Michael Sweeting

Patent Trials and Appeals Board

Dec 16, 2021

2021001592 (P.T.A.B. Dec. 16, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/091,137 03/28/2005 Michael Sweeting 05-6225 2966
63710 7590 12/16/2021
CANTOR FITZGERALD, L.P.
INNOVATION DIVISION
110 EAST 59TH STREET
NEW YORK, NY 10022
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
12/16/2021 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 MICHAEL SWEETING
Appeal 2021-001592
Application 11/091,137
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL L. WOODS, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 31–33, 37, 45–49, and 90–100. 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(a). Appellant identifies the real party in interest as CFPH, LLC.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claimed invention relates to “managing trading between related
entities in an electronic market, such that trading may be technically
managed within a trading system to avoid unnecessary messaging and
transaction charges; and optimizing executions for trades between related
entities.” Spec. 4.2 The claimed invention introduces essentially two
alternatives to an entity’s trading system, used to send buy and sell orders to
an external market where they are matched and cleared, so that some orders
receive preferential treatment: match and clear some orders internally
instead of communicating them to the external exchange for trading, and
internally match some orders before others internally, based on whether both
matching buy and sell orders are from a “related” entity. See Figures 3–6;
see also Spec. 21–47.
The claimed invention aims to provide “functionality for
communicating internally in a data-efficient way to provide traders the best
chance to follow a market situation and to react to it quickly and accurately,”
and to provide “users [who] cannot afford the time to seek out contra traders
within their own same firm, company or legal entity, for example, who may
be participating in the market for the same instrument.” Spec. 7.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
receiving, by at least one processor of at least one
computer of an electronic trading system, in which the at least
one computer is in electronic communication with a plurality of
other computers via an electronic communications network,

2 The Specification filed on March 28, 2005, does not display line or
paragraph numbers. We will refer to the Specification only by page number.
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from a first computer, a first electronic message comprising a
first order to trade an instrument, the first order associated with
a first account;
receiving, by the at least one processor, from a second
computer, a second electronic message comprising a second
order to trade the instrument, the second order associated with a
second account and being contra to the first order;
determining, by the at least one processor, that the second
account has a pre-determined relationship to the first account, the
pre-determined relationship qualifying the first order and the
second order for preferential routing via at least one respective
single access point of the at least one computer communicatively
coupled via the communications network to at least one
respective machine, as compared to orders in the electronic
trading system other than the first and second order such that at
least one of:
(a) orders associated respectively with the first
account and the second account are traded against each
other with at least one of increased efficiency in settlement
or clearing and reduced cost in settlement or clearing, as
compared to trading between orders in the electronic
trading system associated with accounts that do not have
the predetermined relationship; or
(b) the first account and the second account are
associated with a same company or with companies that
are under common ownership; and
automatically and without delay, responsive to
determining that the second account has the pre-determined
relationship to the first account, by the at least one processor,
preferentially routing at least one of the first and second orders
at the at least one respective single access point to the at least one
respective machine for matching or for execution within the
electronic trading system.
REJECTIONS
The Examiner rejected claims 1, 90, and 100 under 35 U.S.C. § 112,
second paragraph, as indefinite.
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The Examiner rejected claims 1, 31–33, 37, 45–49, and 90–100 under
35 U.S.C. § 101 as reciting ineligible subject matter.
OPINION
Indefiniteness
With respect to claims 1, 90, and 100, the Examiner finds the term
“preferential routing” to be indefinite because it is “unclear from the claims
what constitutes a preferential routing.” Final Act. 3. The Examiner
explains that “the [S]pecification does not provide a definition for
ascertaining the requisite degree or standard, and one of ordinary skill in the
art would not be reasonably apprised of the scope of the invention.” Id.
Appellant argues “the Office Action has not shown how the claimed
features are believed to be indefinite,” and that the claims are clear to the
ordinary artisan, especially because the Specification describes “executing
their users’ orders in preference to other unrelated users” on pages 6–7 of the
Specification. Appeal Br. 9–10. We agree with Appellant.
In this regard, the Specification describes, for example, that:
[i]f any of such trading orders are determined to be related to the
new trading order, the priority of each related trading order for
being matched with the new trading order may be elevated above
other, non-related trading order(s) having the same bid or offer
price as that related trading order, regardless of the relative
priority of that related trading order with respect to such other,
non-related trading order(s) as defined by the relevant regular
trading rules in the exchange.
Spec. 9 (emphases added). The Specification also describes that “non-
related trading orders at better prices than related trading orders may be
matched before such related trading orders.” Id. at 10 (emphasis added).
Additionally, the Specification describes “managing the promotion of
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trading orders within various trading order lists.” Id. at 19 (emphases
added). The result is that “traders who have placed trading orders which are
then matched with new related trading orders by the in-house matching
techniques discussed herein may have their orders filled faster than they
would otherwise be filled.” Id. at 6 (emphasis added).
Thus, in light of the Specification, one of ordinary skill in the art
would understand “preferential routing” to be a broad term describing
various forms of order, priority, or speed of matching and executing trades.
As such, we find the Examiner’s concern goes to the breadth of the claim,
not indefiniteness. See In re Gardner, 427 F.2d 786, 788 (CCPA 1970)
(“Breadth is not indefiniteness.”).
Therefore, we do not sustain the Examiner’s rejection of claims 1, 90,
and 100 under 35 U.S.C. § 112, second paragraph.

