BGC PARTNERS, INC.

Patent Trials and Appeals Board

Aug 5, 2020

15596256 - (D) (P.T.A.B. Aug. 5, 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.
15/596,256 05/16/2017 Howard W. Lutnick 06-1128-C1 9614
63710 7590 08/05/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
08/05/2020 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
mcatarino@cgolaw.com
patentdocketing@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD W. LUTNICK and PETER BARTKO
Appeal 2019-002916
Application 15/596,256
Technology Center 3600
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
KRISTEN L. DROESCH, Administrative Patent Judges.
DIXON, 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 1–20. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a) (2018). Appellant identifies the real party in interest as
BGC Partners, Inc. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a systems and methods for providing non-
fully-transparent markets enabling market-makers to disseminate their actual
prices directly to a trading system such that these prices, and the trades
executed thereon, are not readily available to all potential participants, while
minimizing the risk of trading with unprofitable customers. Spec. ¶ 80.
Claim 1, reproduced below, is illustrative of the claimed subject matter
(emphasis added):
1. A method for facilitating electronic trading over a network
with interfaces of computing devices, the method comprising:

receiving, via an interface of a computing device of an
electronic trading system, a request to reveal a first price of a
selected order having a first price and a second price associated
with the order, in which the request is submitted via an interface
of a remote computing device;

determining that the request provides an indication of a
willingness to generate a trading command to execute a trade
responsive to the order, to prevent communication of the first
price for display on the interface of the remote computing device;

transmitting, via an interface of a remote computing
device that is in communication with the interface of the
computing device of the electronic trading system over a
network, the first price and a size associated with the selected
order;

determining that the computing device of the electronic
trading system has not received a trading command responsive
to the order within a pre-determined period of time; and

executing, via the computing device of the electronic
trading system, the order at a default price and a default size.

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REJECTIONS
Claims 1–20 stand rejected on the ground of nonstatutory
obviousness-type double patenting over claims 1–20 of U.S. Patent No.
9,679,333 since the claims, if allowed, would improperly extend the “right to
exclude” already granted in the patent. Final Act. 4–6.
Claims 1–7 and 16–20 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception (i.e., a law of nature,
a natural phenomenon, or an abstract idea) without significantly more.2
OPINION
Obviousness-Type Double Patenting
With respect to claims 1–20, Appellant argues that the Final Action
does not show how any specific claim of the present application corresponds
to any specific reference claim. Appeal Br. 17. We agree with Appellant
that the Examiner has not set forth a sufficient mapping of the claimed
invention to establish a rejection under obviousness-type double patenting.
If the Examiner desires to maintain the obviousness-type double patenting
rejection, the Examiner should provide the requisite mapping of the claimed
invention to the patented claims. Specifically, we note that the Examiner

2 We note that dependent claims 19 and 20 dependent from apparatus
independent claim 8 which was not explicitly listed in the rejection.
Appellant did not argue these claims separately. Consequently, we group
them as falling with representative independent claim 1. Additionally, we
note that independent claim 8 is the same scope as method claim 1, but
expressly reciting the processor and memory with the same method steps
dependent claims 9–14 correspond to rejected dependent claims 2–7. We
leave it to the Examiner to further consider these claims in any further
prosecution.
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has not addressed the amended claim language “determining that the request
provides an indication of a willingness to generate a trading command to
execute a trade responsive to the order, to prevent communication of the first
price for display on the interface of the remote computing device” which
differs from the patented claims. The Examiner also has not addressed the
difference in the application claim language “determining that the computing
device of the electronic trading system has not received” and the patented
claim language “determining, via the computing device of the electronic
trading system, that the interface of the remote computing device of the user
has not submitted.” Although these differences do not appear substantial,
the Examiner has not addressed these differences. Consequently, we agree
with Appellant that the Examiner has not made the requisite showing, and
we do not sustain the Examiner’s rejection of claims 1–20 based upon
obviousness-type double patenting.
35 U.S.C. § 101
Appellant argues claims 1–7 and 16–20 as a group. Appeal Br. 16.
We select claim 1 to represent the group. See 37 C.F.R. § 41.37(c)(1)(iv).
Arguments which Appellant could have made but did not make in the Briefs
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985–86 (Fed. Cir.
2006).
Patent eligibility under 35 U.S.C. § 101 is a question of law that is
reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012).
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a. Legal Principles
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 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. E.g., 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 Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, under Step 2A, 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 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.
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252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If, under Step 2A, the claim is “directed to” an abstract idea, then,
under Step 2B, “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 (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). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
On January 7, 2019, the U.S. Patent and Trademark Office
(“USPTO”) published revised patent subject matter eligibility guidance. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50,
2019 (“Revised Guidance”). Under the Revised Guidance, Step 2A of the
Alice two-step framework is divided in two prongs. For Step 2A, Prong 1,
we look to whether the claim recites any judicial exceptions falling into
certain groupings of abstract ideas (e.g., mathematical concepts, certain
methods of organizing human activity such as a fundamental economic
practice, or mental processes). For Step 2A, Prong 2, if the claim recites
such a judicial exception, we look to whether the claim recites any additional
elements that integrate the judicial exception into a practical application (see
Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–
(h)).
Only if a claim recites a judicial exception and does not integrate that
exception into a practical application, do we then determine, under Step 2B
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of the Alice two-step framework, whether the claim adds a specific
limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field (see MPEP § 2106.05(d)) or simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception.
b. Discussion – Claim 1
i. Examiner’s Findings and Conclusions
In the Final Action entered before the Revised Guidance, the
Examiner maintains that claim 1 is directed to the abstract ideas of
“facilitating electronic trading” and “being a type of organizing human
activity.” Final Act. 2. The Examiner also maintains that claim 1 does not
include an inventive concept and, is therefore, ineligible for patenting. Final
Act. 2–3. In the Answer, the Examiner responds to Appellant’s arguments
regarding Core Wireless and concludes that the claimed invention does not
improve efficiency.3 Ans. 4–5. Regarding the inventive concept, the
Examiner finds that the additional limitations are not significantly more than
the abstract idea, and Appellant’s Specification (namely, in ¶¶ [52] and [53])
describes that the invention that relies on generic and well-known
components and, as a result, the additional elements included in claim 1 do
not amount to an inventive concept. Final Act. 2–3; Ans. 3–4. Additionally,
the Examiner differentiates the claims in McRO from the present claims that
recite an abstract idea carried out on a general purpose computer.4 Ans. 6.

