Noviello, Joseph C.Download PDFPatent Trials and Appeals BoardMar 30, 202011686695 - (D) (P.T.A.B. Mar. 30, 2020) Copy Citation 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. 11/686,695 03/15/2007 Joseph C. Noviello 07-6262 6823 63710 7590 03/30/2020 INNOVATION DIVISION CANTOR FITZGERALD, L.P. 110 EAST 59TH STREET (6TH FLOOR) NEW YORK, NY 10022 EXAMINER PRESTON, JOHN O ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 03/30/2020 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 JOSEPH C. NOVIELLO ____________ Appeal 2019-003046 Application 11/686,6951 Technology Center 3600 _______________ Before JOSEPH L. DIXON, DAVID M. KOHUT, and JON M. JURGOVAN, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) from the Examiner’s Final rejection of claims 38 and 40–43, which are all the claims pending in the application. Appeal Br. 18–19, Claims App. Claims 1–37, 39, and 44–47 have been cancelled. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37 C.F.R. § 1.42 (2018). The real party in interest is BGC Partners, Inc. Appeal Br. 3. 2 Our Decision refers to Appellant’s Appeal Brief filed November 27, 2018 (“Appeal Br.”); Reply Brief filed March 8, 2019 (“Reply Br.”); the Examiner’s Answer mailed January 14, 2019 (“Ans.”); the Final Office Action mailed June 8, 2018 (“Final Act.”); and the original Specification filed March 15, 2007 (“Spec.”). Appeal 2019-003046 Application 11/686,695 2 STATEMENT OF THE CASE Appellant’s invention is directed to a controller device for “providing an operator interface for displaying market data, trader options, and trader input,” and using a “game controller device to easily select a quantity and a bid-offer pair for the trading product.” Spec. 1:4–5, 4:2–4. Independent claim 38, reproduced below, is exemplary of the subject matter on appeal. 38. A controller device comprising: an interface to send and receive signals to a trading apparatus, the trading apparatus comprising a display screen, the trading apparatus being configured to render a graphical user interface and a graphical selection box on the display screen, the graphical user interface comprising a market data section, a first input section, and a second input section, such that the market data section borders the first input section and the first input section borders the second input section; a joystick, which upon movement in a given direction, instructs the trading apparatus to move the graphical selection box in the given direction in the first input section or the second input section; a knob, which upon actuation, instructs the trading apparatus to select a bid-offer pair highlighted by the graphical selection box in the first input section; a second knob, which upon actuation, instructs the trading apparatus to select a quantity highlighted by the graphical selection box in the second input section; a first button, which upon actuation, instructs the trading apparatus to initiate a bid or buy procedure based at least in part on a selected bid-offer pair and the selected quantity; and a second button, which upon actuation, instructs the trading apparatus to initiate an offer or sale procedure based at least in part on the selected bid-offer pair and the selected quantity. Appeal Br. 18 (Claims App.). Appeal 2019-003046 Application 11/686,695 3 Evidence Considered Takeda et al. (“Takeda”) US 5,984,785 Nov. 16, 1999 Opperman et al.(“Opperman”) US 2005/0144113 A1 June 30, 2005 Examiner’s Rejections (1) Claims 38 and 40–43 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Final Act. 3–4. (2) Claims 38 and 40–43 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Opperman and Takeda. Final Act. 4–7. ANALYSIS 35 U.S.C. § 101 Rejection In support of the § 101 rejection of claims 38 and 40–43, the Examiner determines the claims “attempt to describe a controller device and an associated interface by the instructions sent to and from the interface via a transitory signal” and “are directed to the natural phenomenon of sending and receiving signals”—that is “a natural phenomenon found nonstatutory in In re Nujiten[sic], 500 F.3d 1346.” Final Act. 3–4; Ans. 7. Thus, Examiner asserts the claims are “directed towards signals carrying” and “the interface, the joystick, the knob, the second knob, the first button, and the second button [in claim 38] . . . integrated with the controller device all describe [an] abstract idea.” Final Act. 3–4. Appeal 2019-003046 Application 11/686,695 4 The Examiner then determines the claims “do not include additional elements that are sufficient to amount to significantly more than the judicial exception” as “the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity (i.e. sending a[nd] receiving data via a signal).” Final Act. 4; Ans. 8. Legal Framework Patent eligibility is a question of law that is reviewable de novo. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). Accordingly, we review the Examiner’s § 101 determinations concerning patent eligibility under this standard. Patentable subject matter is defined by 35 U.S.C. § 101, as follows: [w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. In interpreting this statute, the Supreme Court has emphasized that patent protection should not preempt “the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (“Mayo”); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (“Alice”). The rationale is that patents directed to basic building blocks of technology would not “promote the progress of science” under the U.S. Constitution, Article I, Section 8, Clause 8, but instead would impede the same. Accordingly, laws of nature, natural phenomena, and abstract ideas, are not patent-eligible subject matter. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216). Appeal 2019-003046 Application 11/686,695 5 The Supreme Court has set forth a two-part Alice/Mayo test for subject matter eligibility in Alice (573 U.S. at 217–18). The first step is to determine whether the claim is directed to a patent-ineligible concept. Id. (citing Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the second step of the Alice/Mayo test in which we “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) (quoting Mayo, 566 U.S. at 72, 79). There is no need to proceed to the second step, however, if the first step of the Alice/Mayo test yields a determination that the claim is directed to patent-eligible subject matter. The Federal Circuit has described the Alice step-one inquiry as looking at the “focus” of the claims, their “character as a whole,” and the Alice step-two inquiry as looking more precisely at what the claim elements add—whether they identify an “inventive concept” in the application of the ineligible matter to which the claim is directed. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). In an effort to achieve clarity and consistency in how the U.S. Patent and Trademark Office (the “Office”) applies the Supreme Court’s two-step framework, the Office has published revised guidance interpreting governing case law and establishing a framework for all patent-eligibility analysis under Alice and § 101 effective as of January 7, 2019. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019) (“2019 Revised Guidance”) and October 2019 Patent Eligibility Guidance Update (October 2019 Update), as currently reflected in the Appeal 2019-003046 Application 11/686,695 6 Manual of Patent Examination Procedure (MPEP) §§ 2103, 2104, 2105, 2106 and 2106.03 through 2106.07(c). 2019 Revised Guidance Under the 2019 Revised Guidance, we first look under Alice step 1 or “Step 2A” to whether the claim recites: (1) Prong One: any judicial exceptions, including certain groupings of abstract ideas (i.e., [i] mathematical concepts, [ii] mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion), or [iii] certain methods of organizing human activity such as a fundamental economic practice or managing personal behavior or relationships or interactions between people); and (2) Prong Two: additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)– (h)).3 See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A, Prong One (Abstract Idea) and Prong Two (Integration into A Practical Application). Only if a claim: (1) recites a judicial exception (a law of nature, a natural phenomenon, or an abstract idea), and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an “inventive concept” under Alice step 2 or “Step 2B.” See 2019 Revised Guidance at 53, 56; Alice, 573 U.S. at 217–18. For example, we look to whether the claim: 1) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or 3 All references to the MPEP are to the Ninth Edition, Revision 08.2017 (rev. Jan. 2018). Appeal 2019-003046 Application 11/686,695 7 2) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 2019 Revised Guidance, 84 Fed. Reg. at 56. Thus, we review patent eligibility under § 101 de novo in comport with the 2019 Revised Guidance, as discussed below. USPTO Step 1–Categories of Invention Under the 2019 Revised Guidance, we determine independent claim 38 recites a “controller device,” which is a form of “machine,” thereby falling within one of the categories enumerated under § 101 and satisfying Step 1 of the Revised Guidance. Alice/Mayo—Step 1 (Abstract Idea) USPTO Step 2A–Prongs 