BGC Partners, Inc. - [2017] APO 49

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
BGC Partners, Inc. [2017] APO 49

Patent Application: 2016213779
Title:System and Method for Providing an Operator Interface for Displaying Market Data, Trader Options, and Trader Input

Patent Applicant:                   BGC Partners, Inc.
Delegate:  M. G. Kraefft
Decision Date:  29 September 2017
Hearing Date:  Written submissions filed 4 August 2017

Catchwords: PATENTS – section 45 – examiner’s objections – proposed amendments filed with submissions – whether the claimed invention as proposed to be amended is a manner of manufacture – substance of invention in market data and trader input displays and selection of options with game controller device – claimed invention not a manner of manufacture – whether the claimed invention has inventive step – claimed invention has inventive step over cited art.

Representation: Patent attorney for the applicant: Pizzeys.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016213779

Title:System and Method for Providing an Operator Interface for Displaying Market Data, Trader Options, and Trader Input

Patent Applicant: BGC Partners, Inc.
Date of Decision: 29 September 2017
DECISION
The claimed invention, as proposed to be amended, and any alleged invention in the specification, is not for a manner of manufacture. On the other hand the claimed invention has an inventive step over the prior art raised in this case.
The defect in respect to manner of manufacture is insurmountable in the present case.
The application is refused.
REASONS FOR DECISION
BACKGROUND

BGC Partners, Inc (“the applicant”) filed patent application 2016213779 on 10 August 2016. The application is a divisional application based on application 2014210575 (“the parent application”). The latter application is similarly a divisional application based on application 2008201040. That application is based on a US application 11/686695. The earliest claimed priority date is 15 March 2007.
The present application was subjected to an examination report dated 9 June 2017. In that report the examiner repeated manner of manufacture, inventive step and Section 40 objections taken against the parent application as the claims of the present application were the same as those in the parent application.
The examiner’s report also included the following passage.
“My report below includes objections that are equivalent to objections raised in the examination of the related parent application which is directed to the same or essentially the same subject matter. As there have now been several adverse reports in relation to this subject matter, the application will be referred to a Hearing Officer to consider whether to accept or refuse the application under s49 or to direct amendment under s107. If you wish to be heard on this matter, you have 1 month from the date of this report to request a hearing.” (emphasis in the original).
The applicant subsequently requested to be heard. The hearing was conducted by way of written submissions.
SPECIFICATION
The specification states that the invention relates generally to the field of operator interface processing and more specifically to a system and method for providing an operator interface for displaying market data, trader options and trader input. As background, the specification mentions the widespread acceptance of electronic trading systems for trading a wide variety of items, such as goods, services, financial instruments, and commodities. For example, electronic trading systems may be used to trade stocks, fixed income securities, currencies, futures contracts, oil and gold.
Electronic trading systems may have a number of client systems connected to a trading platform. A client system may include input devices, such as keyboards or mouse devices, that may be used to communicate with the trading system. In some instances, keyboards may be specifically designed for use with a trading system.
The specification then states that, in accordance with the present invention, disadvantages and problems associated with previous techniques for displaying market data, trader options and trader input may be reduced or eliminated.
Together with its written submissions for the hearing, the applicant filed proposed amendments to the claims of the specification.
The specification, as proposed to be amended, ends with 17 claims. Claim 1 is the only independent claim. This claim reads as follows.
1.A system comprising:
at least one processor; and
at least one memory that stores market data for a trading product, the market data comprising an inside market price, a bid quantity, and an offer quantity for the trading product, in which the at least one memory further stores instructions which, when executed by the at least one processor, direct the at least one processor to:
initiate display, at a display device in electronic communication with the at least one processor, of a market data section of a tile of one or more tiles, the market data section comprising the market data including the inside market price;
initiate display at the display device of a trader input section of the tile, the trader input section comprising a plurality of options, the plurality of options comprising a plurality of price indicia and a plurality of quantity indicia, the plurality of price indicia comprising at least three price indicia;
receive from a game controller device electronically coupled to the at least one processor a selection of a bid-offer pair for the trading product from the plurality of options, in which the selection of the bid-offer pair comprises a simultaneous selection of two of the plurality of price indicia using via (sic) a single actuation of a single knob of the game controller device, in which a first the (sic) two selected price indicia corresponds to a selected bid price and a second of the two selected price indicia corresponds to a selected offer price;
receive from the game controller device a selection of a quantity of the trading product, in which the selection of the quantity comprises a selection of one of the plurality of quantity indicia using a knob of the game controller device; and
update the trader input section to indicate that the selected bid-offer pair and the selected quantity have been selected.