3 Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc., 880 F.3d 1356
(Fed. Cir. 2018).
4 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016),
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ii. Appellant’s Arguments and Contentions
In the Appeal Brief, Appellant contends that the claimed subject
matter is directed to improvements in computer performance by facilitating
electronic trading over a network with interfaces of computing devices over
a network that includes preventing communication of the first price for
display on the interface of the remote computing device which may help
reduce the amount of transactions or communications over the network.
Appeal Br. 11. Appellant also identifies paragraphs 91 and 92 of the
Specification that discloses “the request itself may be treated as an indication
that the user is willing or actually commits to execute a trade on the
instrument with the party submitting the order at the original price” and “If it
is determined at 220 that the originating user does not agree to interact with
the requesting user without the commitment, the request may be denied at
225.” Appeal Br. 11–12; Reply Br. 3–4.
Appellant contends that the Core Wireless case uniquely matches the
facts in the present case. Appeal Br. 13–14; Reply Br. 4–5. Appellant also
argues that the claims do not pre-preempt all processes for achieving the
intended result. Appeal Br. 15. Appellant contends that the claimed
elements emphasized above, do not preempt all ways of achieving the
intended result because the claimed recitations are very specific and do not
cover all possible approaches. Appeal Br. 15. Appellant argues that
independent claims 1 and 16 should be allowable for at least the reason that
claims 8 and 15 have not been rejected by the Examiner. Appeal Br. 16.
In the Reply Brief, Appellant argues that the subject matter is
integrated into a practical application of the abstract idea. Reply Br. 3.
Appellant further argues that under Step 2B of the Alice two-step analysis
the Examiner’s rejection does not satisfy the requirements because it merely
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provides conclusory statements that the additional subject matter is not well-
understood, routine, conventional activity and thus an “inventive concept” at
Step 2B. Reply Br. 6.
iii. Analysis
For Step 2A, Prong 1, of the Revised Guidance, we agree with the
Examiner and find that the emphasized portions of claim 1, reproduced
above, recite elements that fall within the abstract idea grouping of certain
methods of organizing human activity. See generally Final Act. 7. The
Revised Guidance requires us to evaluate whether the claim recites a judicial
exception (e.g., an abstract idea). According to the Revised Guidance, to
determine whether a claim recites an abstract idea, we must identify
limitations that fall within one or more of the designated subject matter
groupings of abstract ideas. According to the October 2019 Patent
Eligibility Guidance Update produced by the USPTO, “a claim recites a
judicial exception when the judicial exception is ‘set forth’ or ‘described’ in
the claim.” See October 2019 Patent Eligibility Guidance Update Revised
Patent Subject Matter Eligibility Guidance,
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (“October Update”). The Revised Guidance lists “[c]ertain methods of
organizing human activity” as one such grouping and characterizes certain
methods of organizing human activity as including, inter alia, “commercial
or legal interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations).” 84 Fed. Reg. at 52. We find that the emphasized elements of
claim 1 describe these judicial exceptions.
Specifically, regarding certain methods of organizing human activity,
we agree with the Examiner that claim 1 sets forth the human activity of
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“facilitating electronic trading,” which, in our view, is a form of
“commercial or legal interactions” of the Revised Guidance. For example,
the emphasized steps of claim 1 include determining that the request
provides an indication of a willingness to generate a trading command to
execute a trade responsive to the order, transmitting the first price and a size
associated with the selected order, and determining that the computing
device of the electronic trading system has not received a trading command
responsive to the order within a pre-determined period of time.
These steps relate to “[c]ertain methods of organizing human activity”
as one such grouping and characterizes certain methods of organizing human
activity as including, inter alia, “commercial or legal interactions.” Thus,
we find that claim 1 recites an abstract idea.
Turning to Prong 2 of the Step 2A of the Revised Guidance, we
recognize that claim 1 includes additional elements such as a network, an
interface, an electronic trading system, and a remote computing device.
Furthermore, our review of Appellant’s Specification finds that the terms
“network,” “interface,” “an electronic trading system,” and “remote
computing device” are nominal. Appellant’s Specification indicates that the
“network,” “interface,” “an electronic trading system,” and “remote
computing device” (see Spec. ¶¶ [52], [53], [62], [78], [84], [94], and [95]),
of claim 1 do not recite specific types of additional elements or their
