Ex Parte Noviello et al

Patent Trial and Appeal Board

Oct 31, 2018

14305176 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/305,176 06/16/2014
63710 7590 11/02/2018
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.
04-6205-C5 5363
EXAMINER
PURI,VENAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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 STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BGC PARTNERS, INC. 1
Appeal2018-004387
Application 14/305,176
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, 3, 5-9, and 15-27, all the pending
claims in the present application. Claims 2, 4, and 10-14 are canceled. See
Claims Appendix. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
The present invention relates generally to managing trading. See
Abstract.
1 The Appellants name BGC Partners, Inc. as the real party in interest
(App. Br. 3).
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Application 14/305, 176
Claim 1 is illustrative:
1. A method, comprising:
receiving by a processing unit trading orders via a
communications network from terminals, each trading order having an
associated price and comprising either a buy order or a sell order;
displaying by the processing unit, in an electronic display
of a user terminal, 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 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 sell
order stack having a top order;
removing by the processing unit one or more trading
orders from a respective one of the trading order stacks, resulting in a
current top order of the respective trading order stack;
as a result of removing one or more trading orders from
the respective trading order stack, comparing by the processing unit
the price of the current top order to a value;
determining by the processing unit 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;
removing by the processing unit one or more additional
trading orders from the respective trading order stack, resulting in a
new top order of the respective trading order stack;
as a result of removing one or more additional trading
orders from the respective trading order stack, comparing by the
processing unit the price of the new top order to a comparison value;
determining by the processing unit 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; and
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 processing unit a restrictive action with
respect to the new top order including at least one of:
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at least temporarily leaving, within the electronic
display of the user terminal, 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 of the user
terminal 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 processing unit from the user terminal 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 processing unit an alert message
regarding the subsequent order, the alert message indicating the
original price of the subsequent order may be a mistaken price;
communicating by the processing unit the alert
message to the user terminal, wherein the alert message is
displayed on the electronic display; and
preventing by the processing unit the subsequent
order from trading with the new top order at least until a
response to the alert message is received from the user terminal.
Appellants appeal the following rejection: 2
Claims 1, 3, 5-9, and 15-27 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
2 The Examiner withdraws the anticipation rejection of claims 1-17 under
35 U.S.C. § 102 (Final Act. 7).
3
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Application 14/305, 176
(precedential).
RELATED DECISION
Appeal No. 2017-004763 (App. No. 14/336,217), mailed
August 1, 2018 (Examiner Reversed). We adopt and incorporate herein by
reference the Board's related decision to the extent it applies to the similar
arguments and evidence made herein.
ANALYSIS
Rejection under§ 101
Issue: Did the Examiner err in finding that the claims are directed to
patent-ineligible 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 first determine whether the claims
at issue are directed to a patent-ineligible concept," such as an abstract idea.
Alice, 134 S. Ct. at 2355. "If the claims are not directed to an abstract idea
[or other patent-ineligible concept], the inquiry ends. If the claims are
'directed to' an abstract idea, then the inquiry proceeds to the second step of
the Alice framework." McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1312 (Fed. Cir. 2016). In analyzing whether a claims is directed
to an abstract idea, we look to other decisions where similar concepts were
previously found abstract by the courts. See Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
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With respect to independent method claim 1, and similarly, system
claim 1 7, the Examiner determines these claims are directed to "the abstract
idea of restricting a trade order ... [by] organizing and comparing price data
... [as] the cited steps evidence a mathematical relationship or formula that
embodies the abstract idea of restricting a trade order if a trade price differs
from a value by more than a threshold value" (Final Act. 8-9), which is
similar to "using categories to organize, store, [ and] transmit information
[as] in Cyberfone, or comparing new and stored information and using rules
to identify options [as] in SmartGene" (id. at 9).
Appellants challenge the Examiner's "abstract" determinations by
contending that "[ t ]he Office Action fails to properly identify where this
allegedly abstract idea is recited in the claims" (App. Br. 9) or "explain how
the alleged abstract idea is embodied in the various recitations" (id. at 10).
Appellants further contend that "the Office Action fails to provide any
evidence, whatsoever, to support the assertion [] abstract idea" (id. at 12),
"[r]ather, the Examiner provides only conclusory opinions" (id.) that is "an
over generalization that is untethered to the claim language" (id. at 13).
