Ex Parte Noviello et al

Patent Trial and Appeal Board

Jul 30, 2018

14336217 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/336,217 07/21/2014
63710 7590 08/01/2018
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Joseph C. Noviello
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
04-6205CIP-C4 4277
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH C. NOVIELLO, MICHAEL SWEETING,
and HOW ARD W. LUTNICK1
Appeal2017-004763
Application 14/336,217
Technology Center 3600
Before CAROLYN D. THOMAS, KARA L. SZPONDOWSKI, and
MICHAEL M. BARRY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-20, all the pending claims in the
present application. See Claims Appendix. We have jurisdiction over the
appeal under35 U.S.C. § 6(b).
We REVERSE.
1 The Appellants name BGC Partners, Inc. as the real party in interest
(App. Br. 3).
Appeal2017-004763
Application 14/336,217
The present invention relates generally to managing trading. See
Abstract.
Claim 1 is illustrative:
1. A method, comprising:
receiving by a workstation trading orders via a
communications network from a trading platform, each trading order
having an associated price and comprising either a buy order or a sell
order;
displaying by the workstation, in an electronic display,
the received trading orders in trading order stacks, including
displaying buy orders in a buy order stack and sell orders in a sell
order stack, wherein each of the buy order stack and the sell order
stack has a top and wherein the trading orders of the respective trading
order stacks are ordered resulting each of the buy order stack and the
sell order stack having a top order;
as a result of one or more trading orders being removed
from a respective one of the trading order stacks resulting in a current
top order of the respective trading order stack, comparing by the
workstation the price of the current top order to a value;
determining by the workstation that the price of the
current top order does not differ from the value by more than a
threshold value, wherein determining that the price of the current top
order does not differ from the value by more than the threshold value
results in no restrictive action being taken with respect to the current
top order;
as a result of one or more additional trading orders being
removed from the respective trading order stack, resulting in a new
top order of the respective trading order stack, comparing by the
workstation the price of the new top order to a comparison value;
determining by the workstation that the price of the new
top order differs from the comparison value by more than a
comparison threshold value, the new top order thereby determined to
be an outlying order;
as a result of determining that the price of the new top
order differs from the comparison value by more than the comparison
threshold value, taking by the workstation a restrictive action with
respect to the new top order including at least one of:
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Appeal2017-004763
Application 14/336,217
at least temporarily leaving, within the electronic
display, at least one space between the new top order and the
top of the respective trading order stack, thereby not promoting
within the electronic display the new top order to the top of the
respective trading order stack,
at least temporarily not displaying within the
electronic display the new top order within the respective
trading order stack, and
modifying within the electronic display an
appearance of the new top order as compared to other trading
orders within the respective trading order stack;
receiving by the workstation a subsequent order having
an original price that would trade with the price of the new top order;
and
based at least in part on the new top order being an
outlying order:
generating by the workstation an alert message
regarding the subsequent order, the alert message indicating
that the original price of the subsequent order may be a
mistaken price;
displaying by the workstation the alert message in
the electronic display;
and
preventing by the workstation the subsequent order
from trading with the new top order at least until a response to
the alert message is received.
Appellants appeal the following rejection: 2
Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
2 The Examiner withdraws the rejection of claims 6 and 16 under 35 U.S. C.
§ 112(b) or 35 U.S. C. § 112 (pre-AIA), second paragraph, as being
indefmite (Ans. 4).
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Application 14/336,217
produced thereon. ExparteFrye, 94 USPQ2d 1072, 1075 (BPAI2010)
(precedential).
ANALYSIS
Rejection under§ 101
Issue: Did the Examiner err in rejecting the claims for being directed
to non-statutory subject matter?
Alice Step One
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, "[ w ]e must frrst determine whether the claims
at issue are directed to a patent-ineligible concept," such as an abstract idea.
Alice, 134 S. Ct. at 2355.
With respect to independent method claim 1, and similarly, apparatus
claim 11, the Examiner fmds these claims are directed to an abstract idea of
"mathematical relationships or formulas for preventing a trader from
mistakenly trading with an outlying order" (Final Act. 3).
Appellants challenge the Examiner's "abstract" determinations by
contending that "the Examiner merely makes a conclusion without any
evidence or reasoning . . . [ t ]here is no citation to any similar concept or case
as required by the PTO guidelines" (App. Br. 8) and "the claims clearly do
not preempt the alleged abstract idea" (id.).
In the Answer, the Examiner names several cases to support the
Examiner's fmding of an abstract idea (see Ans. 2) and notes that "the
'absence of complete preemption does not demonstrate patent eligibility"'
(id. at 3). We fmd that the Examiner has provided a sufficient response
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Application 14/336,217
supported by a preponderance of evidence (Ans. 2-3), and thus agree with
the Examiner's conclusion of an abstract idea.
Here, the claimed sequence of steps in claim 1 covers employing a
work station to perform functions, such as receiving trading orders,
displaying the trade orders, removing trade orders, comparing a price of a
top order, determining the price does not differ by more than a threshold,
removing additional orders, comparing the price of new top order,
determining the price of new top order differs, determining an outlying
order, generating an alert message, and taking a restrictive action (see
claim 1 ). The collection, analysis, and display of information, including
when limited to particular content, is within the realm of abstract ideas. See,
e.g., Elec. Power Grp. LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016) (holding that "collecting information, analyzing it, and displaying
certain results of the collection and analysis" are "a familiar class of claims
'directed to' a patent-ineligible concept"); FairWarning IP, LLCv. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016); Internet Patents Corp.
v. ActiveNetwork,Inc., 790F.3d 1343, 1349(Fed. Cir. 20l5);Digitech
Image Techs., LLCv. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011).
Regarding Appellants' contention that "the claims clearly do not
preempt the alleged abstract idea" (App. Br. 8), we agree with the Examiner
that the "absence of complete preemption does not demonstrate patent
eligibility" (Ans. 3). Stated differently, although pre-emption "might tend to
impede innovation more than it would tend to promote it, 'thereby thwarting
the primary object of the patent laws"' (Alice, 134 S. Ct. at 2354 ( citing
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Application 14/336,217
Mayo CollaborativeServs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1293
(2012)) ), "the absence of complete preemption does not demonstrate patent
eligibility" (AriosaDiagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015)).
Because the claims are directed to mathematical manipulations, we
agree with the Examiner that the claims are directed to an abstract idea.
Alice Step Two
We now tum to the second step of the Alice framework: "a search for
an 'inventive concept' --i.e., an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355
(citing Mayo CollaborativeServs., 132 S. Ct. at 1294).
The Examiner finds that "[ t ]he additional limitations comprise ...
insignificant pre-solution activity ... [ and] insignificant post-solution
activity (Final Act. 3) and "[t]he analysis under 101 is a matter of law and
not evidence . . . . The Office recited the additional limitations and
explained why they are not significantly more" (Ans. 3--4). The Examiner
further fmds, inter ali a, "[ i]t is conventional and routine to take restrictive
actions when data is determined to be outside of an established norm." Final
Act. 3--4.
Appellants contend that "[ t ]he Office Action has provided no
evidence at all that the limitations merely recite conventional or routine
elements" (App. Br. 8-9) and the "rejection does not even mention all of the
limitations of all of the claims" (id. at 9). Appellants also contend that the
claims address the problem of "the user mistakenly [ submitting] an order
... by detecting a possible outlying order [ and] visually alerting a user ...
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Application 14/336,217
displaying the order in a particular fashion ... and preventing the user from
trading until a response to the alert message is received" (id. at 10),
therefore, the claims "recite significantly more than an abstract idea" (id.
at 11 ).
We agree with Appellants that the Examiner's analysis is conclusory
and unsupported. The Examiner has not set forth with sufficient specificity
or provided any fmding of fact (see Ans. 3--4; see also Final Act. 3--4) that
the specifically claimed manner of managing trading using alert messages
for outlying trading orders is well-understood, routine, or conventional.
Berkheimerv. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018) ("The question
of whether a claim element or combination of elements is well-understood,
routine, and conventional to a skilled artisan in the relevant field is a
question of fact.").
In other words, the Examiner identifies no support/ evidence for the
aforementioned fmdings, in part because of the Examiner's erroneous view
that no factual determination is needed.
Thus, under step two of Alice, the Examiner has not properly
considered the elements of the claims, both individually and "as an ordered
combination," to determine whether the additional elements transform the
Examiner's asserted abstract idea into a patent-eligible application.
For the above reasons under step two of Alice, the Examiner's
rejection of claims 1-20under35 U.S.C. § 101 is reversed.
DECISION
We reverse the Examiner's § 101 rejection.
REVERSED
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