Joseph M. Asher et al.

Patent Trials and Appeals Board

Jun 29, 2020

2018008513 (P.T.A.B. Jun. 29, 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.
12/709,067 02/19/2010 Joseph M. Asher 04-6197-C1 5858
63710 7590 06/29/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
06/29/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH M. ASHER and HOWARD W. LUTNICK
Appeal 2018-008513
Application 12/709,067
Technology Center 3600
Before DEBRA K. STEPHENS, CARL W. WHITEHEAD JR., and
JON M. JURGOVAN, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 72–79 (see Final Act. 14). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as BGC Partners, Inc.
(Appeal Br. 3).
Appeal 2018-008513
Application 12/709,067

2
CLAIMED SUBJECT MATTER
The claims are directed to a system and method for trading a futures
contract based on a financial instrument indexed to entertainment revenue.
Claim 72, reproduced below, is illustrative of the claimed subject matter:
72. An apparatus to facilitate real time communication for
processing electronics transactions between computing devices
of investors and computing devices of entertainment companies
over communication networks, the apparatus comprising:

a processor; and

a memory, in which the memory stores instructions which,
when executed by the processor, direct the processor to:

[a] receive, from a computing device of an
entertainment company, electronic signals
representing information about each of a plurality of
entertainment projects for which the entertainment
company seeks funding;

[b] calculate data representing a respective
expected revenue for each of the plurality of
entertainment projects;

[c] transmit, through a network to a graphical user
interface of a computing device of an investor,
electronic signals to communicate data representing
a presentation of the plurality of entertainment
projects that includes the expected revenues;

[d] receive, from the computing device of the
investor, electronic signals representing a selection
of at least some of the plurality of entertainment
projects;

[e] in response to receiving the selection, generate
data representing a securities bundle that includes
Appeal 2018-008513
Application 12/709,067

3
one respective security for each entertainment
project of the at least some of the plurality of
entertainment projects;

[f] calculate data representing a return value of the
securities bundle based on each expected revenue of
each entertainment project of the at least some of
the plurality of entertainment projects;

[g] calculate data representing a purchase price of
the securities bundle based on the return value;

[h] determine that the investor purchased a ticket to
at least on entertainment project offered by the
entertainment company;

[i] in response to calculating the purchase price
and determining that the investor purchased the
ticket, generate electronic signals to communicate
with a computing device of the entertainment
company to request that the a computing device of
the entertainment company verify a loyalty discount
associated with the investor;

[j] in response to receipt of electronic signals from
the computer device of the entertainment company
data representing verification of a loyalty discount
associated with the investor, adjust the purchase
price to include a loyalty discount;

[k] generate electronic signals to cause to
communicate with the graphical user interface of
the computing device of the investor to populate the
graphical user interface of the computing device of
the investor with data representing the adjusted
purchase price;

[l] generate electronic signals to cause to facilitate
a purchase of the securities bundle by the investor;
Appeal 2018-008513
Application 12/709,067

4

[m] in response to facilitating the purchase, generate
electronic signals to communicate with the
computing device of the entertainment company
data representing a series of swaps with the
entertainment company, in which the series of
swaps includes a swap for each entertainment
project of the at least some of the plurality of
entertainment projects in which each swap of the
series of swaps provides the entertainment company
funding for a respective entertainment project of the
at least some of the plurality of entertainment
projects, and in which each swap of the series of
swaps entitles a holder of the swap to a portion of
revenue from a respective entertainment project of
the at least some of the plurality of entertainment
projects;

[n] determine data representing an actual revenue
for each entertainment project of the at least some
of the plurality of entertainment projects;

[o] calculate data representing a payment to the
investor based on the actual revenues and the return
value;

[p] generate electronic signals to communicate
with the computing device of the entertainment
company to request data representing amount to
collect the payment from the computing device of
the entertainment company;

[q] generate electronic signals to cause to
communicate with the computing device of the
investor to distribute data representing the payment
to the investor via the computing device of the
investor;

Appeal 2018-008513
Application 12/709,067

5
[r] identify data representing a securities bundle
that includes one or more securities;

[s] process data representing the identified
securities bundle to unbundle the identified
securities bundle;

[t] select data representing a security from the
identified securities bundle; and

[u] generate electronic signals to communicate
with an electronic aftermarket trading system to
offer data representing the selected security in the
electronic aftermarket trading system.

