed to
receive input signals, analyze the inputs, and provide output signals. Those
functions are exactly what standard, generic computers do and have done
since the dawn of computing.
As such, claim 25’s limitations describe a generic computer
component in a manner that amounts to mere instructions to implement the
abstract idea on a computer, and, therefore, the limitations are insufficient to
make the claim patent eligible. See Alice, 573 U.S. at 226 (determining that
the claim limitations “data processing system,” “communications
controller,” and “data storage unit” were generic computer components that
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amounted to mere instructions to implement the abstract idea on a
computer); October 2019 PEG Update at 11–12 (recitation of generic
computer limitations for implementing the abstract idea “would not be
sufficient to demonstrate integration of a judicial exception into a practical
application”).
For these reasons, I am not persuaded that claim 25 is directed to an
improvement in the function of a computer or to any other technology or
technical field. MPEP § 2106.05(a). Nor is claim 25 directed to a particular
machine or transformation. MPEP §§ 2106.05(b), (c). Nor has Appellant
persuasively demonstrated that claim 25 adds any other meaningful
limitations for the purposes of the analysis under Section 101. MPEP
§ 2106.05(e). Accordingly, Appellant has not persuaded me that claim 25
integrates the recited abstract ideas into a practical application within the
meaning of the 2019 Guidance. See 2019 Guidance, 84 Fed. Reg. at 52–55.
Step 2B
Under step 2B of the 2019 Guidance, we next are to determine
whether claim 25 adds any specific limitations beyond the judicial exception
that, either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. 2019 Guidance,
84 Fed. Reg. at 56; MPEP § 2106.05(d).
Appellant argues
independent claim 1’s recitation of “communicating, by the at
least one processor, an instruction to lock the first game
controller” “based on the determination that one or more of the
plurality of received game controller signals are erroneous”
amounts to significantly more than a fundamental economic
practice or method of organizing human activity.
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Appeal Br. 12.
This argument is unpersuasive because it constitutes a mere
restatement of the claim language. See 27 C.F.R. § 41.37(c)(iv) (“A
statement [that] merely points out what a claim recites will not be considered
an argument for separate patentability of the claim.”).
Furthermore, Appellant’s Specification indicates that the
additionally recited processor was well-understood, routine, and
conventional:
A user terminal 12 may include a computer system and
appropriate software to allow user 22 to engage in trading
activity via trading platform 14. As used in this document, the
term “computer” refers to any suitable device operable to accept
input, process the input according to predefined rules, and
produce output, for example, a personal computer, workstation,
network computer, wireless data port, wireless telephone,
personal digital assistant, one or more processors within these or
other devices, or any other suitable processing device.
Spec. 8.
Furthermore, Appellant’s Specification does not indicate that
the steps performed by the conventional processor add any
significance when viewed as an ordered combination. Rather,
Appellant’s Specification indicates that the invention is directed to an
abstract idea that is made more efficient with generic computer
components—receiving data, making determinations, and outputting
signals in response to the determinations. Spec. 19–20.
The activities of receiving, determining, and outputting data, as
claimed, were well-known, conventional, and routine in the art. Previous
cases have similarly found that such activities are conventional computer
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activities or routine data-gathering steps. See, e.g. Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims,
understood in light of the specification, requires anything other than off-the-
shelf, conventional computer, network, and display technology for
gathering, sending, and presenting the desired information.”); OIP Techs. v.
Amazon.com, Inc., 788 F.3d 1359, 1363, (Fed. Cir. 2015) (claims reciting,
inter alia, sending messages over a network, gathering statistics, using a
computerized system to automatically determine an estimated outcome, and
presenting offers to potential customers found to merely recite “well-
understood, routine conventional activities” by either requiring conventional
computer activities or routine data-gathering steps); see also 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.”); Bancorp Servs. v. Sun Life
Assurance Co., of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“The
computer required by some of Bancorp’s claims is employed only for its
most basic function, the performance of repetitive calculations, and as such
does not impose meaningful limits on the scope of those claims.”).
For these reasons, Appellant has not demonstrated sufficiently that
claim 25 recites additional elements that, either individually or as an ordered
combination, amount to significantly more than the judicial exception within
the meaning of the 2019 Guidance. 84 Fed. Reg. at 52–55; MPEP
§ 2106.05(d).
Additional Arguments
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Appellant argues that “the Office Action has failed to provide an
analysis of each claim individually based on the particular elements of that
claim.” Appeal Br. 12. According to Appellant, “the Office Action[,
instead,] lumps all of the pending claims into a single rejection of all the
claims considered together.” Appellant also argues, for example, that the
arguments for why “‘the claims recite significantly more than the alleged
abstract idea’ applies differently to claims 25 and 26 because the
‘significantly more’ in claim 25 may be different from the ‘significantly
more’ in claim 26.” Id. at 15 (emphasis added).
These arguments are unpersuasive. Baldly alleging that various
claims may recite differing additional elements that constitute significantly
more does not constitute an argument on the merits for what additional
elements any particular claim actually does recite, much less constitute a
substantive argument for why the asserted additional elements allegedly
constitute significantly more.
Likewise, asserting that the rejection improperly lumps the claims
together does not constitute a separate argument on the merits regarding the
additional claims’ patentability:
When multiple claims subject to the same ground of rejection are
argued as a group or subgroup by appellant, the Board may select
a single claim from the group or subgroup and may decide the
appeal as to the ground of rejection with respect to the group or
subgroup on the basis of the selected claim alone.
Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims [that] appellant has
grouped together shall constitute a waiver of any argument that
the Board must consider the patentability of any grouped claim
separately.
37 C.F.R. § 41.37(c)(iv).
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If Appellant believes that the Examiner’s lumping of the claims
constituted an improper examination, the appropriate recourse is for
Appellant to file a petition under 37 C.F.R. § 1.181 for the Director to
invoke his supervisory authority.
Appellant further argues that dependent claim 28 is separately
patentable from claim 25. Appeal Brief 15. This argument is unpersuasive
because Appellant merely reproduces the text of claim 28. Id. “A statement
[that] merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.” 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant argues that the July 2015 update to the Office’s 2014
Interim Eligibility Guidance on Alice “instructs examiners to refer to the
body of case law precedent in order to identify abstract ideas by way of
comparison to concepts already found to be abstract.” Appeal Br. 13
(emphasis omitted).
This argument is unpersuasive. The 2019 Guidance “supersedes all
versions of the USPTO’s ‘‘Eligibility Quick Reference Sheet Identifying
Abstract Ideas’ (first issued in July 2015 and updated most recently in
July 2018).” 2019 Guidance, 84 Fed. Reg. 51. In doing so, the
2019 Guidance replaces any Office instructions to Examiners to compare the
claims to concepts already found to be abstract with the requirement that the
Examiner follow steps 2A, prongs 1 and 2, and step 2B, as outlined above.
Id. at 52.
Conclusion
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Accordingly, I would sustain the Examiner’s rejection of claim 25
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
I, likewise, would sustain the 101 rejection of claims 26, 28, 31–34, 36, 37,
and 40–43, for which Appellant does not provide separate substantive
arguments. Appeal Br. 14–15.