1 and 2 USPTO Step 2A—Prong 1 (Does the Claim Recite a Judicial Exception?) We proceed to apply Step 2A, Prong 1 of the 2019 Revised Guidance to determine if independent claim 38 recites a judicial exception including (i) a natural phenomenon, or (ii) an abstract idea including (a) mathematical concepts, (b) certain methods of organizing human activity such as a fundamental economic practice, or (c) mental processes. See 2019 Revised Guidance, 84 Fed. Reg. at 51–52. We find that independent claim 38 does not recite “a transitory signal” as in Nuijten, or “the natural phenomenon of sending and receiving signals” as the Examiner asserts. See Final Act. 3; Ans. 7. Although claim 38 recites, inter alia, “send and receive signals,” claim 38 does not merely recite sending and receiving signals in an abstract sense. Appeal Br. 8. Rather, claim 38 recites a “controller device comprising: an interface to send and receive signals to a trading apparatus,” a movable joystick, knobs that Appeal 2019-003046 Application 11/686,695 8 can be actuated, and buttons that can be actuated (in, e.g., a game controller device). See Appeal Br. 18 (Claims App.). Additionally, although the Examiner asserts that “the interface, the joystick, the knob, the second knob, the first button, and the second button [in claim 38] . . . integrated with the controller device all describe the abstract idea” (see Final Act. 3), the Examiner has not identified an “abstract idea” recited by claim 38’s “controller device comprising: an interface . . . a joystick . . . a knob . . . a second knob . . . a first button . . . and a second button.” Appeal Br. 8, 18 (Claims App.). Thus, we disagree with the Examiner’s finding that “the instant claims are directed towards transitory signals” and are “directed towards signals carrying.” See Final Act. 4; Ans. 8. Accordingly, in light of the 2019 Revised Guidance, we determine the Examiner has not shown that claim 38 is directed to a judicial exception (a law of nature, a natural phenomenon, or an abstract idea) that would make it patent-ineligible under 35 U.S.C. § 101. Accordingly, we do not address Step 2B of the Revised Guidance (corresponding to step two of the Alice/Mayo test). For these reasons, we do not sustain the Examiner’s rejection of claim 38, and dependent claims 40–43, as directed to non-statutory subject matter under 35 U.S.C. § 101.4 4 In the event of any further prosecution, we suggest the Examiner consider whether claim 38 recites an abstract idea of a fundamental economic practice in the field of trading, performed with a generically described game controller device. Appeal 2019-003046 Application 11/686,695 9 35 U.S.C. § 103(a) Rejection With respect to claim 38, Appellant contends the Examiner erred in finding Opperman discloses a “graphical user interface comprising a market data section, a first input section, and a second input section, such that the market data section borders the first input section and the first input section borders the second input section.” Appeal Br. 13–14. In particular, Appellant argues Opperman’s GUI (graphical user interface) “does not contain a ‘market data section’ as claimed”; rather, Opperman merely describes market data received from a data source 108 but “Opperman simply does not mention a market data section rendered on the GUI.” Id. Appellant also argues Opperman’s GUI does not contain “a first input section, and a second input section, such that the market data section borders the first input section and the first input section borders the second input section” as claimed; rather, Appellant argues, Opperman merely discloses data input fields with pull down menus and a “high degree of separation between . . . [the] input fields.” Id. at 14. Further, Appellant argues “Takeda does not disclose or even suggest the claimed ‘first button, which upon actuation, instructs the trading apparatus to initiate a bid or buy procedure based at least in part on a selected bid-offer pair and the selected quantity’” and the claimed “second button, which upon actuation, instructs the trading apparatus to initiate an offer or sale procedure based at least in part on the selected bid-offer pair and the selected quantity,” as claimed. Id. at 15. Appellant asserts the skilled artisan “would understand that videogames, for which Takeda’s joystick is designed, have nothing to do with initiating bids/buys or offers/sales” and Appeal 2019-003046 Application 11/686,695 10 “would not have reasonably considered combining Opperman’s trading GUI with Takeda’s video game joystick.” Id. at 14–15. We do not agree. We agree with