Howard Lutnick et al.

Patent Trials and Appeals Board

Feb 17, 2022

2021002440 (P.T.A.B. Feb. 17, 2022)

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. 12/135,479 06/09/2008 Howard W. Lutnick 08-2239 3803 63710 7590 02/17/2022 CANTOR FITZGERALD, L.P. INNOVATION DIVISION 110 EAST 59TH STREET NEW YORK, NY 10022 EXAMINER WEISBERGER, RICHARD C ART UNIT PAPER NUMBER 3698 NOTIFICATION DATE DELIVERY MODE 02/17/2022 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): Caitlyn.kelly@chareiter.com gabriella.zisa@chareiter.com patentdocketing@cantor.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HOWARD W. LUTNICK, KEVIN FOLEY, ANDREW FISHKIND, and PHILIP MARBER Appeal 2021-002440 Application 12/135,479 Technology Center 3600 BeforeLARRY J. HUME, JAMES W. DEJMEK, and STEVEN M. AMUNDSON, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1-11 and 13-18, which are all claims pending in the application. Appellant has canceled claim 12. See Appeal Br. 19 et seq. (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as CFPH, LLC. Appeal Br. 3. Appeal 2021-002440 Application 12/135,479 2 STATEMENT OF THE CASE2 The claimed subject matter is directed to “Trading System Products and Processes.” See Spec. (Title). In particular, Appellant’s disclosed embodiments and claimed invention relate to “[a] trading platform and trading method that allows access to additional pools of liquidity.” Spec. 75 (Abstr.). Prior Decision A prior Decision in this case, Appeal No. 2016-006448, was mailed March 1, 2018, in which we affirmed the Examiner’s rejection under 35 U.S.C. § 101 of all claims in that appeal. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on Appeal (emphases added to limitations alleged to represent an improvement under Step 2A(ii)): 1. A method comprising: receiving, by an alternative trading system, over a communication network, an indication of an order, in which the order includes a side of a trade for a financial instrument; determining, by the alternative trading system, that a matching order is stored in an order management system associated with a first buy-side participant of the alternative 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed Aug. 5, 2020); Reply Brief (“Reply Br.,” filed Feb. 23, 2021); Second or Subsequent Examiner’s Answer (“Ans.,” mailed Feb. 8, 2021); Final Office Action (“Final Act.,” mailed Jan. 3, 2020); and the original Specification (“Spec.,” filed June 9, 2008). Appeal 2021-002440 Application 12/135,479 3 trading system, in which a matching order includes an opposite side of the trade for the financial instrument, in which the determining that the matching order is stored in the order management system includes, by the alternative trading system: applying filtering before transmitting requests as queries to a plurality of buy-side participants including the first buy-side participant, the plurality of buy-side participants identified as potential participants from the filtering, to determine a given matching order that includes an opposite side of the trade for the financial instrument, querying with the queries, over the communication network, via a port or socket at each of the plurality of buy-side participants, a predefined memory location of a database for contents of a specified field, and receiving, over the communication network, from a computing device of the first buy-side participant, a response that the matching order is stored in the order management system associated with a first buy-side participant; causing, by the alternative trading system, over the communication network, display, at a graphical user interface of the computing device of the first buy-side participant, of information identifying that the order for the financial instrument exists, by selectively preventing the side of the trade indicated in the indication of the order from being displayed as the information identifying that the order for the financial instrument exists; and causing, by the alternative trading system, over the communication network, display of request indicia at the graphical user interface of the computing device indicating that the first buy-side participant perform an operation to the graphical user interface to effect an action in order to receive additional information about the order, in which the additional information includes the side of the trade. Appeal 2021-002440 Application 12/135,479 4 REJECTION Claims 1-11 and 13-18 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or abstract idea) without significantly more. Final Act. 2; Ans. 3. CLAIM GROUPING Based on Appellant’s arguments (Appeal Br. 7-17) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the patent- ineligible subject matter rejection of claims 1-11 and 13-18 on the basis of representative claim 1.3 ISSUE Appellant argues (Appeal Br. 7-17) the Examiner’s rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is in error. These contentions present us with the following issue: Under the USPTO’s Revised Guidance, informed by our governing case law concerning 35 U.S.C. § 101, is claim 1 patent ineligible under § 101? 3 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant does not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2021-002440 Application 12/135,479 5 PRINCIPLES OF LAW A. 35 U.S.C. § 101 An invention is patent-eligible if it is a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4 However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217-18 (2014) (citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk . . . .”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental 4 This threshold analysis of whether a claim is directed to one of the four statutory categories of invention, i.e., a process, machine, manufacture, or composition of matter, is referred to as “Step 1” in the USPTO’s patent- eligibility analysis under § 101. MPEP § 2106. Appeal 2021-002440 Application 12/135,479 6 economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, and mathematical formulas or relationships. Alice, 573 U.S. at 217-21. Under this guidance, we must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law.”). Examples of claims that do not recite mental processes because they cannot be practically performed in the human mind include: (a) a claim to a method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals, where the claimed GPS receiver calculated pseudoranges that estimated the distance from the GPS receiver to a plurality of satellites, SiRF Technology, Inc. v. International Trade Commission, 601 F.3d 1319, 1331-33 (Fed. Cir. 2010); (b) a claim to detecting suspicious activity by using network monitors and analyzing network packets, SRI International, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019); (c) a claim to a specific data encryption method Appeal 2021-002440 Application 12/135,479 7 for computer communication involving a several-step manipulation of data, Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) (distinguishing TQP Development, LLC v. Intuit Inc., No. 2:12- cv-180, 2014 WL 651935 (E.D. Tex. Feb. 19, 2014)) (the specific data encryption method “could not conceivably be performed in the human mind or with pencil and paper”). Whereas a claim limitation to a process that “can be performed in the human mind, or by a human using a pen and paper” qualifies as a mental process, a claim limitation that “could not, as a practical matter, be performed entirely in a human’s mind” (even if aided with pen and paper) would not qualify as a mental process.5 In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical 5 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375- 76 (Fed. Cir. 2011) (distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010)). Appeal 2021-002440 Application 12/135,479 8 formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must 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 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. B. USPTO Revised Guidance In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101.6 The Manual of Patent Examining Procedure (“MPEP”) now incorporates this revised 6 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Revised Guidance”) (https://www.govinfo.gov/ content/pkg/FR-2019-01-07/pdf/2018-28282.pdf). In response to formal public comments, the Office issued further guidance on October 17, 2019, clarifying the Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1. Appeal 2021-002440 Application 12/135,479 9 guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).7 Under MPEP § 2106, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One,” referred to herein as “Step 2A(i)”); and (2) additional elements that integrate the judicial exception into a practical application (“Step 2A, Prong Two,” referred to herein as “Step 2A(ii)”).8 MPEP § 2106.04(a) and § 2106.04(d). Under this guidance, if the claim does not recite a judicial exception (a law of nature, natural phenomenon, or subject matter within the enumerated groupings of abstract ideas above), then the claim is patent eligible at Step 2A(i). This determination concludes the eligibility analysis, except in situations identified in the Revised Guidance.9 7 All references to the MPEP are to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise indicated. 8 “Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application, using one or more of the considerations introduced in subsection I supra, and discussed in more detail in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and 2106.05(e) through (h).” MPEP § 2106.04(d)II. 9 In the rare circumstance in which an examiner believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as reciting an abstract idea, the procedure described in Appeal 2021-002440 Application 12/135,479 10 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application,10 do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.11 MPEP § 2106.05(d). In the Step 2B analysis, an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds an evidentiary basis, and expressly supports a rejection in writing with, one or more of the following: 1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s) . . . . the MPEP for analyzing the claim should be followed. See MPEP § 2106.04(a)(3)(“Tentative Abstract Ideas”). 10 This corresponds to Alice part one where it is determined whether the claim is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not directed to an abstract idea under part one of the Alice framework, we do not need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). 11 Items (3) and (4) correspond to Alice part two where it is determined whether the claim “contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application” (Alice, 573 U.S. at 221) and continue to be collectively referred to as “Step 2B” of the Supreme Court’s two-step framework, described in Mayo and Alice. Appeal 2021-002440 Application 12/135,479 11 2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well- understood, routine, conventional nature of the additional element(s). 