Patent-Ineligible Subject Matter
Appellant argues claims 1, 31–33, 37, 45–49, and 90–100 as a group.
Appeal Br. 11–19; Reply Br. 2. We select independent claim 1 as
representative. The remaining claims stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
35 U.S.C. § 101 Framework
Section 101
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 U.S. 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. E.g., Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. 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 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
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” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “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, 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 Court also indicated that a
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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. 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.”), 191 (citing Benson
and Flook) (citation omitted)
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. (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.
USPTO Section 101 Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance, 84 Fed. Reg.”),
incorporated into the MANUAL OF PATENT EXAMINING PROCEDURE
§§ 2104–06, Rev. 10.2019 (“MPEP”) in June 2020. “The guidance sets out
agency policy with respect to the USPTO’s interpretation of the subject
matter eligibility requirements of 35 U.S.C. [§] 101 in view of decisions by
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the Supreme Court and the Federal Circuit.” Guidance, 84 Fed. Reg. at 51.3
Although “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance,” the Guidance “does not
create any right or benefit, substantive or procedural, enforceable by any
party against the USPTO.” Id. The Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id. at 50.
Under the USPTO Guidance and the October 2019 Update, we first
look to whether the claim recites: (1) any judicial exceptions, including laws
of nature, natural phenomena, and products of nature (see MPEP
§§ 2106.04(II)(A)(1), 2106.04(b)) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a practical
application (see id. §§ 2106.04(II)(A)(2), 2106.04(d)) (“Step 2A, Prong
Two”).4
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the additional elements, individually or in combination,
provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance, 84
Fed. Reg. USPTO, October 2019 Update: Subject Matter Eligibility (the
“October 2019 Update”) (available at https://www.uspto.gov/sites/default/
files/documents/peg_oct_2019_update.pdf).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application, as the term is used in USPTO Guidance. See Guidance
— Section III(A)(2), 84 Fed. Reg. at 54–55; MPEP § 2106.04(d).
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inventive concept ‘cannot be furnished by the unpatentable law of nature (or
natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016)).
Among the considerations in determining whether the additional elements,
individually or in combination, amount to significantly more than the
exception itself, we look to whether they add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field or simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework and Step 2A, Prong
One of USPTO Guidance, the Examiner determines that exemplary claim 1
is directed to ineligible subject matter, because they recite the abstract idea
of “managing trades.” Final Act. 8. More particularly, the Examiner
determines that “[m]anaging trades between related entities is a fundamental
economic practice long prevalent in commerce systems” (id. at 9), and as
such, characterizes exemplary independent claim 1 as covering the
“performance of a method of organizing human activity, but for the
recitation of generic computer components.” Id. Under Prong Two of the
USPTO Guidance, the Examiner determines that the identified judicial
exception is not integrated into a practical application because it “do[es] not
amount to significantly more than the abstract idea,” i.e., “the additional
element of using a processor to perform the abstract idea(s) amounts to no
more than mere instructions to apply the [judicial exception] using a generic
computer component.” Id. at 8–11.
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In response, Appellant asserts that the Examiner is incorrect in
determining that the claims are directed to an abstract idea. Appeal Br. 11.
According to Appellant, “[w]hen the limitations of the present claims are
properly considered in a reasoned analysis in the manner required, it is
readily apparent that the various elements, and combinations of such
elements, amount to significantly more than the purported ‘abstract idea’
created in the rejection.” Id.
Under the first step of the Mayo/Alice framework and Step 2A of the
USPTO Guidance, we first determine to what claim 1 is directed, i.e.,
whether claim 1 recites an abstract idea and if so, whether claim 1 is directed
to that abstract idea. The Federal Circuit has explained that “the ‘directed
to’ inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the
claim is on a specific improvement in relevant technology or on a process
that itself qualifies as an “abstract idea” for which computers are invoked
merely as a tool. See id. at 1335–36. Here, it is clear from the Specification,