Compared to the broadest claims as filed, the significant alterations reflected by the above claim reside in the plurality of options comprising a plurality of price indicia and a plurality of quantity indicia, the inclusion of a game controller device and the selection functionalities associated with the knobs of the game controller device.
APPLICABLE LAW
The present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act. The application was filed after 15 April 2013.
Thus the standard of proof that applies in the present case is the balance of probabilities. I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
Section 18 of the Patents Act 1990 provides that:-
(1)Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i)is novel; and
(ii)involves an inventive step; …
SUBMISSIONS
On manner of manufacture, the applicant submitted that the claimed invention did not relate to a scheme, whereby a scheme is defined as a mere command or arrangement. Instead, the claims were directed towards a system comprising an improved combination of hardware and the interactions between the hardware elements. The system comprised a processor, memory, display device and game controller that interacted in a unique manner. The applicant further submitted that the law did not require an improvement in hardware. Rather, the improvement could be in the way that the hardware was utilised. Moreover, the applicant emphasised the use of a game controller as an input device for a trading platform in the present case. The claimed invention addressed a problem that existed in the technology itself, and improved trading platform functionality by allowing for the use of a game controller.
In respect to inventive step, the applicant submitted that neither of the examiner’s citations taught or fairly suggested selecting a bid-offer pair from among a plurality of options displayed in a tile. Moreover the applicant referred to the High Court decision in Aktiebolaget Hässle v Alphapharm Pty Ltd, [2002] HCA 59, amongst others, to state that the test of “obvious to try” was not a valid test for obviousness. Rather, it must be shown that the skilled person would have been “directly led as a matter of course to try” the invention with a reasonable expectation of success. Applying the statements from several decided cases, the applicant stated there was no evidence that the skilled person would have been directly led as a matter of course to try a system for using a game controller device for electronic trading having the detailed claimed features. Additionally, the misuse of hindsight must be avoided. The question was whether the claimed combination as a whole, not each integer of the combination, was obvious.
MANNER OF MANUFACTURE
Case law
In National Research Development Corporation v Commissioner of Patents (“NRDC”), [1959] HCA 67, (1959) 102 CLR 252, the High Court provided a statement of the law in respect to manner of manufacture. At page 275, “… a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art …- that its value to the country is in the field of economic endeavour”. In discussing the “vendible product” proposition put forward by Morton J in Re G.E.C’s Application, (1942) 60 RPC 1, the High Court in NRDC upheld the validity of a patent for the use of previously unknown properties of a known chemical to effect a new purpose. At page 277:-
“The effect produced by the appellant’s method exhibits the two essential qualities upon which “product” and “vendible” seem designed to insist. It is a “product” because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage … for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits.”
The High Court though was not laying down a precise formulation that can be applied unthinkingly. In D’Arcy v Myriad Genetics Inc (“Myriad”), [2015] HCA 35, at [23]:-
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of “manner of manufacture” in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.”
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim. The point was made succinctly in the Myriad case by Gageler and Nettle JJ. At [144]:-
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
In Commissioner of Patents v RPL Central Pty Ltd (“RPL”), [2015] FCAFC 177, the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme. At [96]:-
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed.”
Moreover at [98]:-
“It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent”.
The Full Court of the Federal Court in RPL then detailed a number of considerations relevant to the determination and coming from earlier decisions of the Court. Summarising from [99] of RPL:-
- It is necessary to ascertain whether the contribution to the claimed invention is technical in nature.
- One consideration is whether the invention solves a “technical” problem within the computer or outside the computer, or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
- Does the claimed method merely require generic computer implementation?
- Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea?
In Research Affiliates LLC v Commissioner of Patents, [2014] FCAFC 150, the Full Federal Court noted similarities in approach between Australia, the United Kingdom (“UK”) and the United States (“US”). In particular, the UK consideration of the “necessary technical contribution”, in the context of the statutory exclusions existing in the UK, was of relevance to an analysis of a necessary technical or artificial effect under Australian law (see [36], [45]). It follows that the UK cases may provide assistance in the present case.
In Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application, [2006] EWCA Civ 1371; [2007] RPC 7, the England and Wales Court of Appeal outlined a four-step “technical effect” approach in respect to the question of excluded subject matter under UK law. At [40]:-
“(1) properly construe the claim
(2)identify the actual contribution;
(3)ask whether it falls solely within the excluded subject matter;
(4)check whether the actual or alleged contribution is actually technical in nature.”
In addressing the second step, Jacob L.J. stated at [43]:-
“The second step – identify the contribution – is said to be more problematical. How do you assess the contribution? Mr Birss submits the test is workable – it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended.”
In IGT v The Comptroller General of Patents, [2007] EWHC 1341 (Pat), the High Court of England and Wales at [12] followed the four-step approach from Aerotel. Moreover at [39]:-
“… applying the Aerotel four stage test, the issue of what is ‘technical’ is of much less importance than in the past since that aspect ought to have been dealt with in looking at the third step.”
Research Affiliates at [29] also cited the four step approach from Aerotel.
On the other hand, care must be taken not to determine the substance of the claimed invention merely on the basis of excluding known features in the claims. As indicated by Kitchin L.J. in Lantana Limited v The Comptroller General of Patents, Design and Trade Marks, [2014] EWCA Civ 1463, at [64]:-
“… it is the claim as a whole which must be considered when assessing the contribution which the invention has made, and that it is not permissible simply to cut the claim into pieces and then consider those pieces separately and without regard to the way they interact with each other. Thus in Symbian Ltd v Comptroller-General of Patents [2008] EWCA Civ 1066, [2009] RPC 1, Lord Neuberger (giving the judgment of the court) said at [37] (referring to decision T 0208/84 Vicom Systems Inc/Computer related invention [1987] OJ EPO 14, [1987] 2 EPOR 74 at [37]):
‘Finally at [16] the Board described “making a distinction between embodiments of the same invention carried out in hardware or in software” as “inappropriate”, as what is decisive is “the technical contribution which the invention described in the claim when considered as a whole makes to the known art”.’
Discussion
In the present case claim 1, as proposed to be amended, defines an arrangement of system elements comprising at least one processor, at least one memory, a display device and a game controller device. The memory stores market data for a trading product and executable instructions for the processor. The display device and the game controller device are electronically coupled to the processor.
The processor is operable to initiate displays at the display device of a market data section of a display tile, comprising the market data, and a trader input section of the tile. The trader input section comprises a plurality of options which in turn comprise a plurality of price indicia and quantity indicia. The processor is further operable to receive from the game controller device selections of a bid-offer pair for the trading product from the plurality of options and of a quantity of the trading product, and to update the trader input section display to indicate the selections.
The nature of the selection operations, as claimed, appears to have at least one characterising feature. Firstly the background section of the specification discusses electronic trading systems with client systems that may include input devices such as keyboards or mouse devices, as opposed to the game controller device as in the proposed claims. Moreover, the selection of the bid-offer pair comprises a simultaneous selection of two of the plurality of price indicia via a single actuation of a single knob of the game controller device. The first of the two selected price indicia corresponds to a selected bid price and the second of the two selected price indicia corresponds to a selected offer price. The selection of the quantity of the trading product comprises a selection of one of the plurality of quantity indicia using a knob of the game controller device.
Figure 2 of the specification is illustrative of the display and is reproduced below.
From the above diagram, the market data section 114 of the display is evident. Market data in the market data section may be received and displayed in real-time or near real-time. Bid quantity 124 is the quantity of the best bid for the trading product. Offer quantity 126 is the quantity of the best offer for the trading product. The inside market price represents the bid price of the best bid and the offer price of the best offer. In the above diagram, the trader input section 118 of the display is also evident. Moreover the latter section illustrates bid-offer pair options 140a and quantity options 140b. Through the game controller device, a trader may move selection box 144a to select a bid-offer pair and move selection box 144b to select a quantity.
From the above and from the specification as a whole, it would appear that the substance of the claimed invention lies in the market data section and the trader input section displays, the user selection of options from the latter, the update of the trader input section display to indicate the selections, and the enablement of selection, amongst other selections, of two price indicia simultaneously via a single actuation of a single knob of the game controller device.

