Driscoll, James R. et al.

Patent Trials and Appeals Board

Mar 13, 2020

12985894 - (D) (P.T.A.B. Mar. 13, 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.
12/985,894 01/06/2011 James R. Driscoll 07-2104-C3 5260
63710 7590 03/13/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
LEMIEUX, JESSICA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/13/2020 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 JAMES R. DRISCOLL and MATTHEW W. CLAUS
____________

Appeal 2019–001660
Application 12/985,8941
Technology Center 3600
_______________

Before HUNG H. BUI, JOHN F. HORVATH, and ADAM J. PYONIN,
Administrative Patent Judges.

BUI, 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 1–5 and 7–13, which are all the claims
pending in the application. Claims 6 and 14–18 are cancelled, and claims
19–27 are withdrawn from consideration. Appeal Br. 18–22 (Claims App.).
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. Appellant identifies BGC PARTNERS, INC., as the real
party in interest. Appeal Br. 3.
2 Our Decision refers to the Appellant’s Appeal Brief filed February 23,
2018 (“Appeal Br.”); the Reply Brief filed December 18, 2018 (“Reply
Br.”); the Examiner’s Answer mailed October 19, 2018 (“Ans.”); the Final
Office Action mailed July 7, 2017 (“Final Act.”); and the original
Specification filed January 6, 2011 (“Spec.”).
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STATEMENT OF THE CASE
Appellant’s invention relates to “systems and methods for placing test
orders and real orders, processing the test orders and the real orders, and
transmitting results of processing the tests orders and real orders back to the
entities originating the orders.” Spec. 17:27–30. According to Appellant, “a
test order may be used to test the state and response of a trading computer
system,” but “does not bind the party placing the test order to fulfill a
contract to tender the money or securities specified in the test order.” Spec.
17:31–18:2. “In an embodiment, a trading and processing computer system
processes a test order similarly to a real order by matching the test order
with another order and then generally executing the test order, but it does not
generate a transaction involving the test order.” Spec. 18:7–10.
Claim 1—the only independent claim on appeal—is representative of
Appellant’s invention, reproduced below:
1. A computer-implemented method for testing a trading
system comprising:
receiving, by at least one processor, data indicative of
real orders for an instrument and data indicative of test orders
for the instrument;
generating, by the at least one processor, a plurality of
electronic test order books in a memory coupled to the at least
one processor, in response to receipt of the test orders;
searching, by the at least one processor, a real order for
the instrument that matches the test order;
in response to finding the matching real order,
identifying, by the at least one processor, whether a computer
system workload is below a threshold value;
in response to determining that the workload is below a
threshold value, generating, by the at least one processor, a bid
table and an offer table in a memory; and
automatically executing, by the at least one processor, the
test order using the bid table and the offer table; and
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transmitting, by the at least one processor, data indicative
of a report regarding the test order to an originating device of
the test order.

Appeal Br. 18 (Claims App.).

EXAMINER’S REJECTIONS
(1) Claims 1–5 and 7–13 stand rejected under pre-AIA
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 22–24.
(2) Claims 1–5 and 7–13 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 8–21.

ANALYSIS
35 U.S.C. § 112, First Paragraph: Written Description
Claim 1 recites a computer-implemented method for testing a trading
system comprising, inter alia: “generating, by the at least one processor, a
plurality of electronic test order books in a memory coupled to the at least
one processor, in response to receipt of the test orders.”
In support of the § 112, first paragraph rejection of claims 1–5 and 7–
13, the Examiner finds the limitations: (1) “testing a trading system” and (2)
“generating, by the at least one processor, a plurality of electronic test order
books in a memory coupled to the at least one processor, in response to
receipt of the test orders” lack written description support from the
Specification. Final Act. 22–24.
Appellant argues the limitation “testing a trading system” is described
in paragraph 104 (“[a] test order may be used to test the state and response
of a trading computer system”) and paragraphs 105–120 (“trading and
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processing computer system processes a test order similarly to a real order
by matching the test order with another order and then generally executing
the test order”) of the Specification. Appeal Br. 14–15. Similarly,
Appellant argues the limitation “generating . . . a plurality of electronic test
order books . . . in response to receipt of the test orders” is described in
paragraphs 107 and 126 of the Specification. Appeal Br. 15.
In response, the Examiner does not account for Appellant’s
arguments. Instead, the Examiner asserts that because the Specification
describes “a variety of tools to test trading strategies” with “[t]he goal of
such tools [] to determine trading strategies that will result in maximal profit
to the trader,” “[i]t cannot be seen where strategies is a synonym for system,
particularly in regard to computer.” Ans. 16–17 (citing Spec. 16:24–26).
We do not agree with the Examiner. The written description
requirement under 35 U.S.C. § 112, first paragraph requires Appellant to
“reasonably convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
“[T]he level of detail required to satisfy the written description requirement
varies depending on the nature and scope of the claims and on the
complexity and predictability of the relevant technology.” Id. However,
“the disclosure as originally filed does not have to provide in haec verba
support for the claimed subject matter at issue.” Purdue Pharma L.P. v.
Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). In some cases,
“drawings alone may provide a ‘written description’ of an invention as
required by § 112.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed.
Cir. 1991). Regardless, the disclosure must convey with reasonable clarity
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to those skilled in the art that the inventor was in possession of the invention.
Id. at 1563–64.
Here, Appellant has shown that there is sufficient structure and
description in the Specification as filed to support the disputed limitations
recited in claims 1–5 and 7–13. For example, paragraph 104 of the
Specification describes the use of “a test order [] to test the state and
response of a trading computer system.” Spec. ¶ 104. Paragraphs 105–120
of the Specification describe a “computer system [that] processes a test order
similarly to a real order by matching the test order with another order and
then generally executing the test order.” Spec. ¶¶ 105–120. Similarly,
Figure 7 shows processing of an order book for an instrument (e.g., stock),
including determining whether orders match, whether matching orders are
test or real orders, and under what conditions to execute and transact
matching orders. Spec. ¶¶ 99, 143.
Figure 7 is reproduced below:
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Appellant’s Figure 7 shows order book processing of orders for an
instrument, including processing of test orders.

In light of these teachings and Appellant’s Figure 7, we agree with
Appellant that (1) a skilled artisan would understand that the scope of claim
1 is supported by the specification as originally filed, and (2) Appellant has
“reasonably convey[ed] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.”
For these reasons, we do not sustain the § 112, first paragraph
rejection of claims 1–5 and 7–13 for failure to comply with the written
description requirement.

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35 U.S.C. § 101: Patent-Ineligible Subject Matter
In support of the 35 U.S.C. § 101 rejection of claims 1–5 and 7–13,
the Examiner determines Appellant’s claims are directed to “a method of
trading financial orders,” and “involve comparing values related to a test
order and a real order and executing orders based on those values” “which is
a fundamental economic practice and therefore an abstract idea.” Final Act.
11; Ans. 17.
The Examiner also determines the additional elements (i.e., “trading
system,” “processor,” “computer system,” and “memory” recited in claim 1),
when analyzed individually or in combination, do not amount to
significantly more than the abstract idea because these additional elements:
(1) “do not include an improvement to another technology or technical field,
an improvement to the functioning of the computer,” (2) “are recited at a
high level of generality,” and (3) perform “generic computer functions that
are well-understood, routine and conventional activities.” Final Act. 14–17.
Legal Framework
To determine whether claims are patent eligible under
35 U.S.C. § 101, we apply the Supreme Court’s two-step framework
articulated in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). First, we
determine whether the claims are directed to a patent-ineligible concept:
laws of nature, natural phenomena, and abstract ideas. See Alice, 573 U.S. at
216. If so, we then proceed to the second step to consider the elements of
the claims “individually and ‘as an ordered combination’” to determine
whether there are additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Id. at 217. In other words, the
second step is to “search for an ‘inventive concept’—i.e., an element or
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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.’” Id. at 217–18 (quotation marks omitted).
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); see also 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 prosecution framework for all patent-eligibility
analysis under Alice and 35 U.S.C. § 101 effective as of January 7, 2019.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50–57 (Jan. 7, 2019); see also USPTO October 2019 Update: Subject Matter
Eligibility, 84 Fed. Reg. 55942–53 (Oct. 17, 2019) (Updating the guidance
promulgated in January 2019 with “examples as well as a discussion of
various issues raised by the public comments.”). “All USPTO personnel are,
as a matter of internal agency management, expected to follow the
guidance.” See 2019 Revised Guidance, 84 Fed. Reg. 51; see also October
2019 Update.
2019 Revised Guidance, 84 Fed. Reg.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look under Alice step 1 or “Step 2A” to whether the claim recites:
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(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. 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; 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, 84 Fed. Reg. 56; see also 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