including the claim language, that claim 1 focuses on an abstract idea, and
not on any improvement to technology and/or a technical field.
Reciting a Judicial Exception
In making this determination, we note that the Specification is titled
“SYSTEM AND METHOD FOR MANAGING TRADING BETWEEN
RELATED ENTITIES,” and states that the disclosure relates “to a system
and method for managing trading between related entities in an electronic
market.” Spec. 1. The Specification discloses that “[t]hroughout history,
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many different approaches have been adopted to bring buyers and sellers of
goods, services, and currency together, each with the key objective of
permitting transactions at or as close as possible, to the ‘market’ price of the
tradable item.” Id. at 2. According to the Specification, “[t]he buyer and
seller transaction must be structured to operate at very low costs or it will
distort the market price of the tradable items with artificially high transaction
costs.” Id. The Specification identifies that “electronic trading systems have
gained a widespread acceptance for trading items.” Id. The Specification
further identifies that “[t]he keys to effective buyer and seller transactions
are full and timely access of expression and knowledge, and low transaction
costs. However, there are often conflicting yet necessitating trade-offs
between trading efficiency and market knowledge.” Id.
Consistent with this disclosure, independent claim 1 recites “[a]
method” including steps for receiving information, i.e., “receiving . . . a first
electronic message [from a first account] comprising a first order to trade an
instrument” (limitation [a]), “receiving . . . a second electronic message
[from a second account] comprising a second order [contra to the first order]
to trade the instrument” (limitation [b]); analyzing information, i.e.,
“determining . . . that the second account has a pre-determined relationship
to the first account,” and if a predetermined relationship exists, trading the
first and second orders “against each other with at least one of increased
efficiency in settlement or clearing and reduced cost in settlement or
clearing” compared to other orders (limitation [c]); and executing a trade,
i.e., “automatically and without delay, responsive to
determin[ation] . . . preferentially routing at least one of the first and second
orders . . . for execution within the electronic trading system” (limitation
[d]). Appeal Br. 21 (Claim App.).
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When considered collectively and under the broadest reasonable
interpretation, we agree with the Examiner that claim 1, as summarized
above, recites broadly the abstract idea of “managing trades” (Final Act. 8),
which may be characterized as a “[c]ertain method[] of organizing human
activity—fundamental economic principles or practices (including hedging,
insurance, mitigating risk).” Guidance, 84 Fed. Reg. at 52; MPEP
§ 2106.04(a)(2)(II).
The courts have held similar concepts to be abstract. For example, the
Federal Circuit has held abstract the concepts of hedging in Bilski,
intermediated settlement in Alice, employing a filter for a loan-application
clearinghouse in LendingTree, LLC v. Zillow, Inc., 656 F. App’x 991, 995–
96 (Fed. Cir. 2016), and “receiving user input to send an order” in Trading
Tech. Int’l., Inc. v. IBG LLC, 921 F.3d 1084, 1094 (Fed. Cir. 2019)
(“Trading Tech.”).
Having concluded that claim 1 recites a judicial exception under the
Guidance, Step 2A, Prong One, we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application.
Integration into a Practical Application
We look to whether the claim “appl[ies], rel[ies] on, or use[s] the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception,” i.e., “integrates a judicial exception
into a practical application.” Guidance, 84 Fed. Reg. at 54; MPEP
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§ 2106.04(d). The Examiner identifies the “additional elements,”5 beyond
the recited abstract ideas, as “a processor, memory, and a network” that
include the claimed functions of “receiving, storing, and transmitting data,”
as well as “functions any general purpose computer performs.” Final Act.
10.
Appellant reproduces claim 1, and argues that “the emphasized
features of claim 1” constitute additional elements “that integrate[] an
abstract idea into a practical application.” Final Act. 11–12 (emphasis
omitted). Appellant argues these identified features “provide[] an
improvement in the functioning of a computer, or an improvement to other
technology or technical field, and implement[] the abstract idea in
conjunction with a particular machine.” Id. at 12. Appellant asserts that
following elements of claim 1 are “additional elements” beyond the abstract
idea:
of at least one computer of an electronic trading system, in which
the at least one computer is in electronic communication with a
plurality of other computers via an electronic communications
network, from a first computer
second computer, a second electronic message
pre-determined relationship
preferential routing via at least one respective single access point
of the at least one computer communicatively coupled via the
communications network to at least one respective machine
automatically and without delay
preferentially routing at least one of the first and second orders
at the at least one respective single access point to the at least one