It may be that there is some ease of viewing associated with the market data section and the trader input section displays. On the other hand, methods or systems for facilitating electronic trading and where the displays are little more than mere presentations of information would appear to fail the tests for manner of manufacture. In BGC Partners, Inc. et al, [2017] APO 43, the alleged invention related to “first-on-the-follow” trading rules. These trading rules related to the respective priority of participants to trade exclusively or semi-exclusively following a transition from a first to a second trading state. To obtain “first-on-the-follow” priority rights, a participant may need to be previously identified as the best bidder or offeror at the conclusion of a previous trade state and satisfy other predetermined trading requirements. In Trading Technologies International, Inc., [2017] APO 13, the alleged invention, similarly to the present case, related to the electronic trading of commodities. In that case, the commodities were stated to include anything that can be traded with quantities and/or prices. Specifically the invention provided a trader with a versatile and efficient electronic spread trading tool to be used when buying and selling commodities of the same or similar class either simultaneously or in conjunction with one another. The specification indicated that a spread is simply the simultaneous buying of one commodity and the selling of another. Furthermore, spread trading is the process of protecting a position where an investment is made by taking an offsetting position in a related product to reduce the risk of adverse price movements. In Trading Technologies, the spread trading tool comprised a display and culminated in displaying at the client device a plurality of spread prices and dynamically displaying at the client device cumulated traded spread quantities corresponding to the spread prices, thereby enabling a user to execute a trade order via a user input means in response to the display at the client device.
The present case appears to be similar. The display is divided into a market data section and a trader input section, whereby a user may select from options indicated in the trader input section. In the present case it may be said that the claimed invention is nothing significantly more than the design of a display arrangement of elements in a trading environment and the normal programming control of an interface to interact with the display design. The specification does not allude to any significant issues in respect to the programmability of this arrangement.
In submissions, the applicant emphasised the use of a game controller device as an input device. The present claims define the use of knobs and buttons of the game controller device and that particular modes of operating those knobs and buttons have specified functions related to trading selections. On the other hand, this would appear to be nothing materially beyond the normal and well-known use, before the priority date, of a game controller for controlled user inputs related to program selection or the playing of games on display screens. The defined functions of the knobs of the game controller are also broadly analogous to the use of the arrow keys of a keyboard to highlight or select features in a display. In NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, [1993] FCA 404, Burchett J provided some caution concerning analogous use. The subject matter in that case concerned the use of phosphors in a compact, high energy-loaded lamp as opposed to in a conventional, fluorescent lamp. At [23]:-
“Although it might be said, as a matter of simple English, that use in a highly loaded lamp is analogous to use in an ordinary lamp, that is not the meaning which ‘analogous’ has in patent law. An analogous use in patent law is one which presents no difficulty to be overcome, the adoption of which requires no inventive step. The example commonly given is illuminating. The first person to use stainless steel to make a sink would have applied to an analogous use (analogous to a great number of other uses to which it had already been put) a material already known to have every quality required, and he would have made an item each feature of which was already completely understood; he would have overcome no difficulty at all.”
In the present case the operations of the knobs of a game controller, for example their movement in an axial direction having a corresponding direction along a display axis of the display device, are akin to the use of the arrow keys of a keyboard. In fact, the specification at the foot of page 4 describes examples of interface input devices for the present alleged invention to include a game controller, a keyboard, a mouse, a microphone and/or another end-user element. Thus the programming to enable responsiveness of displayed features on a display device to the inputs from the interface device, whether that be a game controller with knobs or a keyboard with arrow keys, or other means of input or device, would appear to require no difficulty to adapt for different interface devices.
Even if the focus were on the game controller device as the only suitable interface device, the specification does not indicate any particular design or programming of the game controller device to achieve anything beyond the normal operation of the device. For example there may be some merit if some form of strategic positioning of the buttons and knobs of the device enabled enhanced efficiency of operation of the device. Alternatively there may be some merit if particular programming of the game controller enabled enhanced input to the display device. On the contrary, Figure 3 of the specification illustrates a substantially standard game controller device at the relevant time. Furthermore, the associated description at pages 7 and 8 of the specification is absent of any description of the layout of Figure 3 providing any particular advantage. Moreover, the specification describes the selection functions of the buttons and knobs only in a generic sense, characterised only by their use for trade selections.