Appeal Br. 21–23 (Claims App.) (bracketed labels added).
REJECTION
Claims 72–79 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to a judicial exception (abstract idea) without
significantly more (Final Act. 2–8).
OPINION
35 U.S.C. § 101: Claims 72–79
Appellant argues their invention as recited in claims 72–79, is directed
to patent eligible subject matter (Appeal Br. 8).

Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter” (35 U.S.C. § 101).
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
Appeal 2018-008513
Application 12/709,067

6
ideas” are not patentable (Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014)).
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 (id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012))). In accordance with that
framework, we first determine what concept the claim is “directed to” (see
id. 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
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, 69 (1972)). Concepts
determined to be patent-eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 184 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))). In Diehr, the claim
at issue recited a mathematical formula, but the Supreme Court held that “[a]
claim drawn to subject matter otherwise statutory does not become
nonstatutory simply because it uses a mathematical formula” (Diehr, 450
Appeal 2018-008513
Application 12/709,067

7
U.S. at 176; 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. (citing Benson and
Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a
law of nature or mathematical 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 (quotation marks 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. (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.).

USPTO Revised Section 101 Guidance
The USPTO published revised guidance on the application of § 101
(see 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“2019 Guidance”)). Under the 2019 Guidance, we first
look to whether the claim recites:
Appeal 2018-008513
Application 12/709,067

8
(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); and

(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
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 the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

(4) 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 Guidance, Section III(B)).
Appellant argues all pending claims as a group (see Appeal Br. 7).
Accordingly, we address all pending claims as a group and we select
independent claim 72 as representative of the claimed subject matter (see 37
C.F.R. § 41.37(c)(1)(iv)).

STEP 1
Section 101 provides that “[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title” (35 U.S.C. § 101). We
determine that independent claim 72 recites an apparatus. As such, the
Appeal 2018-008513
Application 12/709,067

9
claims are directed to a statutory class of invention within 35 U.S.C. § 101,
i.e., a manufacture.

STEP 2A, Prong 1
Under the 2019 Guidance, we must determine whether the claims,
being directed to statutory classes of invention, nonetheless recite a judicial
exception. Under Supreme Court precedent, claims directed to an abstract
idea, without significantly more, are patent ineligible. As set forth in Step
2A, Prong 1 of the 2019 Guidance, abstract ideas include “[c]ertain methods
of organizing human activity—fundamental economic principles or practices
(including hedging, insurance, mitigating risk) [and] commercial or legal
interactions (including … sales activities or behaviors)” (2019 Guidance, 84
Fed. Reg. 52).
The Examiner determines the claims recite an abstract idea, namely
funding of an investment project (i.e., a fundamental economic practice),
because the claims describe “funding generated from the bundling of
securities based on certain defined parameters” (Ans. 6).
Appellant argues the Examiner erred by “oversimplify[ing] the claims
by looking at them generally and fail[ing] to account for the specific
requirements in the claims” (Appeal. Br. 9).
An inspection of the claims supports the Examiner’s determination
that the claims recite an abstract idea. In particular, representative claim 72
recites limitations which reflect both a “fundamental economic practice” and
a “commercial interaction” used in the funding industry, which have been
identified as certain methods of organizing principles or practices and thus,
recite abstract ideas (2019 Guidance, Section I(b)).
Appeal 2018-008513
Application 12/709,067

10
For example, “receive … information about each of a plurality of
entertainment projects,” “calculate data representing a representative
expected revenue …,” and “transmit … data representing … expected
revenues” recitations (limitations [a], [b], and [c], respectively) represent
steps for providing and collecting data necessary to generate an offering for
investing in an entertainment project. “[R]eceive … a selection of at least
some of the plurality of entertainment projects” recitation (limitation [d])
represents a step for receiving an investor’s selection of one or more of the
proposed entertainment projects. Generating offerings for investing in
projects by a company seeking funding and the subsequent selection of one
or more of the offerings by an investor are a fundamental aspect of soliciting
and, subsequently, providing funding for any investment project. Thus,
these steps recite “fundamental economic principles” as identified by the
2019 Guidance.
The “generate data representing a securities bundle,” “calculate data
representing a return value,” and “calculate data representing a purchase
price” recitations (limitations [e], [f], and [g], respectively) represent steps
for generating an investment vehicle and determining, based on a calculated
return value for the investment vehicle, a purchase price for the vehicle.
Determining an appropriate price to set for investment in a proposed project
is a fundamental aspect in the funding of any investment project. Thus,
these steps also recite “fundamental economic principles” as identified by
the 2019 Guidance.
The “determine that the investor purchased a ticket,” “request that the
… computing device … verify a loyalty discount,” “adjust the purchase
price,” “populate the graphical user interface … with data representing the
Appeal 2018-008513
Application 12/709,067