3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s) . . . . 4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s) . . . . See MPEP §§ 2106.05(d)(I)(2); 2106.07(a). If the Examiner or the Board determines under Step 2B that the element (or combination of elements) amounts to significantly more than the exception itself, the claim is eligible, thereby concluding the eligibility analysis. However, if a determination is made that the element and combination of elements do not amount to significantly more than the exception itself, the claim is ineligible under Step 2B, and the claim should be rejected for lack of subject matter eligibility. ANALYSIS Step 1 - Statutory Category Claim 1, as a method (process) claim, recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us is whether claim 1 is directed to a judicial exception without significantly more. Appeal 2021-002440 Application 12/135,479 12 Step 2A(i): Does the Claim Recite a Judicial Exception? The Examiner determined that claim 112 “is directed to the abstract idea of ‘tracking trading informatio[n]’ without significantly more.” Final Act. 2. “[T]he rejected claims recite an abstract idea of ‘processing a loan request’, ‘a fundamental economic process and methods of organizing human behavior’.” Final Act. 3; see also Ans. 3-4. “The claim 1 is a fundamental economic practice of tracking trading information for market participants. Support for this position includes Appellant’s Specification.” Ans. 5. We conclude claim 1 does not recite the judicial exceptions of either natural phenomena or laws of nature. We evaluate whether claim 1 recites an abstract idea based upon the Revised Guidance. First, we look to the Specification to provide context as to what the claimed invention is directed to. The Specification states as follows: In summary, the present invention includes an electronic trading marketplace that generates liquidity, at least in part, by receiving order information directly from the databases of OMS systems at trading institutions. Since orders are extracted from the OMS databases automatically, and information about executed orders is inserted into the databases automatically, the OMS databases “see” the marketplace as “just another market intermediary.” Moreover, traders are able to conduct trades in the electronic marketplace without any duplicative manual efforts. Spec. 72, ll. 20-26. 12 We note independent apparatus (device) claim 18 recites limitations of commensurate scope. Appeal 2021-002440 Application 12/135,479 13 Appellant’s Abstract describes the invention as “[a] trading platform and trading method that allows access to additional pools of liquidity.” Spec. 75 (Abstract). As detailed in TABLE I, below, we determine that claim 1, overall, recites a combination of mental processes and certain methods of organizing human activity that may also be performed by pen and paper. This type of activity, i.e., tracking trading information, as recited in the combination of limitations (1) through (9), for example, and aside from any computer- related aspects, includes longstanding conduct that existed well before the advent of computers and the Internet, and could be carried out by a human with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“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.”).13 Thus, under Step 2A(i), we agree with the Examiner that claim 1’s method recites abstract ideas including mental processes, and we conclude 13 Our reviewing court recognizes that “[a]n abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s slight revision of its abstract idea analysis does not impact the patentability analysis.” Id. Moreover, merely combining several abstract ideas does not render the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea . . . does not render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (determining the pending claims were directed to a combination of abstract ideas). Appeal 2021-002440 Application 12/135,479 14 claim 1, under our Revised Guidance, recites a judicial exception of a trading method, and thus recites an abstract idea. In TABLE I below, we identify in italics the specific claim limitations in claim 1 that we conclude recite an abstract idea. We additionally identify in bold the additional (non-abstract) claim limitations that are generic computer components and techniques, and underline limitations representing extra- or post-solution activity: TABLE I Independent Claim 1 Revised Guidance A method comprising: A process (method) is a statutory subject matter class. See 35 U.S.C. § 101 (“Whoever 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.”). [(1)] receiving, by [(1a)] an alternative trading system, over [(1b)] a communication network, an indication of an order, in which the order includes a side of a trade for a financial instrument; Receiving information, i.e., data gathering, which, in this case, is “an indication of an order,” is merely insignificant extra-solution activity that does not add significantly more to the abstract idea to render the claimed invention patent-eligible. See MPEP § 2106.05(g); Revised Guidance 55, n.31; see In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (en banc), aff’d on other grounds, 561 U.S. 593 (2010) (“[T]he involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity”). As claimed, “an alternative trading system” represents generic computer components such as, for example, processors and memory. See generally Appeal Br. 3-4 (“Summary of Appeal 2021-002440 Application 12/135,479 15 Independent Claim 1 Revised Guidance Claimed Subject Matter”) (broadly citing Spec. 1:5-72:31; FIGS. 1-19). Also, as recited, “a communication network” represents generic computer functionality. See Spec. 13:6-9. [(2)] determining, by the alternative trading system, that a matching order is stored in [(2a)] an order management system associated with a first buy-side participant of the alternative trading system, in which a matching order includes an opposite side of the trade for the financial instrument, “[D]etermining” is an abstract idea, i.e., “an observation, evaluation, judgment, opinion” which could be performed as a mental process. See MPEP § 2106.04(a)(2)(III)(A). As claimed, “an order management system” represents generic, conventional computer components such as, for example, processors and memory. See generally Appeal Br. 3-4 (“Summary of Claimed Subject Matter”) (broadly citing Spec. 1:5-72:31; FIGS. 1-19). in which the determining that the matching order is stored in the order management system includes, by the alternative trading system: [(3)] applying filtering14 before transmitting requests as queries to a plurality of buy-side participants including the first buy-side participant, the plurality “[A]pplying filtering” represents an abstract idea of “certain methods of organizing human activity” in the form of tracking or organizing information. Cf. BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). In BASCOM, the underlying idea of filtering Internet content 14 Appellant argues the “applying filtering” limitation (3) represents an improvement to computer functionality, and thus integrates the abstract idea into a practical application. Appeal Br. 7-8. Appeal 2021-002440 Application 12/135,479 16 Independent Claim 1 Revised Guidance of buy-side participants identified as potential participants from the filtering, was deemed to abstract, under step 2 of the Alice analysis. Contrary to the claims on appeal, however, the claims in BASCOM were held to be patent eligible because they carved out a specific location for the filtering system, namely a remote Internet service provider (ISP) server, and required the filtering system to give users the ability to customize filtering for their individual network accounts. [(4)] to determine a given matching order that includes an opposite side of the trade for the financial instrument “[T]o determine a given matching order,” or “determining,” is an abstract idea, i.e., “an observation, evaluation, judgment, opinion” which could be performed as a mental process. See MPEP § 2106.04(a)(2)(III)(A). [(5)] querying with the queries, over the communication network, via [(5a)] a port or socket at each of the plurality of buy-side participants, [(5b)] a predefined memory location of a database for contents of a specified field,15 and “[Q]uerying . . . for contents of a specified field,” i.e., data gathering, is merely insignificant extra-solution activity that does not add significantly more to the abstract idea to render the claimed invention patent eligible. See MPEP § 2106.05(g); Revised Guidance 55, n.31; see In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (en banc), aff’d on other grounds, 561 U.S. 593 (2010) (“[T]he involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity”). As claimed, “a port or socket” (Spec. 35:12- 17) and “a predefined memory location of a database” (Spec. 13:16-20) represent conventional or generic computer components and techniques. 15 Appellant argues the “querying” limitation (5) represents an improvement to computer functionality, and thus integrates the abstract idea into a practical application. Appeal Br. 7-8. Appeal 2021-002440 Application 12/135,479 17 Independent Claim 1 Revised Guidance (6) receiving, over the communication network, from [(6a)] a computing device of the first buy- side participant, a response that the matching order is stored in the order management system associated with a first buy-side participant; Receiving information, i.e., data gathering or “receiving . . . a response,” is merely insignificant extra-solution activity that does not add significantly more to the abstract idea to render the claimed invention patent- eligible. See MPEP § 2106.05(g); Revised Guidance 55, n.31; see Bilski, 545 F.3d at 962 (“[T]he involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity”). As claimed, “a computing device” represents generic computer components and functionality. [(7)] causing, by the alternative trading system, over the communication network, display, at [(7a)] a graphical user interface of the computing device of the first buy-side participant, of information identifying that the order for the financial instrument exists, by Causing information to be displayed is insignificant extra-solution activity. Revised Guidance 55, n.31; see also MPEP § 2106.05(g). Data gathering and display elements (e.g., a “graphical user interface”) are merely insignificant extra-solution activity that do not add significantly more to the abstract idea to render the claimed invention patent-eligible. See Bilski, 545 F.3d at 962; see also MPEP § 2106.05(g); and see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (computer receives and sends information over a network). (8) selectively preventing the side of the trade indicated in the indication of the order from being displayed as the information identifying that the order As claimed, “selectively preventing . . . display[ of information]” represents an abstract idea, i.e., “an observation, evaluation, judgment, opinion” which could be performed as a mental process. See MPEP § 2106.04(a)(2)(III)(A). Appeal 2021-002440 Application 12/135,479 18 Independent Claim 1 Revised Guidance for the financial instrument exists;16 and (9) causing, by the alternative trading system, over the communication network, display of request indicia at the graphical user interface of the computing device indicating that the first buy-side participant perform an operation to the graphical user interface to effect an action in order to receive additional information about the order, in which the additional information includes the side of the trade. Communicating or transmitting of information for display is insignificant post- solution activity. Revised Guidance 55, n.31; see also MPEP § 2106.05(g); and see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (computer receives and sends information over a network). Appeal Br. 19 (Claims App.). Under the broadest reasonable interpretation standard,17 and aside from the computer-related aspects of the claim, we conclude limitations (1) 16 Appellant argues the “selectively preventing the side of the trade . . . from being displayed” limitation (8) represents an improvement to computer functionality, and thus integrates the abstract idea into a practical application. Appeal Br. 7-8 (emphasis omitted). 17 During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, Appeal 2021-002440 Application 12/135,479 19 through (9) recite steps that would ordinarily occur when executing trades. See Final Act. 3 et seq. In particular, we find limitations (2), (3), (4), and (8) recite abstract ideas. For example, limitation (4) “determin[ing that] a given matching order [exists]” is an operation that generally occurs when executing a trade. Further, limitations (2), (3), (4), and (8) recite abstract ideas, whether initiated person-to-person, on paper, or using a computer. Step 2A(ii): Judicial Exception Integrated into a Practical Application? If the claims are directed to a judicial exception, as we conclude above, we proceed to the “practical application” Step 2A(ii) in which we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. As to the specific limitations, we find limitations (1), (5), and (6) recite insignificant data gathering. See MPEP § 2106.05(g). Data gathering, as performed by the steps or function in Appellant’s claims, is a classic example of insignificant extra-solution activity. See, e.g., Bilski, 545 F.3d at 963. we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2021-002440 Application 12/135,479 20 We also find limitations (7) and (9) recite insignificant post-solution activity. The Supreme Court guides that the “prohibition against patenting abstract ideas ‘cannot be circumvented by’ . . . adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610-11 (quoting Diehr, 450 U.S. at 191-92). We find limitations (1a), (1b), (2a), (5a), (5b), (6a), and (7a) recite generic or conventional computer components and/or functionality. On this record, we are of the view that Appellant’s claims do not operate the recited generic computer components in an unconventional manner to achieve an improvement in computer functionality. See MPEP § 2106.05(a). To summarize, as identified in Step 2A(i) (see TABLE 1, supra), we find abstract steps are recited in limitations (2) through (4) and (8), extra- and post-solution activity are recited by limitations (5) through (7) and (9), and conventional computer components/functionality are recited in limitations (1a), (1b), (2a), (5a), (5b), (6a), and (7a). Appellant argues (Appeal Br. 7-8), however, limitations (3) “applying filtering before transmitting requests as queries to a plurality of buy-side participants including the first buy-side participant, the plurality of buy-side participants identified as potential participants from the filtering;” (5) “querying with the queries, over the communication network, via a port or socket at each of the plurality of buy-side participants, a predefined memory location of a database for contents of a specified field;” and (8) “selectively preventing the side of the trade indicated in the indication of the order from being displayed as the information identifying that the order for the financial instrument exists” act to “provide[] an improvement in the functioning of a computer, or an improvement to other technology or Appeal 2021-002440 Application 12/135,479 21 technical field and implement[] the abstract idea in conjunction with a particular machine” (Appeal Br. 8), and thus integrate the abstract idea into a practical application. Id. We disagree with Appellant’s argument because none of the limitations of claim 1 integrate the judicial exception of executing a trade into a practical application as determined under one or more of the MPEP sections cited above. The claim as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Also, we find improvements to the manner in which a trade is executed are improvements to the abstract idea itself. Even if a claimed abstract idea is novel, a claim directed to a new abstract idea is still directed to an abstract idea. Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC, 958 F.3d 1178, 1182-83 (Fed. Cir. 2020). Indeed, “[w]e may assume that the techniques claimed are ‘[g]roundbreaking, innovative, or even brilliant,’ but that is not enough for eligibility.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)). Under analogous circumstances, the Federal Circuit has held that “[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that [such] data . . . was previously collected, analyzed, manipulated, and displayed manually, and it simply proposes doing so with a computer. We have held such claims are directed to abstract ideas.” Univ. of Fla. Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016) (“Though lengthy and numerous, the claims do not go beyond Appeal 2021-002440 Application 12/135,479 22 requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology.”). Moreover, merely adding generic hardware and computer components to perform abstract ideas does not integrate those ideas into a practical application. See Alice Corp., 573 U.S. at 223 (The “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”); see also McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (“The abstract idea exception prevents patenting a result where ‘it matters not by what process or machinery the result is accomplished.’” (quoting O’Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added)). Therefore, the claim as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Thus, on this record, Appellant has not shown an improvement or practical application under the guidance of MPEP section 2106.05(a) (“Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”) or section 2106.05(e)(“Other Meaningful Limitations”). Nor does Appellant advance any arguments in the Brief(s) that are directed to the Bilski machine-or-transformation test, which would only be applicable to the method (process) claims on appeal. See MPEP §§ 2106.05(b) (Particular Machine) and 2106.05(c) (Particular Transformation). Therefore, we conclude the abstract idea is not integrated into a practical application, and thus the claim is directed to the judicial exception. Appeal 2021-002440 Application 12/135,479 23 Step 2B - “Inventive Concept” or “Significantly More” If the claims are directed to a judicial exception, and not integrated into a practical application, as we conclude above, we proceed to the “inventive concept” step. For Step 2B we must “look with more specificity at what the claim elements add, in order to determine ‘whether they identify an “inventive concept” in the application of the ineligible subject matter’ to which the claim is directed.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016). In applying step two of the Alice analysis, our reviewing court guides we must “determine whether the claims do significantly more than simply describe [the] abstract method” and thus transform the abstract idea into patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). We look to see whether there are any “additional features” in the claims that constitute an “inventive concept,” thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be more than “well-understood, routine, conventional activity.” Mayo, 566 U.S. at 79. Limitations referenced in Alice that are not enough to qualify as “significantly more” when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples: adding the words “apply it” (or an equivalent) with an abstract idea18; mere instructions to implement an 18 Alice, 573 U.S. at 221-23. Appeal 2021-002440 Application 12/135,479 24 abstract idea on a computer19; or requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.20 Evaluating representative claim 1 under step 2 of the Alice analysis, we conclude it lacks an inventive concept that transforms the abstract idea of executing a trade into a patent-eligible application of that abstract idea. The patent-eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324- 25 (Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). Appellant argues (Appeal Br. 15) the Final Action runs afoul of Berkheimer under Step 2B of the 2019 Revised Guidance. However, we find the Examiner meets the requirements of Berkheimer in the Answer. The generalized functional terms by which the additional elements are described in the Specification disclose a communication network and alternative trading system comprising conventional central processing unit for trading engine; (ii) conventional memory[], conventional computer devices and conventional communications networks. Ans. 8; see Spec. at 17:5-15. The examiner also cites the following extrinsic evidence to support the conclusion that in the art of the claimed invention 19 Alice, 573 U.S. at 222-23, e.g., simply implementing a mathematical principle on a physical machine, namely a computer. 20 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust account balances, and issue automated instructions involves computer functions that are well-understood, routine, conventional activities). Appeal 2021-002440 Application 12/135,479 25 that the elements beyond the abstract idea are well known. See the Order Management System of US Patent Publication U.S. Pat. No. 5,915,209 discloses a bond trading system. The computer-implemented bond trading system disclosed therein provides the capability to conduct a private electronic auction of bid wanted between a central broker's broker and multiple prospective remote bidders. Moreover, this system ma int a ins a data base of accurate bond lot descriptions and identifications, notably CUSI P numbers. Bids are transmitted from a bidder to a central market maker, who then broadcasts the bids to prospective bidders along with a time for responding. This enables a private auction not unlike a sealed bid auction. Moreover the specification, in numerous places, describes the invention as not providing novelty. The following sections of the specification are descriptive examples: Example Participant Processes Figure 4 illustrates an example process 400 that begins at block 401 and that may be performed by a participant (e.g., by buy side system 207). In other embodiments, some or all of process 400 may be performed at a centralized location, such as by central system 201, or a distributed location, such as by sell side systems or buy side systems. Process 400 may, in part, be performed to facilitate responses to queries and/ or to provide indications of firm orders, as those described above with respect to process 300. In some embodiments, process may, in part, be performed to facilitate responses to queries and/ or to provide indications of firm orders, as those described above with respect to process 300. In some embodiments, process400 may be performed by an OMS system, a separate participant system, a buy side or sell side trader's computer, or any other computer system such as one configured to receive and process orders. The processor and memory are claimed at a high level, generally, and they have been shown and/or admitted to be well-understood, routine, and conventional in the art. That is even if these steps are novel they do not recite significantly more than the abstract idea. Ans. 8-9. Appeal 2021-002440 Application 12/135,479 26 Thus, because the Specification describes the additional elements in general terms, without describing the particulars, we conclude the claim limitations may be broadly but reasonably construed as reciting conventional computer components and techniques, particularly in light of Appellant’s Specification, as quoted above.21 The MPEP, based upon our precedential guidance, provides additional considerations with respect to analysis of the well-understood, routine, and conventional nature of the recited computer-related components. Another consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than a recitation of the words “apply it” (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do “‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on “the draftsman’s art”). 21 Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2021-002440 Application 12/135,479 27 In Alice Corp., the claim recited the concept of intermediated settlement as performed by a generic computer. The Court found that the recitation of the computer in the claim amounted to mere instructions to apply the abstract idea on a generic computer. 573 U.S. at 225-26, 110 USPQ2d at 1984. The Supreme Court also discussed this concept in an earlier case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972), where the claim recited a process for converting binary-coded-decimal (BCD) numerals into pure binary numbers. The Court found that the claimed process had no meaningful practical application except in connection with a computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The claim simply stated a judicial exception (e.g., law of nature or abstract idea) while effectively adding words that “apply it” in a computer. Id. MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”). With respect to the Step 2B analysis, we conclude, similar to Alice, the recitation of a method that includes “an alternative trading system,” “a communication network,” “an order management system,” “a port or socket,” “a predefined memory location of a database,” and “a computing device” is simply not enough to transform the patent-ineligible abstract idea here into a patent-eligible invention under Step 2B. See Alice, 573 U.S. at 221 (“[C]laims, which merely require generic computer implementation, fail to transform [an] abstract idea into a patent-eligible invention.”). We conclude the claims fail the Step 2B analysis because claim 1, in essence, merely recites various computer-based elements along with no more than mere instructions to implement the identified abstracts idea using the computer-based elements. Therefore, in light of the foregoing, we conclude, under the Revised Guidance, that each of Appellant’s claims, considered as a whole, is directed Appeal 2021-002440 Application 12/135,479 28 to a patent-ineligible abstract idea that is not integrated into a practical application and does not include an inventive concept. Accordingly, we sustain the Examiner’s § 101 rejection of independent claim 1, and grouped claims which fall therewith. See Claim Grouping, supra. CONCLUSIONS We AFFIRM the Examiner’s rejection. More specifically, under our Revised Guidance, governed by relevant case law, Appellant has not persuasively argued that claims 1-11 and 13-18 are patent eligible under 35 U.S.C. § 101, and we sustain the rejection. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/ Basis Affirmed Reversed 1-11, 13-18 101 Subject Matter Eligibility 1-11, 13-18 TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 41.50(f). AFFIRMED