5 The USPTO uses the term “additional elements” to refer to claim features,
limitations, and/or steps that are recited in the claim beyond the identified
judicial exception. Guidance, 84 Fed. Reg. 55, n.24.
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respective machine for matching or for execution within the
electronic trading system.
Appeal Br. 11–12.
At the outset, we note that some of Appellant’s identified “additional
elements” correspond to the computer and network elements identified by
the Examiner, specifically those related to computers and network, including
“automatically.” However, the “pre-determined relationship,”
“preferential/preferentially routing” and “without delay” elements are
subsumed within the abstract idea, because they are part of the trading rules
set forth in claim 1 for “managing trades.” Thus, we agree with the
Examiner that none of the computer-related “additional elements” integrate
the abstract idea into a “practical application.”
In support of the argument that the identified “additional elements”
integrate the abstract idea into a “practical application,” Appellant contends
the claims improve the functioning of computer technology, because the
computer “may help control activity over the network,” “control computer
workload,” “improve the usability and efficiency of using an electronic
trading system,” and will “allow a computer to perform a function not
previously performable.” Appeal Br. 13. Appellant also contends that the
claims are “implemented using a particular machine.” Id. See also id. at 16
(“implemented using a particular machine”).
First, we discern nothing from the cited portions of the Specification
that show any improvement to computer technology. Although certain
orders may be handled more quickly than others internally, or at an outside
trading exchange, this is because they are matched “without delay,”
internally, and, potentially, in an order that matches them earlier because of
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“preferential routing.” These aspects correspond to abstract trading rules,
not any improvement in computer technology.
Similarly, the claimed method may “control activity over the
network” by not communicating some orders to outside trading exchanges
(Spec. 6), but this is a business decision, not an improvement in computer or
network technology. See Ans. 6 (“Giving preference to one user’s orders
over another is a business decision and not a technical solution to a
problem.”).
Appellant asserts that claim 1 provides an improvement in the control
of “computer workload,” and as such, claim 1 improves computer
technology. See Appeal Br. 13 (“the claimed features may help control
activity over the network and control computer workload”) (emphasis
omitted). However, Appellant has not identified any such element that
provides that alleged improvement. See id. Similarly, we do not discern
where Appellant has identified the feature or features that “improve the
usability and efficiency of using an electronic trading system,” as asserted,
because Appellant links this to being caused “by preferentially routing,
automatically and without delay.” Id. These are rules that are part of the
abstract idea, not “additional elements,” and do not appear to impact the
overall “usability and efficiency” of a user’s use of a trading system, because
they merely provide advantages to some orders, not the computer system
itself.
Appellant does not identify, and we do not discern, any “features” that
“allow a computer to perform a function not previously performable,”
because Appellant only points to the alleged “additional elements” in claim
1, which recite the use of a computer and network, as well as misidentified
features of the abstract idea of “managing trades.” Prior art trading systems
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were able to implement trading rules, such as those related to first-in/first-
out and price and time priority, so it is not apparent to us why those systems
could not instead implement different trading rules, such as those recited in
claim 1 related to a “predetermined relationship.” See, e.g., Spec. 3.
Finally, Appellant identifies no “particular machine” for performing
the method of claim 1, and we do not discern any recited. In addition, the
Specification describes that “the term ‘computer’ refers to any suitable
device operable to accept input, process the input according to predefined
rules, and produce output,” providing as examples of such computers “a
personal computer, workstation, network computer, wireless data port,
wireless telephone, personal digital assistant, one or more processors within
these or other devices, or any other suitable processing device.” Spec. 15;
see also id. at 17 (“trading module 50 may include any suitable hardware,
software, personnel, devices, components, elements, or objects that may be
utilized or implemented to achieve the operations and functions of an
administrative body or a supervising entity that manages or administers a
trading environment.”); 18–19 (“may be provided by any suitable hardware,
software, or other computer devices”). See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.”).
We also note that the Specification describes that “the functionality
provided by communications network 16 and/or trading module 50 may be
partially or completely manual such that one or more humans may provide
various functionality associated with communications network 16 or trading
module 50.” Spec. 18 (emphasis added).
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Appellant also argues, “like in DDR Holdings,” the claims provide
technological improvements in “speed, usability and efficiency.” Appeal Br.
17. We are unpersuaded by this argument. According to the Federal
Circuit, “DDR Holdings does not apply when ... the asserted claims do not
‘attempt to solve a challenge particular to the Internet.’” Smart Sys.
Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1375 (Fed. Cir.
2017) (quoting In re TLI Commons LLC PatentLitig., 823 F.3d 607, 613
(Fed. Cir. 2016)). The claims here do not attempt to solve a challenge
particular to the Internet, because instead they propose new trading rules that
match certain trading orders from accounts with a “predetermined
relationship” first. Spec. 4.
Thus, we are not persuaded of error in the Examiner’s determination
that the additional elements of claim 1 do not integrate the judicial exception
into a practical application, as the term is used in USPTO Guidance, and we
are not persuaded of error in the Examiner’s determination that claim 1 is
directed to an abstract idea.

Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework and USPTO Guidance
Step 2B, we “[e]valuat[e] additional elements to determine whether they
amount to an inventive concept [which] requires considering them both
individually and in combination to ensure that they amount to significantly
more than the judicial exception itself.” MPEP § 2106.05(I).
We find supported the Examiner’s determination that the limitations
of claim 1, taken individually and as an ordered combination, do not amount
to significantly more than the judicial exception. Final Act. 11. We agree
with the Examiner that “the additional element of using a processor to
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perform the abstract idea(s) amounts to no more than mere instructions to
apply the exaction using a generic computer component.” Id.
In response, Appellant argues that the “Final Action fails to perform a
proper analysis of eligibility under Step 2B of 2019 PEG . . . because it
merely provides conclusory statements and does not comport with the
Berkheimer Memo.”6 Appeal Br. 17–18. Appellant also argues “the claims
include additional subject matter that is not well-understood, routine,
conventional activity and thus [is] an ‘inventive concept.’” Id. at 18.
We are not persuaded by Appellant’s argument. The court in
Berkheimer held that “[t]he patent eligibility inquiry may contain underlying
issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting Mortg. Grader, Inc.
v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) (“The
§ 101 inquiry ‘may contain underlying factual issues.”’)). But, the court also
held that “[w]hen there is no genuine issue of material fact regarding
whether the claim element or claimed combination is well-understood,
routine, [and] conventional to a skilled artisan in the relevant field, this issue
can be decided on summary judgment as a matter of law.” Berkheimer, 881
F.3d at 1368 (emphasis added). This qualification has been subsequently
reiterated.
If there is a genuine dispute of material fact, Rule 56 requires that
summary judgment be denied. In Berkheimer, there was such a
genuine dispute for claims 4–7, but not for claims 1–3 and 9. . . .
[I]n accordance with Alice, we have repeatedly recognized the
absence of a genuine dispute as to eligibility for the many claims

6 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP
Inc., 881 F.3d 1360 (Fed. Cir. 2018),” USPTO Memorandum, Robert W.
Bahr, Deputy Commissioner for Patent Examination Policy, April 19, 2018
(the “Berkheimer Memo”)).
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that have been defended as involving an inventive concept based
merely on the idea of using existing computers or the Internet to
carry out conventional processes, with no alteration of computer
functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018) (Moore, J., concurring); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1368 (Fed. Cir. 2018) (“A factual allegation or dispute should not
automatically take the determination out of the court’s hands; rather, there
needs to be justification for why additional evidence must be considered—
the default being a legal determination.”). Here, the Specification
indisputably shows the claimed computing system was conventional at the
time of filing.7 And the Appellant’s simple statement that the functions are
not well-understood, routine, and conventional (Appeal Br. 17) is an
unsupported allegation. Accordingly, no genuine issue of material fact
exists as to the well-understood, routine, or conventional nature of the
system as claimed.
Appellant does not offer additional reasoning or argument why the
claim “[a]dds a specific limitation or combination of limitations that [is] not
well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present.” Guidance, 84 Fed.
Reg. at 56. The claimed generic system operates in its ordinary and
conventional capacity to perform the well-understood, routine, and

7 See, e.g., Spec. 2 (“As used in this document, the term ‘computer’ refers to
any suitable device operable to accept input, process the input according to
predefined rules, and produce output, for example, a personal computer,
workstation, network computer, wireless data port, wireless telephone,
personal digital assistant, one or more processors within these or other
devices, or any other suitable processing device.”).
Appeal 2021-001592
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conventional functions of receiving data (i.e., receiving first and second
orders), analyzing data (i.e., determining if a predetermined relationship
exists), and performing an action based on the analysis (i.e., executing a
trade). See Spec. 2 (describing a generic computer system); Electric Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354–55 (Fed. Cir. 2016)
(gathering, sending, monitoring, analyzing, selecting, and presenting
information does not transform the abstract process into a patent-eligible
invention); Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”). The claim simply recites the functional results to be
achieved by a conventional computer system. The claim “provides only a
result-oriented solution[] with insufficient detail for how a computer
accomplishes it. Our law demands more.” Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
Considered as an ordered combination, the components of Appellant’s
claim 1 add nothing that is not already present when the steps are considered
separately. The sequence of receiving information, analyzing information,
and performing an action based on the analysis, i.e., executing a trade is
equally generic and conventional or otherwise held to be abstract. See
Electric Power, 830 F.3d at 1354–56 (holding that the sequence of
gathering, analyzing, and displaying in real-time was abstract); OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363–65 (Fed. Cir. 2015) (holding
that sequence of sending, communicating, gathering, determining, selecting,
and sending data), and FairWarning IP LLC v. Iatric Systems, Inc., 839 F.3d
1089, 1095 (Fed. Cir. 2106) (holding that sequence of generating a rule
related to accessing information, applying the rule, and storing and
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announcing the results was abstract). The ordered combination of the steps
is, therefore, ordinary and conventional.
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of the claim do not transform the claim into significantly
more than the abstract idea.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 1, and claims 31–33,
37, 45–49, and 90–100, which fall with independent claim 1.
CONCLUSION
The Examiner’s rejection under § 112 is reversed, and the rejection
under § 101 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 90, 100 112 Indefiniteness 1, 90, 100
1, 31–33, 37,
45–49, 90–100
101 Eligibility 1, 31–33, 37,
45–49, 90–100

Overall
Outcome
1, 31–33, 37,
45–49, 90–100

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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