There may be something more in the enablement of selection of two indicia simultaneously via a single actuation of a single knob of the game controller device. This appears to have similarities with the invention considered in Aristocrat Technologies Australia Pty Ltd, [2016] APO 49. In that case, the delegate viewed the substance of the invention as the presentation of game information, in a multi-game gaming machine, in a way that allowed the game and bet denomination to be selected in a single action. The selection was made through touch screen input from the player. According to the delegate, at [48], it was apparent that this would achieve a practical and useful result by simplifying the use of the gaming machine by the player. It did not appear normal, at the priority date, to configure a gaming machine in this particular way. Information was located in a particular position and functionality was generated by the use of this positional location to improve the gaming machine.
In the Aristocrat case, there are varied multiples of bet options associated with different games illustrated on the display screen. The selection of a particular bet option with a particular game is made by touching the appropriate, particular area of the touch screen. In the present case, bid prices are paired with offer prices to form bid-offer pairs and are displayed together as a pair for selection by a trader. Moreover the bid-offer pairs are arranged sequentially adjacent to each other whereby the user selects a pair by controlling movement of a selection box past other pairs to the chosen pair. That is, one entity is selected with one actuation, as is normal of selection devices, albeit the one entity has two items within it. It is not readily apparent that any device is improved by this arrangement.
Thus the contribution to the art resides in the design layouts of the market data section and trader input section of a display and the use of a game controller device as an input device to enable user selections from the trader input section of the display. This is largely a programming issue. In this respect, the description of an interface application stored in the memory of a client platform on page 5 of the specification, together with Figure 1 below, is instructive.
Specifically at page 5:-
“Interface application 50 comprises an application that allows interface devices 28 to receive and/or transmit information. For example, interface application 50 may include a graphical user interface (GUI) application that generates display 11 on display device 32. In the example, interface application 50 may change display 11 in response to commands from interface devices 28 and/or trading platform 14. In the example, interface application 50 may also send messages to interface devices 28 and/or trading platform 14 in response to commands from interface devices 28 and/or trading platform 14.
In the illustrated embodiment, interface application 50 includes a mapping module 80. Mapping module 80 maps signals received from interface devices 28 and/or trading platform 14 with commands of trading system 10. In one example, a signal may be sent by trader 24 moving a joystick, pressing a button, and/or performing any other manipulation of an interface device 28.”
The specification is absent of any specific hardware or software solution, in respect to the interface application or otherwise, that may have required more than routine skill of the skilled addressee to implement the claimed system at the relevant time. Thus it would be fair to conclude that the claimed invention does not require anything beyond generic computer implementation. Alternatively there are no steps claimed or disclosed that are foreign to the normal use of computers in the present case. Moreover I see no contribution to the art that is technical in nature. I conclude the claimed invention, and any alleged invention in the specification, is not for a manner of manufacture.
INVENTIVE STEP
Subsection 7(2) of the Patents Act states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before the priority date of the relevant claim, whether that knowledge is considered separately or together with information mentioned in subsection (3).
Subsection 7(3) states the information for the purposes of subsection (2) is any single piece of prior art information, or a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date, be reasonably expected to have combined.
Case law
The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12, 148 CLR 262 at 286 [45], Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd, [2002] HCA 59, (2002) 56 IPR 129 at [50] – [53], appeared to approve of the Wellcome test. In discussing what was meant by a matter of routine the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative.
In AstraZeneca AB v Apotex Pty Ltd, [2014] FCAFC 99, the court held at [203] that in formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art either as common general knowledge or information available under subsection 7(3).
Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base. In Alphapharm at [41], the High Court stated:
“The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”
Person Skilled in the Art
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, [2000] FCA 980, Finkelstein J stated at [70] and [71] that the skilled addressee is the person to whom the patent is addressed and who must construe it. Such person works in the art or science with which the invention is connected or is likely to have a practical interest in the subject matter of the invention. A variety of people may have that interest. Finkelstein J further noted various descriptions given to the skilled addressee. These included the “uninventive skilled worker in the particular field” (Leonardis v Sartas No 1 Pty Ltd, (1996) 67 FCR 126) and the “person skilled in the art” (Genentech Inc v Wellcome Foundation Ltd, (1989) 15 IPR 423).