We note that Appellants have not identified any cases that stand for
the proposition that Examiners must provide evidentiary support in every
case before a conclusion can be made that a claim is directed to an abstract
idea. There is no such requirement. See, e.g., para. IV "July 2015 Update:
Subject Matter Eligibility" to 2014 Interim Guidance on Subject Matter
Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) ("The courts
consider the determination of whether a claim is eligible (which involves
identifying whether an exception such as an abstract idea is being claimed)
to be a question of law. Accordingly, courts do not rely on evidence that a
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claimed concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any factual findings"
(emphasis added)). Evidence may be helpful in certain situations where, for
instance, facts are in dispute. But it is not always necessary. In analyzing
whether a claims is directed to an abstract idea, we generally look to other
decisions where similar concepts were previously found abstract by the
courts. See Amdocs, 841 F.3d at 1294.
With that in mind, we point out that the Examiner highlights known
abstract concepts from numerous decisions such as Cyberfone, SmartGene,
Alice, Bilski, Content Extraction, and CyberSource, i.e., comparing new and
stored information and using rules to identify options; using categories to
organize, store, and transmit data; intermediate settlement; and/ or risk
hedging (see Final Act. 9; see also Ans. 9--12). As such, we find that the
Examiner's cogent analysis relying on judicial examples (id.) shows the
Examiner provided adequate basis for making the rejection. Furthermore, in
the Answer the Examiner identified specific recitations in the claims and
link the same to known abstract concepts (see Ans. 4).
Specifically, the claimed sequence of steps in claim 1 cover
employing a processing unit to perform functions, such as receiving trading
orders, displaying the trade orders, removing trade orders, comparing price
of a top order, determining price does not differ, removing additional orders,
comparing price of a new top order, determining price of a new top order
differs, determining an outlying order, generating an alert message, and
taking a restrictive action (see claim 1 ).
For instance, information collection and analysis, including when
limited to particular content, is within the realm of abstract ideas. See, e.g.,
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Elec. Power Grp. LLC v. 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, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016); Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech
Image Techs., LLC v. 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).
Because the claims are directed to information collection and analysis,
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 Collaborative Servs., 132 S. Ct. 1289, 1294 (2012)).
The Examiner determines that "the function performed by the general-
purpose computer at each step is purely conventional ... each step [is] will-
understood, routine, [and] conventional in the field" (Final Act. 9-10). For
example, the Examiner highlights exemplary conventional technologies
related to the claimed features of "temporarily leaving space in a trading
order," "generating an alert," and "preventing a trade order", such
conventional technologies are "stop-gap provisions," "informative
messaging," and "requiring trade confirmations" (id. at 10) and further notes
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that such limitations "are merely directed to instructions to implement the
idea on a generic computer" (id., citing Appellants' Spec. ,r 26). We agree
with the Examiner.
Appellants contend that "the Office Action has not provided any
explanation for why any specific limitation does not add significantly more
to the alleged abstract idea" (App. Br. 16) and the analysis "does not even
appear to consider the recitations of any dependent claims" (id. at 18).
Firstly, we find unavailing Appellants' argument that the Examiner
did not provide any explanation for why specific limitations do not add
significantly more given the Examiner's explanation noted supra regarding
similar conventional technologies, which Appellants fail to persuasively
rebut.
Secondly, while we agree with Appellants that the Examiner
addressed the dependent claims in an abbreviated manner in the Final Action
(see Final Act. 11), we agree with the Examiner's conclusion that the
dependent claims do not add significantly more than the abstract idea itself
(id.). Notably, apart from listing the claim numbers, Appellants provided no
separate discussion regarding the specific features introduced by the
dependent claims. We agree with the Examiner that "it is unclear from
Appellant[ s] argument what particular additional limitations ... in such
dependent claims are alleged to amount to significantly more" (Ans. 8).
Stated differently, aside from summarily asserting that the Examiner failed
to provide a proper analysis of the dependent claims, Appellants present no
persuasive argument or technical reasoning to demonstrate that the
dependent claims are patent-eligible. Therefore, Appellants' arguments fail
because they do not indicate what features of these limitations cause the
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claims to add "significantly more features" and why. A statement which
merely points out what a claim recites (or the claim number) will not be
considered an arguments for separate patentability of the claim. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Appellants question "if no feature of the claims ( alone or in
combination) recites 'significantly more' ... then why are the claims
deemed allowable over the art?" (App. Br. 18). In essence, Appellants
contend that because the Examiner did not reject the claims over prior art,
"the Examiner effectively concedes that the claims must recite significantly
more" (id.).
However, a finding of novelty or non-obviousness does not require
the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo/Alice framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or
nonobviousness, but, rather, is a search for "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
Corp., 134 S. Ct. at 2355. "Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry." Ass 'n. for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and
non-obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304. See also Diamond v. Diehr, 450
U.S. 175, 188-89 (1981) ( "The 'novelty' of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.").
