Acuna-Rohter, Jose Antonio. et al.

Patent Trials and Appeals Board

Feb 3, 2020

14030639 - (D) (P.T.A.B. Feb. 3, 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.
14/030,639 09/18/2013 Jose Antonio Acuna-Rohter 004672-10371Z-US 5826
12684 7590 02/03/2020
Lempia Summerfield Katz LLC/CME
20 South Clark Street
Suite 600
Chicago, IL 60603
EXAMINER
WARDEN, MICHAEL J
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
docket-us@lsk-iplaw.com
mail@lsk-iplaw.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSE ANTONIO ACUNA-ROHTER, PEARCE PECKWALDEN,
DILEEP KONDURU1
____________________

Appeal 2019-001400
Application 14/030,639
Technology Center 3600
____________________

Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and MICHAEL T.
CYGAN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 11, and 13 through17. 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). According to Appellant, Chicago Mercantile Exchange Inc. is the
real party in interest. Appeal Br. 1.
Appeal 2019-001400
Application 14/030,639

2
INVENTION
The invention is directed to a system for matching orders of financial
instruments using templates that define groups of orders. Spec., Abstract.
Claim 11 is reproduced below.
11. A system comprising:
a first memory that includes a collection of acceptable
trade templates each based on more than two component
financial instruments;
a second memory that includes a collection of needed
orders that each when combined with one or more existing
orders meet the requirements of one of the acceptable trade
templates;
a third memory that includes a collection of tradable
price levels for each of the component financial instruments of
the acceptable trade template based on a collection of resting
orders;
multiple order books that store pending orders for
financial instruments;
a computer device programmed with computer-
executable instructions to analyze orders resting in the multiple
order books and suggest new templates that would result in the
matching of groups of orders;
an exchange computer system that includes a match
engine that includes a processor programmed with computer-
executable instructions to:
(i) compare a new order to the needed orders in the
collection of needed orders;
(ii) when the new order corresponds to one of the
needed orders, compare a price level of the new order to
a tradable price level included in the third memory; and
(iii) when the price level of the new order meets
the tradable price level, executing a plurality of trades
contemporaneously.

Appeal 2019-001400
Application 14/030,639

3
EXAMINER’S REJECTIONS2
The Examiner rejected claims 11, and 13 through 17 under 35 U.S.C.
§ 101 for being directed to patent-ineligible subject matter. Final Act. 8–12.
The Examiner rejected claims 11, and 13 through 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Sundaram (US 2008/0086405 A1, pub.
Apr. 10, 2008) and Janiszewski (US 2001/0025267 A1, pub. Sept. 27, 2001).
Final Act. 9–12.

ANALYSIS
35 U.S.C. § 101 Rejection
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection for the claims under 35 U.S.C. § 101. Patent eligibility
under § 101 is a question of law that may contain underlying issues of fact.
Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1342 (Fed. Cir. 2018)
(citing Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018)). “We
review the district court’s ultimate conclusion on patent eligibility de novo.”
Id.; SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir.
2010) (“Whether a claim is drawn to patent-eligible subject matter is an
issue of law that we review de novo.”)

2 Throughout this Decision we refer to the Appeal Brief filed June 19, 2018
(“Appeal Br.”); Reply Brief filed December 3, 2018 (“Reply Br.”); Final
Office Action mailed January 19, 2018 (“Final Act.”); and the Examiner’s
Answer mailed October 2, 2018 (“Ans.”)
Appeal 2019-001400
Application 14/030,639

4
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
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.

There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012).
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, 573 U.S. at 217–18 (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
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
Appeal 2019-001400
Application 14/030,639

5
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 (1854))); 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 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. (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 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
Appeal 2019-001400
Application 14/030,639

6
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.
The United States Patent and Trademark Office “USPTO” published
revised guidance on the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Memorandum”). Under that guidance, we first determine 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Appeal 2019-001400
Application 14/030,639

7
See Memorandum.
DISCUSSION
The Judicial Exception
The Examiner determines the claims are not patent eligible because
they are directed to a judicial exception without reciting significantly more.
Final Act. 5–7. Specifically, the Examiner performs an analysis of several
claim limitations and determines the claims recite:
steps describe the concept of comparing orders and price levels,
which corresponds to concepts identified as abstract ideas by
the courts, such as collecting and comparing known information
(as in Classen), collecting, displaying, and manipulating data
(as in Int. Ventures v Cap One Financial), or collecting
information, analyzing it, and displaying certain results of the
collection and analysis (as in Electric Power Group)