the Examiner’s findings. Ans. 5, 8. Particularly, we agree with the Examiner that Opperman teaches a “graphical user interface comprising a market data section, a first input section, and a second input section, such that the market data section borders the first input section and the first input section borders the second input section,” as recited in claim 38. Ans. 5 (citing Opperman ¶¶ 25–26, 47–50). For additional emphasis, we note Appellant’s Specification does not provide an explicit and exclusive definition of the claimed term “market data section.” Instead, we find that the Specification merely provides discussion of non-limiting examples of a “market data section” as follows: Market data 15 may include a bid quantity, an inside market price, and an offer quantity. . . . According to one embodiment, a tile 13 may include a market data section 114 and a trader input section 118. Market data section 114 may display real-time market data 15. Market data 15 may be received in real-time or near real-time and may include current and/or historical market information such as trade volumes, trading conditions, trading volumes, numbers of outstanding trading orders 17, bid/offer prices, market prices, yield spreads, trends, and so forth. . . . [I]nterface application 50 receives market data 15 from trading platform 14. Market data 15 may include, for example, inside market price 122, bid quantity 124, and offer quantity 126 for a trading product. Interface application 50 initiates display of market data 15 in market data section 114. Spec. 6:19–21, 11:10–20, 14:32–15:6 (emphases added). Based on Appellant’s Specification, we agree with the Examiner’s findings that Opperman’s user interface displayed on a user device (104) teaches and suggests the graphical user interface rendered by a trading Appeal 2019-003046 Application 11/686,695 11 apparatus, as recited in claim 38. Ans. 5 (citing Opperman ¶¶ 25–26, 47– 50). For example, Opperman describes (1) an order processing server that “may operate to receive and execute financial instrument trading orders on behalf of users of the user devices 104” and “may provide market data to the users via the user devices 104” and (2) “a user interface for financial instrument trading order entry.” Opperman ¶¶ 23, 25–26, 47–50. In addition, Opperman’s user interface displayed on a user device also includes a displayed portion providing market information, which is commensurate with the broad description of “market data section” in Appellant’s Specification. See, e.g., Opperman ¶ 59. For example, “FIG. 8 shows another montage view of a type suitable for displaying information useful in options trading. At an upper portion 800 of a screen display area 802, current market information and recent historical market information is displayed with respect to an underlying equity security.” Opperman ¶ 59 (emphasis added). Fig. 8 is reproduced below. Appeal 2019-003046 Application 11/686,695 12 Opperman’s Fig. 8 shows a user interface that includes (1) “middle portion 804 of the screen display area 802, [where] current quotation information is displayed in regard to an option that corresponds to the underlying security” whereby “at a left side 806 of the middle portion 804, bid quotations for the option at various order destinations are listed in declining order of price” and “[a]t a right side 808 of the middle portion 804, ask quotations for the option at various order destinations are listed in ascending order of price” (emphases added), and (2) an input section with bid-ask pairs bordering another input section, for selecting a quantity of, e.g., “1 Option.” See Opperman ¶ 59, Fig. 8. As such, Opperman’s user interface includes a first input section (for selecting a bid-offer pair) and a second input section (for selecting a quantity), such that the market data section borders the first input section, and the first input section borders the second input section, as claimed. See Appeal 2019-003046 Application 11/686,695 13 Opperman ¶ 59, Fig. 8. We, therefore, agree with the Examiner that Opperman teaches a “graphical user interface comprising a market data section, a first input section, and a second input section, such that the market data section borders the first input section and the first input section borders the second input section,” as recited in claim 38. We are also not persuaded by Appellant’s arguments regarding Takeda. See Appeal Br. 14–15. For example, Appellant argues Takeda does not teach or suggest a “first button, which upon actuation, instructs the trading apparatus to initiate a bid or buy procedure based