11
adjusted purchase price,” “facilitate a purchase of the securities bundle,” and
“a series of swaps” recitations (limitations [h], [i], [j], [k], [l], and [m],
respectively) represent steps for executing the purchase of the securities
bundle in order to invest in the entertainment project. Executing a purchase
of a financial instrument to fund an investment project, including adjusting
the price based on loyalty, is a type of sales activity or behavior. Thus, these
steps recite a “commercial interaction” as identified by the 2019 Guidance.
Finally, the “determine … an actual revenue,” “calculate … a
payment to the investor,” “request data representing [an] amount to collect
the payment,” “distribute data representing the payment,” “identify … a
securities bundle,” “process data representing the identified securities
bundle,” “select … a security,” and “offer data representing the selected
security” recitations (limitations [n], [o], [p], [q], [r], [s], [t], and [u],
respectively) represent steps for providing the investor with the actual
revenue from the invested entertainment project. Providing an investor with
the appropriate revenue from a project in which they previously invested is a
practice that is essential to any investment project or commercial interaction.
Thus, these steps recite a “fundament economic practice” as identified by the
2019 Guidance.
Moreover, as correctly recognized by the Examiner, the claims recite
a method for funding (an investment project) (Ans. 6). As described in the
Specification, “[t]he disclosure relates to trading a financial instrument
indexed to entertainment revenue” (Spec. ¶ 2). Trading of a financial
instrument such as this is identified as a certain method of organizing human
activity according to the 2019 Guidance, and overall, the claims recite a
Appeal 2018-008513
Application 12/709,067

12
judicial exception –– certain methods of organizing human activity (2019
Guidance, Section I(b)).
Furthermore, in Alice, “[t]he claims at issue relate[d] to a
computerized scheme for mitigating ‘settlement risk’—i.e., the risk that only
one party to an agreed-upon financial exchange will satisfy its obligation. In
particular, the claims [were] designed to facilitate the exchange of financial
obligations between two parties by using a computer system as a third-party
intermediary” (Alice, 573 U.S. at 213, emphasis added). Similarly, in the
instant application, the claims recite steps for funding an investment project
using a computer system (the claimed “apparatus to facilitate real time
communication for processing electronics transactions between computing
devices”) as a third-party intermediary. Therefore, for reasons similar to
those used by the Supreme Court in the claims of Alice, we determine the
instant claims recite an abstract idea.
Furthermore, like the risk hedging in Alice, the concept of funding
investment projects is a fundamental economic practice long prevalent in our
system of commerce. The Specification states “entertainment events
normally require various amounts of funding based on a number of criteria”
(Spec. ¶ 3). The Specification further describes the “disclosure provides a
method for purchasing a securities bundle indexed to entertainment revenue”
(id. ¶ 5). According to the Specification, “[t]he selected securities bundle is
then purchased at least partially based on the purchase price and the return
value” (id.). The funding of an investment project through use of a financial
instrument is a fundamental economic principle, which is classified as a
certain method of organizing human activity as identified in the 2019
Guidance (2019 Guidance, Section I(b)). Thus, the investment funding
Appeal 2018-008513
Application 12/709,067

13
method as recited, like hedging, is an “abstract idea” beyond the scope of
§ 101 (see Alice, 573 U.S. at 219; 2019 Guidance).
Therefore, we determine the claims recite an abstract idea.

STEP 2A, Prong 2
Next, we determine whether the claims are directed to the abstract
concept itself or whether the claims are instead integrated into a practical
application, such as by being directed to some technological implementation
or application of, or improvement to, the recited concept (see, e.g., Alice,
573 U.S. at 223 (discussing Diehr, 450 U.S. at 175)).
Appellant argues “the instant claims recite an apparatus that in fact
improves an electronic trading platform by providing the claimed graphical
user interface” and “these claimed techniques may help improve computer
performance by providing an interface to communicate bundled
securities, which may help control activity over the network and control
computer workload including computer resources such as memory
resources, processor resources, and network resources such as network
bandwidth” (Appeal Br. 10–11).
We are not persuaded Appellant’s broadly claimed electronic
implementation of an apparatus comprising steps for funding and investing
in an entertainment project is an improvement to the functioning of a
computer, or to any technology or technical field, or otherwise integrates the
abstract concept into a practical application. Rather, we agree with the
Examiner’s determinations that (1) “[a]lthough the implementation of the
process of funding entertainment events is enhanced by the use of
technology, … the technology is not where the invention resides,”
Appeal 2018-008513
Application 12/709,067

14
(2) “[e]xecuting a funding process does not suggest an improvement to an
existing technology or a technological solution to a problem wherein a
computer is integral to the claimed process to facilitate the process in a way
that a person making such assessments could not,” and (3) “[a]lthough one
or more computers comprising processors [are] configured to execute the
steps of the claimed method . . . the claims do no more than implement the
abstract idea of funding” (Ans. 8–9).
More specifically, the claims broadly recite that the determination of
the amount of funding required for the entertainment project includes
information considered by the system, e.g., “calculate data representing a
representative expected revenue . . . ,” “calculate data representing a return
value . . . ,” and “calculate data representing a purchase price . . . ” But such
recitation of the information considered and the desired results is not an
improvement to the underlying, or other, technology. Rather, the alleged
improvement recited by the claims at most will provide a financial or
business benefit, as the claim recites steps for determining the appropriate
amount of funding required for the entertainment project using a securities
bundle and providing the investor with the resulting payment based on the
actual revenues and the return value, which is an improvement to the
abstract idea (i.e., investment funding generally, and the determination of a
financial instrument for use in the funding specifically) discussed above
(see, e.g., Spec. ¶ 9 (“The invention . . . provides an opportunity for a wider
range of investors to participate in at least some portion of the entertainment
industry . . .”; “[T]his network may also increase the reliability and accuracy
of transactions, thereby increasing transaction volume”)).
Appellant’s Specification describes the problem addressed as:
Appeal 2018-008513
Application 12/709,067

15
Occasionally, funding for one of the events may be more difficult
to obtain because of poor public or industry perception of the
project, lack of information about or knowledge of the project,
inaccessibility to the funding process by interested investors,
possible exclusivity of the particular entertainment industry, the
particular funding needs being too great for one or a few
investors, or for any other reason
(Spec. ¶ 3). The Specification then describes a solution to that problem:
[T]he present invention . . . increases accessibility to the funding
process through the use of systems architected into appropriate
networks to connect investors with facilitators and those seeking
to fund a project. This provides an opportunity for a wider range
of investors to participate in at least some portion of the
entertainment industry
(id. ¶ 9). That is, the Specification has described a problem in finding
investors for entertainment projects, and the solution proposed by the
Specification is to use software and an intermediary device to increase the
exposure of the entertainment project to potential investors. Contrary to
Appellant’s argument, although the solution uses technology—e.g., software
and the intermediary device are used to expose the entertainment project to
potential investors as well as determining a financial instrument to fund the
entertainment project—there is no improvement to the computer or the
technology itself. Any alleged improvement to the efficiency, speed, and
accuracy, arise out of the conventional advantages of using the claimed
computer components as tools, and not a particular improvement to the
computer itself (see Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015) (“[M]erely adding computer
functionality to increase the speed or efficiency of the process does not
confer patent eligibility on an otherwise abstract idea”)).
Appeal 2018-008513
Application 12/709,067

16
Appellant argues “[a]s with the patents upheld in CoreWireless,
Appellants respectfully submit Appellants’ claimed subject matter is also
drawn to an improved graphical user interface” (Appeal Br. 14). We do
not find Appellant’s argument persuasive and more particularly, determine
the claims in the instant application are not directed to an improvement in
the functioning of computers. In Core Wireless, the Court held the patents at
issue were directed to “improved display interfaces” and the “improved
interfaces allow a user to more quickly access desired data stored in, and
functions of applications included in, the electronic devices” (Core Wireless
Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356, 1359 (Fed. Cir.
2018)). According to the Court, the patents at issue disclosed “[a]n
application summary window display[ing] ‘a limited list of common
functions and commonly accessed stored data which itself can be reached
directly from the main menu listing some or all applications’” (id.). The
Court additionally found “[t]he disclosed invention improves the efficiency
of using the electronic device by bringing together ‘a limited list of common
functions and commonly accessed stored data,’ which can be accessed
directly from the main menu” (id. at 1363).
Unlike the claims in Core Wireless, the instant claims do not change
or improve anything about the graphical user interface of the investor’s
computing device. Rather, the instant claims simply display “electronic
signals” (e.g., “data representing a presentation of the plurality of
entertainment projects that includes the expected revenues” and “data
representing the adjusted purchase price”) received from the claimed
“apparatus” onto the graphical user interface. Accordingly, because the
Appeal 2018-008513
Application 12/709,067

17
instant claims do not improve the functioning of computers, as for example,
as found in Core Wireless, Appellant’s argument is not persuasive.
We are not persuaded the claims recite an additional element or
elements that reflect an improvement in the functioning of a computer, or an
improvement to other technology or technical field (see Alice, 573 U.S. at
222 (“In holding that the process was patent ineligible, we rejected the
argument that ‘implement[ing] a principle in some specific fashion’ will
‘automatically fal[l] within the patentable subject matter of § 101.’”
(alterations in original) (quoting Parker v. Flook, 437 U.S. 584, 593
(1978)))). Nor do the additional elements, individually or in combination,
otherwise “apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception” (2019 Guidance,
Section II).
Additionally, Appellant’s argument that “the claims do not preempt
all processes for achieving the intended result” (Appeal Br. 17) does not
persuade us that the claims are directed to patent-eligible subject matter.
Although preemption is characterized as a driving concern for patent
eligibility, preemption itself is not the test for patent eligibility. Rather,
“[w]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility” (Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
Where claims are deemed to recite only patent-ineligible subject matter
under the Alice analysis, as they are here, “preemption concerns are fully
addressed and made moot” (id.). Thus, we conclude the claims do not
provide an inventive concept because the additional elements recited in the
claims do not provide more than the identified judicial exception.
Appeal 2018-008513
Application 12/709,067

18
Accordingly, we determine the claims do not integrate the judicial
exception into a practical application (see 2019 Guidance, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the
Judicial Exception Is Integrated Into a Practical Application)).

STEP 2B
Next, we determine whether the claims include additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept (Alice, 573 U.S. at 218–219 (quoting Mayo,
566 U.S. at 72–73)). “If a claim has been determined to be directed to a
judicial exception under revised Step 2A,” the additional elements should be
evaluated “individually and in combination . . . to determine whether they
provide an inventive concept (i.e., whether the additional elements amount
to significantly more than the exception itself)” (2019 Guidance, Section
III(A)(2)).
We agree with the Examiner’s determination that the claims do not
recite significantly more than the abstract idea itself. In particular, we agree
with the Examiner that the claims include
limitations [which] are merely instructions to implement the
abstract idea on a computer and require no more than a generic
computer to perform generic computer functions that are well-
understood, routine and conventional activities previously
known to the industry. Using a computer to analyze electronic
data and then based at least in part upon the result of the analysis
executing instructions for the funding process is no more than
electronic data processing, which is one of the most basic
functions of a computer
Appeal 2018-008513
Application 12/709,067

19
(Ans. 9). Indeed, the remaining claim limitations recited in claim 72, not
part of the recited abstract idea discussed above, recite generic computing
elements and functions, e.g., “computing devices (including a graphical user
interface),” “a processor,” “a memory,” and “a network” (Appeal Br.
21, Claims).
Appellant argues “the claimed subject matter is directed to
improvements in computer performance particularly an interface to
communicate bundled securities” and “the claimed features above are not
well-understood, routine or conventional” (Reply Br. 4). We do not find
Appellant’s argument persuasive. The additional elements recited in claim
72 add well-understood, routine, and conventional activities. Indeed, the
Specification provides little detail about these elements, which supports the
elements are well understood, routine, and conventional (see Hybritech Inc.
v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“[A]
patent need not teach, and preferably omits, what is well known in the art.”);
see also USPTO, Memorandum on Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) at 3 (Apr. 19, 2018) (“April 2018
Berkheimer Memorandum”) available at https://www.uspto.gov/sites
/default/files/documents/memo-berkheimer-20180419.PDF (explaining that
a specification that describes additional elements “in a manner that indicates
that the additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well
understood, routine, and conventional)).
Appeal 2018-008513
Application 12/709,067

20
More specifically, the Specification describes the claimed “network”
as generic networks such as “local area networks, radio access networks, …
and/or any other communication system or systems at one or more
locations” (Spec. ¶ 25). Further, the Specification describes the claimed
“processor” as “executing instructions and manipulating data, such as data
inputs and outputs, to perform the operations of computer 102 and local or
remote software modules” without any particulars (id. ¶ 28). The
Specification additionally describes the claimed “memory” as “any memory,
hard drive, or database module, any of which may take the form of volatile
or non-volatile memory including, without limitation, magnetic media,
optical media, random access memory (RAM), read-only memory (ROM),
removable media, or any other suitable local or remote memory component”
(id.). Finally, the Specification describes the claimed “computing device”
(referred to in the Specification as a “computer”) as
intended to encompass a personal computer, server pool,
workstation, 25 server, network computer, personal data
assistant (PDA), dumb terminal, cell phone, pager, text message
device, mainframe, or any other suitable data processing device.
Moreover, "computer" and "user of computer'' may be used
interchangeably, as appropriate, without departing from the
scope of this disclosure. In other words, investors 130, brokers
160, and/or employees of entertainment company 110 or trustee
150 may 30 each be associated with a computer 102. The
computer 102 may execute any operating system including
UNIX, Windows, Linux, and others. The present disclosure
contemplates computers other than general purpose computers as
well as computers without conventional operating systems.
(id. ¶ 26). Whether we consider these additional elements individually or as
an ordered combination, these elements do not transform the nature of claim
72 into a patent-eligible application. These elements are largely recited at a
Appeal 2018-008513
Application 12/709,067

21
high level of generality, and neither the claims nor the Specification provide
any detail that these elements override the conventional use of known
features or involve an unconventional arrangement or combination of
elements (see Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315,
1331 (Fed. Cir. 2017) (“The claimed mobile interface is so lacking in
implementation details that it amounts to merely a generic component
(software, hardware, or firmware) that permits the performance of the
abstract idea, i.e., to retrieve the user-specific resources”)). We therefore
determine nothing in the claim describes an additional element that amounts
to significantly more than the judicial exception (2019 Guidance, Section
III(B) (Step 2B: If the Claim is Directed to a Judicial Exception, Evaluate
Whether the Claim Provides an Inventive Concept)).
Appellant argues “the ‘significantly more’ analysis in the Final
Rejection is not consistent with the USPTO guidelines (Berkheimer v. HP,
Inc.) of April 19, 2018” (Reply Br. 2). We are not persuaded. Although the
Final Rejection (mailed November 17, 2017) did not address the Berkheimer
memo (published April 19, 2018), the Examiner did address the Berkheimer
requirements in the Answer (Ans. 14–15 (citing Spec. ¶¶ 25–27)). As
discussed above, we determine the Specification demonstrates the well-
understood, routine, conventional nature of the additional elements (e.g., the
computing device, processor, memory, and network).
Finally, Appellant argues “[t]he lack of prior art citations in the Final
Action indicate that the claimed subject matter allows the computer to
perform a novel and non-obvious function that was not previously
performable by computers” (Appeal Br. 18). We are not persuaded. Our
reviewing court has determined that it is not enough “for subject-matter
Appeal 2018-008513
Application 12/709,067

22
eligibility that claimed techniques be novel and nonobvious in light of prior
art, passing muster under 35 U.S.C. §§ 102 and 103. The claims . . . are
ineligible because their innovation is an innovation in ineligible subject
matter” (SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir.
2018)). The court further held in Ultramercial, Inc. v. Hulu, LLC that the
addition of merely novel or non-routine components to the claimed idea does
not necessarily turn an abstraction into something concrete (see
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)).
Accordingly, in the instant application, the mere fact that a prior art rejection
is not present in the Final Office action does not preclude the claims from
being directed towards ineligible subject matter. To the contrary, the
apparent novelty of the claims is only in the judicial exception (i.e., the
abstract idea) itself.
Accordingly, Appellant has not persuaded us the claims are directed
to patent eligible subject matter. Therefore, the Examiner did not err in
rejecting claims 72–79 under 35 U.S.C. § 101 as not being directed to patent
eligible subject matter.
CONCLUSION
The rejection of claims 72–79 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter is affirmed.
Appeal 2018-008513
Application 12/709,067

23
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis  Affirmed Reversed
72–79 101 Eligibility

72–79

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) (see 37 C.F.R.
§ 1.136(a)(1)(iv)).
AFFIRMED