The applicant did not appear to offer an indication in submissions as to the nature of the person skilled in the present art. In the absence of any contrary indications, I would suggest the relevant person skilled in the present case would comprise a team including one skilled in electronic trading systems and one skilled in software solutions to facilitate such trading.
Discussion
In the examination report, the examiner maintained an inventive step objection taken against the parent application. The latter objection stated that certain former claims lacked an inventive step “in light of the prior art documents D1 and D2 discussed in US Non-Final Rejection on corresponding US application 11/686695 and dated 14 November 2008”.
The US Non-Final Rejection does not appear to designate any documents as D1 or D2. On the other hand, there appear to be two primary citations. These are US 2005/0144113 to Opperman et al and US 2002/0163597 to Kelleher et al. I will consider these documents and refer to them as D1 and D2, respectively.
US 2005/0144113 (“D1”)
D1 discloses methods and apparatus for facilitating financial instrument trading orders. D1 further discloses system elements and the functionality thereof similar to the present case, although absent a game controller device as the input device. Financial instrument trading information may be displayed on a display screen. The financial instrument trading information may include a first menu for displaying a first set of alternatives with respect to a first order parameter. User selection from the first set of alternatives may determine the display of a second menu as part of the financial instrument trading information. The second menu may display a second set of alternatives for selection by the user. Embodiments of the display and the selection of elements therefrom may be through a pull down menu.
The substantive differences of the claimed invention, as proposed to be amended, over D1 are that the former defines the separation of the display into a market data section and a trader input section, and the simultaneous selection of two paired, price indicia by single actuation of a single knob of the game controller. Additionally D1 does not disclose the display being made up of one or more tiles. I am prepared to accept that the separation of a display into data and input sections would not have been inventive at the priority date. Similarly I would find there was no inventive step in separating a display into tiles, whether that be for different displays in different tiles or for displaying a composite image across multiple tiles.
On the other hand, the enablement of selection of two, paired price indicia by single actuation of a single knob of the game controller appears to be beyond something the person skilled in the art would directly have been led as a matter of course to try at the relevant time.
I conclude the claimed invention has an inventive step over D1.
US 2002/0163597 (“D2”)
D2 discloses a multi-tile video display system. The display system includes a computer system that receives data from a plurality of remote, digital data sources. The data sources may be a weather collection source, another computer system and a television. The display system’s computer system generates a plurality of video signals in response to processing the data. An interface circuit generates display signals in response to processing of the video signals. The display signals correspond to a fractional portion of a high-resolution image. After processing the display signals, the displays jointly produce an expansive high-resolution image.
In D2 there is no reference to electronic trading systems. Therefore D2 is only potentially of relevance if combined with D1. As mentioned earlier, the relevant person skilled in the present art would comprise a team including one skilled in electronic trading systems and one skilled in software solutions to facilitate such trading. I would expect the latter would also have the skills to develop display systems and generate appropriate displays commensurate with trading environments. I am prepared to accept the relevant team could be reasonably expected to have combined D1 and D2 before the priority date.
Even if D1 and D2 were combined, the two disclosures do not arrive at an electronic trading system involving a game controller device that enables selection of two, paired price indicia by single actuation of a single knob of the game controller.
I conclude the claimed invention has an inventive step over D1 and D2 if combined.
SECTION 40
In the examination report, the examiner maintained a Section 40 objection taken against the parent application. The latter objection stated that the former claims 21-23 did not comply with Subsection 40(3A) because they relied on references to descriptions or drawings which were not absolutely necessary to define the invention. The present claims, as proposed to be amended, do not include any such claims. If the amendment were allowed, the Section 40 objection would be overcome.
CONCLUSION
I have concluded the claimed invention, as proposed to be amended, and any alleged invention in the specification, is not for a manner of manufacture. On the other hand I have also concluded that the claimed invention has an inventive step over D1 and D2.
I also conclude the defect in respect to manner of manufacture is insurmountable in the present case.
I refuse the application.
I note that the applicant has filed a further divisional application, 2017219145. As noted by the Deputy Commissioner in Swiss Reinsurance Company Limited, [2017] APO 12 at [4], while this is permitted by the Act, it is the cause of considerable wastage of Patent Office resources and presumably significant inconvenience for any interested third parties, and without any apparent benefit to the applicant.
M. G. Kraefft
Delegate of the Commissioner of Patents