operations. As a result, these additional elements are not enough to
distinguish the steps of claim 1 from describing certain methods of
organizing human activity. Thus, claim 1 does not integrate the recited
abstract idea into a practical application.
In addition, we determine that claim 1 recites insignificant pre-
solution activity (“receiving . . . a request to reveal”) and insignificant post-
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solution activity (“executing . . . the order at a default price and a default
size”). See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed. Cir.
2016) (addressing insignificant post-solution activity); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015) (addressing
insignificant pre-solution activity). The recited insignificant extra-solution
activity does not help integrate the recited methods of organizing human
activity into a practical application of the abstract idea.
Therefore, based on our analysis under the Revised Guidance, we
agree with the Examiner and find that claim 1 is directed to an abstract idea.
As a result, we focus our attention on Step 2B of the Alice two-step
framework.
Step 2B of the Alice two-step framework requires us to determine
whether any element, or combination of elements, in the claim is sufficient
to ensure that the claim amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 221. As discussed above, claim 1 includes
additional elements such as a “network,” “interface,” “electronic trading
system,” and “remote computing device.” We agree with the Examiner’s
findings that the additional elements of claim 1, when considered
individually and in an ordered combination, correspond to nothing more than
generic and well-known components used to implement the abstract ideas.
See Ans. 3. In other words, we find that the additional elements, as claimed,
are well-understood, routine, and conventional and “behave exactly as
expected according to their ordinary use.” See In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 615 (Fed. Cir. 2016). Thus, implementing the
abstract idea with these generic and well-known components “fail[s] to
transform that abstract idea into a patent-eligible invention.” Alice, 573 U.S.
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at 221. Therefore, we agree with the Examiner that claim 1 does not provide
significantly more than the abstract idea itself.
Therefore, because Claim 1 is directed to the abstract ideas of certain
methods of organizing human activity and does not provide significantly
more than the abstract idea itself, we agree with the Examiner that claim 1 is
ineligible for patenting and affirm the Examiner’s rejection of claim 1 under
35 U.S.C. § 101.
c. Discussion – Claims 2–7 and 16–20
For claims 2–7 and 16–20, the Examiner maintains that these claims
include the abstract idea of claim 1, but do not include an inventive concept
and are ineligible for patenting. Final Act. 8.
In the Appeal Brief, Appellant contends that the Examiner has failed
to reject independent claims 8 and 15 which recite similar features as claims
1 and 16 and should be allowable for this reason. Appeal Br. 16. We
disagree with Appellant. Rather, we find it more compelling that those same
claims should have been rejected for the same reasons as independent claims
1 and 16.
Additionally, we note that Appellant has not set forth separate
arguments for patent eligibility of dependent claims 19 and 20 which depend
from independent claim 8. Consequently, we conclude that independent
claim 8 contains similar limitations to rejected independent claim 1, and we
affirm the rejection of claims 19 and 20 which contain the same claimed
limitations as independent claims 1 and 8. We leave it to the Examiner to
further consider independent claims 8 and 15 and the same corresponding
limitations of dependent claims 9–14 which correspond to dependent claims
2–7.
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We are not persuaded by Appellant’s arguments and find that
dependent claims 2–7 and 17–20 do not integrate the abstract idea of claim 1
(and claim 8) into a practical application or include an inventive concept.
We find that, in claims 2–7 and 16–20, any implicit claim limitations
pertaining to additional elements for the receiving of the information and the
presenting information, do not expressly recite any additional elements that
would be sufficient as a practical application. Moreover, Appellant’s
Specification describes that the presentation occurs on a user interface,
which may include a graphical user interface (see Spec. ¶ [94]), that is part
of a processing system at a liquidity-provider bank, but Appellant’s
Specification gives no indication that such components are anything but
“well-understood, routine and conventional” components.
Therefore, we agree with the Examiner that dependent claims 2–7 and
17–20 are ineligible for patenting, and we affirm the Examiner’s rejection of
representative independent claim 1 and independent claim 16, not separately
argued, and dependent claims 2–7 and 17–20, not separately argued, under
35 U.S.C. § 101.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 Obviousness-type
double patenting
1–20
1–7, 16–20 101 Patent Eligibility 1–7, 16–
20

Overall
Outcome
1–7, 16–
20

8–15
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FINALITY AND 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-IN-PART