Ex Parte Gilbert et al

Patent Trial and Appeal Board

Apr 24, 2017

13609978 (P.T.A.B. Apr. 24, 2017)

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.
13/609,978 09/11/2012 Andrew C. Gilbert 01-1045-l-Cl 5305
63710 7590 04/26/2017
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
FU, HAO
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
04/26/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocketing @ cantor.com
lkoro vich @ c antor. com
phowe @ cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW C. GILBERT,
WILLIAM P. TSELEPIS, and ANDREW STERGIOPOULOS
Appeal 2015-004655
Application 13/609,9781
Technology Center3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 2—21. We have jurisdiction under 35 U.S.C.
§ 6(b). Oral arguments were presented on April 13, 2017, by telephone.
We REVERSE and enter a NEW GROUND OF REJECTION.
1 The Appellants identify BGC Partners, Inc. as the real party in interest.
Appeal Br. 2.
Appeal 2015-004655
Application 13/609,978
ILLUSTRATIVE CLAIM
3. A method comprising:
causing to be displayed, by at least one processor, a
plurality of data items in a spatial arrangement;
altering a spatial position of a first subset of the plurality
of data items relative to a spatial position of a second subset of
the plurality of data items in response to receiving a first user
input;
saving, by the at least one processor, the altered spatial
position of the first subset;
receiving, by the at least one processor, a user selection
of a financial instrument;
causing to be displayed, by the at least one processor, the
first subset of the plurality of data items and the second subset
of the plurality of data items in response to receiving the user
selection, wherein the first subset is displayed in the altered
spatial position; and
causing to be displayed, by the at least one processor,
data values of the plurality of data items in response to
receiving the user selection, wherein the data values indicate
performance of the selected financial instrument.
REJECTIONS
I. Claims 2—10 and 13—21 are rejected under 35 U.S.C. § 102(a)
as anticipated by Khemlani et al. (US 6,772,146 B2, iss. Aug. 3, 2004)
(“Khemlani”).
II. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Khemlani and Buist (US 6,408,282 Bl, iss. June 18,
2002).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
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ANALYSIS
Among the arguments presented, the Appellants contend (Appeal Br.
8—9) that the Examiner erred in rejecting independent claim 3, because
Khemlani does not disclose the following features of the claimed method
that involves “displaying] ... a plurality of data items in a spatial
arrangement”:
altering a spatial position of a first subset of the plurality
of data items relative to a spatial position of a second subset of
the plurality of data items in response to receiving a first user
input.
In rejecting claim 3, the Final Office Action relied upon Khemlani’s
disclosure in column 13, lines 12—27, of “designating]” particular data to
appear on either the right side or the left side of a user’s portal web page.
Final Action 4. The Answer states that Khemlani’s disclosure of displaying
certain financial information in a module is interpreted by the Examiner as
an “altered spatial position.” Answer 4 (citing Khemlani, col. 6,11. 42—58,
Fig. 2aa). Further, the Answer regards Khemlani’s disclosure of separate
“display modules” that function independently of each other as meeting the
identified features of claim 3, because the display of information in a first
module has an “altered spatial position” relative to a second module. Id.
(citing Khemlani, col. 4,11. 28—63).
According to the Appellants, Khemlani’s disclosure in column 13,
lines 12—27, would result in designated information appearing on the left (or
right) side of the portal web page, but does not teach the claimed “altering a
spatial position of a first subset of the plurality of data items relative to a
spatial position of a second subset of the plurality of data items.” See
Appeal Br. 9. Similarly, the Appellants argue that Khemlani’s disclosures
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Application 13/609,978
cited in the Answer fail to show a spatial position of displayed data items
that is altered relative to the spatial position of other displayed data items.
Reply Br. 4—5 (citing Khemlani, col. 4,11. 28—63, col. 6,11. 42—58, Fig. 2aa).
The Appellants’ arguments are persuasive. Claim 3 requires
represented “data items” having an initial “spatial arrangement,” as well as
“altering a spatial position of a first subset of the plurality of data items
relative to a spatial position of a second subset of the plurality of data
items.” Although Khemlani teaches the selection of spatial locations for
modules, which contain the representations of data, the Examiner has not
identified any teaching therein of altering the spatial arrangement of existing
representations of data.
Accordingly, the rejection of independent claim 3 and — for similar
reasons — independent claims 2 and 17 under 35 U.S.C. § 102(a) is not
sustained. The rejections of the dependent claims do not overcome the
identified deficiency of Khemlani. Therefore, the rejection of dependent
claims 4—10, 13—16, and 18—21 under 35 U.S.C. § 102(a) is not sustained
and the rejection of dependent claims 11 and 12 under 35 U.S.C. § 103(a) is
not sustained.
NEW GROUND OF REJECTION