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. 56.
In the briefing, Appellant refers to prior USPTO guidance regarding
35 U.S.C. § 101, i.e., the May 2016 Subject Matter Eligibility Update, 81

3 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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Fed. Reg. 27,381 (May 6, 2016). Final Act. 7–8. However, 2019 Revised
Guidance has superseded all prior guidance. See 2019 Revised Guidance, 84
Fed. Reg. 52; see also October 2019 Update: Subject Matter Eligibility, 17.
As such, we review the 101 rejection de novo (Dealertrack, Inc. v. Huber,
674 F.3d 1315, 1333 (Fed. Cir. 2012)) in accordance with the 2019 Revised
Guidance below.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 Identified in the Revised Guidance
Step 2A—Prong 1
Appellant does not dispute the Examiner’s determination that the
claims recite “a method of trading financial orders,” “which is a fundamental
economic practice and therefore an abstract idea.” Final Act. 11; Ans. 17.
Instead, Appellant argues (1) the Examiner “oversimplifies the claims by
looking at them generally and failing to account for the specific
requirements recited in the claims”; (2) “the courts have never held a method
for testing a trading system to be an abstract idea”; and (3) the Examiner
“cites a series of decisions that are irrelevant to the facts of the instant case,”
including “Bilski, Alice,[]Dealertrack,4 Bancorp, 5 buySafe,6 Planet Bingo,7

4 Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012).
5 Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266 (Fed. Cir. 2012)..
6 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014).
7 Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1007–08 (Fed. Cir.
2014).
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CyberSource,8 Classen,9 Accenture,10 In Re Grams,11 CyberSource.”
Appeal Br. 7–8.
Appellant’s arguments are not persuasive. At the outset, we note
Appellant’s Specification and claims describe “systems and methods for
placing test orders and real orders, processing the test orders and the real
orders, and transmitting results of processing the tests orders and real orders
back to the entities originating the orders.” Spec. 17:27–30. According to
Appellant, “[a] test order may be used to test the state and response of a
trading computer system,” but “does not bind the party placing the test order
to fulfill a contract to tender the money or securities specified in the test
order.” Spec. 17:31–18:2. “In an embodiment, a trading and processing
computer system processes a test order similarly to a real order by matching
the test order with another order and then generally executing the test order,
but it does not generate a transaction involving the test order.” Spec. 18:7–
10.
For example, Appellant’s claim 1 recites (1) “receiving . . . data
indicative of real orders for an instrument and data indicative of test orders
for the instrument”; (2) “generating . . . a plurality of electronic test order
books . . . in response to receipt of the test orders”; (3) “searching . . . a real
order for the instrument that matches the test order”; (4) “identifying . . .

8 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011).
9 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1066–68
(Fed. Cir. 2011).
10 Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d
1336 (Fed. Cir. 2013).
11 In re Grams, 888 F.2d 835 (Fed. Cir. 1989).
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whether a computer system workload is below a threshold value”; (5)
“generating . . . a bid table and an offer table in a memory”; (6)
“automatically executing . . . the test order using the bid table and the offer
table”; and (7) “transmitting . . . data indicative of a report regarding the test
order to an originating device of the test order.” These limitations recite
known commercial activities, especially in the context of a stock exchange
(“a trading computer system for trading securities”) where “[t]raders run a
variety of tools to test trading strategies” with the “goal of such tools [] to
determine trading strategies that will result in maximal profit to the trader.”
Spec. 16:24–26.
As correctly recognized by the Examiner, limitations of Appellant’s
claim 1, under their broadest reasonable interpretation, recite “commercial
practices” and fundamental economic practices (including testing trading
strategies to maximize profit) in our system of commerce, examples of
“certain methods of organizing human activity” identified in the 2019
Revised Guidance, and therefore the claim recites an abstract idea. See 2019
Revised Guidance (Revised Step 2A, Prong One), 84 Fed. Reg. at 52
(describing an abstract idea category of “[c]ertain methods of organizing
human activity—fundamental economic principles or practices . . .
commercial or legal interactions (including . . . advertising, marketing or
sales activities or behaviors; business relations)”), 54. See Spec. 1:16–2:2,
2:22–31, 5:4–18, 9:13–28.
Such economic activities are squarely within the realm of abstract
ideas, including those identified by the Supreme Court and the Federal
Circuit as abstract ideas, such as, for example: (1) the risk hedging in Bilski
v. Kappos, 561 U.S. 593 (2010); (2) the intermediated settlement in Alice,
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573 U.S. at 220; (3) verifying credit card transactions in CyberSource, 654
F.3d at 1370; (4) managing a stable value protected life insurance policy in
Bancorp Servs.; (5) guaranteeing transactions in buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014); (6) distributing products over the
Internet in Ultramercial Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014); (7) determining a price of a product offered to a purchasing
organization in Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306
(Fed. Cir. 2015); (8) pricing a product for sale in OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015); (9) delivering user-
selected media content (i.e., targeted advertisement) to a portable device in
Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1269, 1271
(Fed. Cir. 2016); and (10) taking orders from restaurant customers in Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016).
Under the October 2019 Update: Subject Matter Eligibility, 84 Fed.
Reg. 55942–53 (Oct. 17, 2019), we also agree with the Examiner’s
determination that:
“the claims involve concepts relating to performance of financial
transactions, concepts relating to managing transactions between
people, as well as concepts relating to processes of searching a
real order for the instrument that matches the test order and
comparing data (comparing the bid table and the offer table) that
can be performed mentally,”

which is similar to the claims found by the Federal Circuit to be an abstract
idea in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that the concept of “collecting information,
analyzing it, and displaying certain results of the collection and analysis” is
an abstract idea). Ans. 18; see also CyberSource Corp. v. Retail Decisions,
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Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (“[A] method that can be
performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101.”); see also In re Comiskey, 554 F.3d 967, 979
(Fed. Cir. 2009) (“[M]ental processes—or processes of human thinking—
standing alone are not patentable even if they have practical application.”);
Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, . . .
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work.” (Emphasis
added)). Additionally, mental processes remain unpatentable even when
automated to reduce the burden on the user of what once could have been
done with pen and paper. See CyberSource, 654 F.3d at 1375 (“That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.”).
Information, as such, is intangible, and data analysis and algorithms
that manipulate that information are also abstract ideas. See, e.g., Microsoft
Corp. v. AT&T Corp., 550 U.S. 437, 451 n.12 (2007); see also Alice, 573
U.S. at 218; Parker v. Flook, 437 U.S. 584, 589, 594–95 (1978) (“Reasoning
that an algorithm, or mathematical formula, is like a law of nature, Benson
applied the established rule that a law of nature cannot be the subject of a
patent.”); Benson, 409 U.S. at 71–72. According to the Federal Circuit,
“collecting information, including when limited to particular content (which
does not change its character as information),” falls within the realm of
abstract ideas. Elec. Power Grp., 830 F.3d at 1353; see also e.g., Internet
Patents Corp., 790 F.3d at 1346; OIP Techs. Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC
v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014);
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Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014); CyberSource, 654 F.3d at 1370.
Likewise, “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more,” is “essentially mental
processes within the abstract-idea category.” Elec. Power Grp., 830 F.3d at
1353–54; see, e.g., In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
613 (Fed. Cir. 2016); Digitech, 758 F.3d at 1351; SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 F. App’x 950, 955 (Fed. Cir. 2014);
Bancorp Servs. L.L.C. v. Sun Life Assurance Co. of Can. (US), 687 F.3d
1266, 1278 (Fed. Cir. 2012); CyberSource Corp., 654 F.3d at 1372; SiRF
Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); see
also Parker v. Flook, 437 U.S. at 589–90; Benson, 409 U.S. at 67. That is,
“[w]ithout additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible.” Digitech, 758 F.3d at 1350–51 (“Data in
its ethereal, non-physical form is simply information that does not fall under
any of the categories of eligible subject matter under section 101.”). And the
Federal Circuit has also recognized that merely presenting the results of
abstract processes of collecting and analyzing information, without more
(such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis. See, e.g., Content Extraction,
776 F.3d at 1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.
Cir. 2014).
Thus, under Step 2A, Prong One, we agree with the Examiner that
limitations (1)–(7) in Appellant’s claim 1, identified supra, recite a
fundamental economic practice or a series of mental processes as identified
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in the 2019 Revised Guidance, and thus, an abstract idea. See 2019 Revised
Guidance (Revised Step 2A, Prong One), 84 Fed. Reg. at 52, 54.
Because the claims recite an abstract idea, we next proceed to Step 2A,
Prong Two of the Revised Guidance, to determine whether additional
elements recited in the claims integrate the recited idea into a practical
application. See 2019 Revised Guidance, 84 Fed. Reg. 54.
Step 2A—Prong 2 (Integration into Practical Application)
Under Step 2A, Prong Two of the Revised Guidance, we discern no
additional element (or combination of elements) recited in Appellant’s claim
1 that integrate(s) the judicial exception into a practical application. See
2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
For example, Appellant’s additional elements (i.e., “trading system,”
“processor,” “computer system,” and “memory” recited in claim 1) do not
(1) improve the functioning of a computer or other technology, (2) are not
applied with any particular machine (except for generic computer
components), (3) do not effect a transformation of a particular article to a
different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§ 2106.05(a)–(c), (e)–(h).
Appellant argues “the claims recite an improvement to the functioning
of the computer” or “an improvement to the computer technology” because
“the claims recite a set of rules that allow the computer to perform a function
that was not previously performed by a computer,” and “the specification
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contains teachings of computer improvements.” Appeal Br. 9–11 (citing
Spec. ¶¶ 126, 183).
We do not agree. First, there is no support from Appellant’s
Specification for any feature recited in Appellant’s claim 1 that would
improve any existing technological process or computer-related technology,
as Appellant argues. Appeal Br. 9–11. As correctly recognized by the
Examiner, “the focus of the claims involve concepts relating to