at least in part on a selected bid-offer pair and the selected quantity” and a “second button, which upon actuation, instructs the trading apparatus to initiate an offer or sale procedure based at least in part on the selected bid-offer pair and the selected quantity” as claimed. Id. at 15. The Examiner’s rejection, however, relies on the combined teachings of Opperman and Takeda, and we agree with the Examiner that (i) using buttons of a game controller device to execute actions on a screen is conventionally known to a skilled artisan (as shown by Takeda), and (ii) using a game controller’s buttons to execute trading actions would have been obvious to a skilled artisan as a use of a known technique to operate a displayed application (such as Opperman’s application) yielding predictable results. Final Act. 5– 6; see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[A] combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). We additionally note that conventional game controller devices are described as suitable for Appellant’s invention. For example, Appellant’s Appeal 2019-003046 Application 11/686,695 14 Specification provides that “[g]ame controller device 36 represents any suitable input device that communicates with client platform 34,” with “[e]xamples of game controller devices 36 includ[ing] video game controllers such as a joystick or a gamepad.” See Spec. 8:24–30. Appellant’s Specification also provides that trading actions may be actuated by “any machine or mechanism that is capable of placing and/or responding to trading orders.” See Spec. 7:21–27. Thus, Appellant’s use of controller “buttons” in claim 38 encompasses the use of buttons of conventional game controllers (such as, e.g., gaming mice and numeric keypads on keyboards). Additionally, Takeda discloses that its conventional game controller—which may implement multiple “kinds of actions” via multiple buttons (“[a]ction designation switches”)— may be used with an “operating device” that “can be, while in use, connected to a multipurpose image processor which generates image data of an image to be displayed on the monitor in accordance with a program” and “[i]n such a case, the operating device with an analog joystick outputs an operation signal which can modify the image data generated by the image processor, i.e. the image on the monitor in accordance with an operation by an operator.” See Takeda 5:27–36 (emphasis added), 5:47–50. In view of Takeda’s disclosure, we agree with the Examiner’s conclusion that it would have been obvious to a skilled artisan to map a conventional game controller’s buttons to execute trading actions (such as buy and sale orders that Opperman executes via “a conventional keyboard and/or a conventional pointing device such as a mouse or trackball,” see Opperman ¶ 44), as a use of a known technique to operate an application displayed on a monitor (such as a trading application disclosed in Opperman), yielding predictable results. Appeal 2019-003046 Application 11/686,695 15 See Final Act. 5–6. We, therefore, disagree with Appellant’s arguments that a skilled artisan “would not have reasonably considered combining Opperman’s trading GUI with Takeda’s video game joystick.” See Appeal. Br. 15. As discussed supra, Takeda discloses not only “an embodiment in which an operating device with an analog joystick . . . is applied to a video game machine” but also an “operating device with an analog joystick [that] according to the present invention can be, while in use, connected to a multipurpose image processor which generates image data of an image to be displayed on the monitor in accordance with a program.” See Takeda 5:21– 36. Thus, we are not persuaded of Examiner error. We, therefore, sustain the Examiner’s rejection of independent claim 38 under 35 U.S.C. § 103(a), and dependent claims 40–43 for which no separate arguments are provided. Appeal Br. 16. CONCLUSION On the record before us, we conclude Appellant has not demonstrated the Examiner erred in rejecting claims 38 and 40–43 under 35 U.S.C. § 103(a), but has demonstrated the Examiner erred in rejecting claims 38 and 40–43 under 35 U.S.C. § 101. Appeal 2019-003046 Application 11/686,695 16 DECISION SUMMARY As such, we AFFIRM the Examiner’s rejection of claims 38 and 40– 43 under 35 U.S.C. § 103(a), but REVERSE the Examiner’s rejection of claims 38 and 40–43 under 35 U.S.C. § 101. In summary: Claims Rejected 35 U.S.C.§ Basis Affirmed Reversed 38, 40–43 101 non-statutory 38, 40–43 38, 40–43 103 Opperman, Takeda 38, 40–43 Overall Outcome 38, 40–43 Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation