Noviello, Joseph C.

Patent Trials and Appeals Board

Mar 30, 2020

11686695 - (D) (P.T.A.B. Mar. 30, 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.
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.”).
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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.).
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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.
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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).
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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
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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).
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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
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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.
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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
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“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
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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.
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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
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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
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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.
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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.

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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