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Appellants also contend that "the present claims are directed toward
specific and narrow embodiments, and would not preempt all uses or
implementations of the alleged abstract idea" (App. Br. 19--20).
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 Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. at 1293)), "the absence of complete
preemption does not demonstrate patent eligibility" (Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). Moreover,
because we find the claimed subject matter covers patent-ineligible subject
matter, the pre-emption concern is necessarily addressed. As correctly noted
by the Examiner, "preemption is not a stand-alone test for eligibility ....
questions of preemption are inherent in the two-part framework" (Ans. 8).
"Where a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, [] preemption concerns are fully
addressed and made moot." Ariosa Diagnostics, 788 F.3d at 1379.
Finally, Appellants contend that "[ s ]imilar to the claims in DDR
Holdings, the present claims solve a problem rooted in computer technology
to improve the functionality of electronic exchanges" (App. Br. 21 ).
In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259
(Fed. Cir. 2014), the subject claim was held patent-eligible because it
encompassed "an inventive concept" for resolving a "particular Internet-
centric problem." Specifically, the invention in DDR Holdings allowed a
host merchant website to maintain the look and feel of the host website when
hyperlinking to outside merchants' product pages, i.e., "specify how
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interactions with the Internet are manipulated to yield a desired result."
DDR Holdings, 773 F.3d at 1257-58.
In contrast, we find Appellants' method performed by a processing
unit ( claim 1) does not provide a solution "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." DDR, 773 F.3d at 1257. Because we find all claims
on appeal merely use a generic computer or processor as a tool which is used
in the way a computer normally functions, we conclude that the claims fail
to impart any discernible improvement upon the computer or processor; nor
do Appellants' claims solve "a challenge particular to the Internet" as
considered by the court in DDR, 773 F.3d at 1256-57.
As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." Alice, 134 S. Ct. at 2358-59 (concluding claims "simply
instruct[ing] the practitioner to implement the abstract idea of intermediated
settlement on a generic computer" not patent eligible). Furthermore, data
management has been a function of computers for as long as computers have
existed and will not transform an abstract concept into a patentable
invention. See, e.g., Alice, 134 S. Ct. at 2359.
The Examiner determines, and we agree, "the claims do not address a
technical problem. Rather, the claims address the problem of incorrect
market trade order pricing ... a business practice known from the pre-
Internet word" (Ans. 13-14, citing Appellants' Specification pages 2-3, 5).
Appellant is reminded that '"relying on a computer to perform routine tasks
more quickly or more accurately is insufficient to render a claim patent
eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
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Cir. 2015) (citing Alice, 134 S. Ct. at 2359 ("use of a computer to create
electronic records, track rnu1tiple transactions, and issue simultaneous
instructions" is not an inventive concept)).
Thus, we conclude none of Appellants' claims are like the claim held
patent-eligible by the court in DDR, in which the claimed invention was
directed to the "challenge of retaining control over the attention of the
customer in the context of the Internet," such that
[i]nstead of the computer network operating in its normal,
expected manner by sending the website visitor to the third-
party website that appears to be connected with the clicked
advertisement, the claimed system generates and directs the
visitor to the above-described hybrid web page that presents
product information from the third-party and visual "look and
feel" elements from the host website.
DDR, 773 F.3d at 1258-59. Thus, we find unavailing Appellants'
arguments that the claims are similar to DDR Holdings, given that no
convincing "inventive concept" for resolving a "particular Internet-centric
problem" is identified by Appellants.
Because Appellants' independent claims 1 and 17 3 are directed to a
patent-ineligible abstract concept under the first prong of Alice and do not
recite something "significantly more" under the second prong of the Alice
analysis, we sustain the Examiner's rejection of these claims as well as
respective dependent claims 3, 5-9, 15, 16, and 18-27 under
35 U.S.C. § 101 as being directed to non-statutory subject matter in light of
Alice and its' progeny.
3 Alice also confirmed that if a patent's systems claims are no different in
substance from its method claims, they will rise and fall together. Alice, 134
S. Ct. at 2360.
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For the foregoing reasons, Appellants' contentions are unpersuasive
as to error in the rejection under 35 U.S.C. § 101.
DECISION4
We affirm the Examiner's§ 101 rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
4 In the event of further prosecution, we leave it to the Examiner to consider
if claims 1, 3, 5-9, and 15-27 should be rejected on the grounds of
obviousness-type double patenting over claims 1-20 of Patent Application
No. 14/336,217.
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