Claims 2—21 are newly rejected under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
Laws of nature, natural phenomena, and abstract ideas are deemed not
patentable, because they are regarded as the basic tools of scientific and
technological work, such that their inclusion within the domain of patent
protection would entail the risk of inhibiting future innovation premised
upon them. Association for Molecular Pathology v. Myriad Genetics, Inc.,
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Application 13/609,978
133 S. Ct. 2107, 2113 (2013) (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1293, 1301 (2012)).
The Supreme Court has admonished “tread[ing] carefully in
construing this exclusionary principle lest it swallow all of patent law,”
because “[a]t some level, ‘all inventions . .. embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas.’” Alice Corp.
Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014) (citing
Mayo, 132 S. Ct. at 1293—94). Thus, the inquiry concerns whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
The Supreme Court has identified a two-step framework for
determining whether claimed subject matter is judicially-excepted from
patent eligibility under § 101. Alice, 134 S. Ct. at 2355.
According to step one, “we determine whether the claims at issue are
directed to one of those patent-ineligible concepts,” such as an abstract idea.
Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1296—97).
Taking claim 3 as representative of the claims on appeal, the claimed
subject matter is directed to the abstract idea of displaying data. This is a
basic tool of technological work that would suffer a risk of preemption by
claim 3, if granted. See Electric Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (“[Cjollecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent-ineligible concept.”)
Thus, the present analysis proceeds to Alice’s second step.
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The Supreme Court has characterized step two as a search for an
“inventive concept” in the claimed subject matter — that is, an element or
combination of elements ‘“sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the [ineligible concept]
itself.’” Alice, 134 S. Ct. at 2355 (alteration in original) (quoting Mayo, 132
S. Ct. at 1294).
We see nothing in the subject matter claimed that transforms the
abstract idea of classification into an inventive concept. Notably, claim 3 is
drawn in broad, generic terms that do not constrain the abstract idea.
Although a “processor” and the “user selection of a financial instrument” are
recited, such features does not meaningfully restrict the claim. A recitation
of sufficiently limiting features, under the second step of Alice, “requires
more than simply stating an abstract idea while adding the words ‘apply if
or ‘apply it with a computer.’ Similarly, the prohibition on patenting an
ineligible concept cannot be circumvented by limiting the use of an
ineligible concept to a particular technological environment.” Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1332 (Fed. Cir. 2015) (citations
omitted).
Further, for a claim directed to an abstract idea to be patent-eligible,
under the second step of the Alice analysis, it must involve more than
performance of “‘well-understood, routine, conventional activities] ’
previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo,
132 S. Ct. at 1294); See, e.g., Mortgage Grader, Inc. v. First Choice Loan
Servs. Inc., 811 F.3d 1314, 1324—25 (Fed. Cir. 2016) (explaining that
“generic computer components such as an ‘interface,’ ‘network,’ and
‘database’ ... do not satisfy the inventive concept requirement”)
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Application 13/609,978
(citations omitted). Claim 3 does not meet this standard, because the
Specification indicates that the disclosed subject matter can be implemented
on conventional computer equipment. Spec. H 21—25. Such is also the
nature of the recited “altering a spatial position of a first subset of the
plurality of data items,” which is a feature of conventional computer
hardware and software. See Reply Br. 14 (“Microsoft Windows allows users
to move windows by dragging them and dropping them”).
For the foregoing reasons, we find that claim 3 covers claimed subject
matter that is judicially-excepted from patent eligibility under § 101. The
other independent claims — claims 2 (like claim 3, drawn to a “method”)
and claim 17 (drawn to an “apparatus” comprising “instructions” that cause
a “processor” to perform a method similar to that described in claim 3) —
parallel claim 3 and similarly cover claimed subject matter that is judicially-
excepted from patent eligibility under § 101. The dependent claims describe
additional features in broad and generic terms, which do not patentably
transform the abstract idea.
Therefore, we enter a new ground of rejection of claims 2—21 under
35U.S.C. § 101.
DECISION
We REVERSE the Examiner’s decision rejecting claims 2—10 and
13-21 under 35 U.S.C. § 102(a).
We REVERSE the Examiner’s decision rejecting claims 11 and 12
under 35 U.S.C. § 103(a).
We ENTER A NEW GROUND OF REJECTION for claims 2-21
under 35 U.S.C. § 101.
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Application 13/609,978
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED: 37 C.F.R, $ 41.50(b)
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