performance of financial transactions . . . concepts relating to processes of
searching a real order for the instrument that matches the test order and
comparing data (comparing the bid table and the offer table).” Ans. 18.
There is nothing in the claim to suggest that the computer functionalities are
improved. Instead, “[t]he focus of the claims is not on such an improvement
in computers,” but rather uses “computers as tools” to perform the abstract
idea. Ans. 20. Using generic computing components (i.e., “trading system,”
“processor,” “computer system,” and “memory” recited in claim 1) as a tool,
for example, as shown in Appellant’s Figure 1, to perform an abstract idea,
shown in Figure 7, is insufficient to show “integration into a practical
application.” See MPEP § 2106.05(f). Instead, these generic computing
components are simply the automation of the recited abstract idea. OIP
Techs., 788 F.3d at 1362–63. “[M]erely requiring generic computer
implementation,” “does not move into section 101 eligibility territory.”
buySAFE, 765 F.3d at 1354.
A claim for a new abstract idea is still an abstract idea. See Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). “No
matter how much of an advance in the finance field the claims recite, the
advance lies entirely in the realm of abstract ideas, with no plausibly alleged
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innovation in the non-abstract application realm.” SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
For these reasons, we determine that: (1) Appellant’s “additional
elements” recited in claim 1 do not integrate the recited judicial exception
into a practical application; and (2) Appellant’s claims are directed to an
abstract idea. See 2019 Revised Guidance (Revised Step 2A, Prong Two), 84
Fed. Reg. at 54–55.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B Identified in the Revised Guidance
Under the 2019 Revised Guidance, only if a claim: (1) recites a
judicial exception; and (2) does not integrate that exception into a practical
application, do we then look to whether (3) the claim adds a specific
limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field (see MPEP § 2106.05(d)) or, instead, it
simply appends well-understood, routine, 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. After
considering the elements of claim 1, both individually and in combination,
we find that no element or combination of elements recited contains any
“inventive concept” or adds “significantly more” to transform the abstract
concept into a patent-eligible application. Alice, 573 U.S. 208 at 221.
Appellant does not identify any specific limitation of claim 1 beyond
the judicial exception that is not “well-understood, routine, and conventional
in the field” as per MPEP § 2106.05(d). Instead, Appellant argues the lack
of prior art rejections indicate patent eligibility. Appeal Br. 13 (citing Judge
Newman’s concurring opinion in BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
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This argument improperly conflates the test for 35 U.S.C. § 101 with
the separate tests for 35 U.S.C. §§ 102 and 103. See, e.g., Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (“[U]nder the
Mayo/Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility.”). As the
Supreme Court emphasizes, “[t]he ‘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.” Diamond v. Diehr, 450 U.S. 175, 188–
89 (1981) (emphasis added). Thus, a novel and nonobvious claim directed
to a purely-abstract idea is, nonetheless, a patent-ineligible abstract idea.
See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89–
91 (2012).
Preemption
Lastly, Appellant argues the “claims do not pre-empt all ways of
testing a trading system” because “the claimed recitations are very specific
and do not cover all possible approaches.” Appeal Br. 12.
We disagree. The lack of preemption is a factor to consider for patent
eligibility, but it is not by itself sufficient for patent eligibility. As the
Federal Circuit explicitly recognized, “the absence of complete preemption
does not demonstrate patent eligibility.” See McRO, 837 F.3d at 1315
(quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015)); see also Ans. 20. Furthermore, “[w]here a patent’s claims
are deemed only to disclose patent ineligible subject matter” under the
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Alice/Mayo framework, “preemption concerns are fully addressed and made
moot.” See Ariosa, 788 F.3d at 1379.
Because Appellant’s independent claim 1 is directed to a patent-
ineligible abstract concept and does not recite an “inventive concept” or
provide a solution to a technical problem under the second step of the Alice
analysis, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
independent claim 1 and its dependent claims 2–5 and 7–13, which are not
separately argued.

CONCLUSION
On the record before us, we conclude Appellant has demonstrated the
Examiner erred in rejecting claims 1–5 and 7–13 for failure to comply with
the “written description” requirement, but has not demonstrated the
Examiner erred in rejecting claims 1–5 and 7–13 under 35 U.S.C. § 101. As
such, we AFFIRM the Examiner’s rejection of claims 1–5 and 7–13 under
35 U.S.C. § 101, but REVERSE the Examiner’s rejection of claims 1–5 and
7–13 under pre-AIA 35 U.S.C. § 112, first paragraph.

DECISION SUMMARY
In Summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7–13 112, first
paragraph
Written
Description
1–5, 7–13
1–5, 7–13 101 Eligibility 1–5, 7–13
Overall
Outcome
1–5, 7–13
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Because we have sustained 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