Final Act. 6 (citing Classen Immunotherapies, Inc. v. Biogen IDEC, 659
F.3d 1057, 1067 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Capital
One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); and Electric Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
Appellant argues the claims are directed to a specific solution to a
technical problem and allows for reduced processing and a more efficient
computer system. Appeal Br. 5–7. Appellant argues the Examiner
overgeneralized the claims which recite more than comparing orders or price
levels. Appeal Br. 8–9. Further, Appellant argues the claims differ from
those at issue in Intellectual Ventures and Electric Power Group, as the
claims recite a technological system and that the system reduces processing
load. Appeal Br. 10–11.
We are not persuaded of error in the Examiner’s rejection by these
arguments, and we concur with the Examiner that representative claim 11
Appeal 2019-001400
Application 14/030,639

8
sets forth an abstract concept a mental process and also a fundamental
economic practice. Representative claim 11 recites three memories, each
having a collection of data (these are data gathering or observation
elements); “analyze orders resting in the multiple order books and suggest
new templates that would result in the matching of groups of orders” (this is
both a data gathering and data analysis/organization or evaluation element);
“comparing a new order with needed orders” “comparing a prices level of a
new order to a tradable process level” (these are also a data organizing or
evaluation element). These steps can be performed in the human mind as
they are merely gathering data, and analyzing the data, and thus we agree
with the Examiner that they recite a concept similar to that at issue in
Electric Power Group. The claims at issue in Electric Power Group recited
several steps of receiving data from various sources, detecting and analyzing
the data and displaying the data. Elec. Power Grp., 830 F.3d at 1351–52.
The court stated “we have treated collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.” Id. at 1353; see also
Classen at 1067 (claim to collecting and comparing known information
determined to be steps that can be practically performed in the human mind);
Content Extraction, 776 F.3d at 1347 (“The concept of data collection,
recognition, and storage is undisputedly well-known. Indeed, humans have
always performed these functions.”). Further, we recognize that the result of
these data gathering an analysis steps is the execution of trades, however this
does not change the determination that the claims recites an abstract idea. In
Trading Technologies, the court held that placing an order based upon
market information is a fundamental economic practice and states that “[t]he
Appeal 2019-001400
Application 14/030,639

9
fact that the claims add a degree of particularity as to how the order is placed
in this case does not impact the analyses at step one.” Trading Technologies
Int. v IBG LLC 921 F3d 1084, 092, 1903 (Fed. Cir. 2019) (citing
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)).
Further, as discussed infra, we disagree with Appellant’s arguments that the
claim recites a technical solution to a technical problem. Thus, we concur
with the Examiner and consider representative claim 11 to recite an abstract
concept.

Integration of the Judicial Exception into a Practical Application
Appellant argues that “the recited claim limitations are rooted in a
specific solution to the technological problem being solved.” Appeal Br. 5
(citing Specification ¶ 50 to show that the limitations “allows for reduced
processing”). Further, Appellant cites to the claimed use of tradable price
levels and trading templates as examples of reduced processing and more
efficient computer systems. Appeal Br. 6–7 (citing claim 11 and
Specification ¶¶47–49), Reply Br. 2-4. Appellant analogized their claims to
those at issue in Core Wireless v. LG where even though the claims did not
recite improving efficiency, the were held to be patent eligible as they
improved efficiency. Appeal Br. 7–8 (citing Core Wireless Licensing
S.A.R.L. v. LG Electronics Inc., 880 F.3d 1356 (Fed. Cir. 2018), Reply Br. 4-
5.3

3 We consider Appellant’s arguments on pages 4 and 5 which discuss “Core
Logic” case as being directed to the Core Wireless as there is no citation to
“Core Logic” in the either the Brief or the Answer.
Appeal 2019-001400
Application 14/030,639

10

The Examiner finds that the claim limitations do not recite an
improvement to the functioning of a computer or an improvement to a
technical field. Final Act 7, Ans. 5−6. The Examiner states:
Any improved efficiency associated with Appellant’s claims is
in the abstract idea itself not in any improvement to the
underlying technology. Applicant is not claiming an improved
processor or any improvement to how data is being processed
(such as processing through genetic algorithms). Appellant’s
claims process data in the same manner as before. Analyzing
and processing less data is not an improvement to the
underlying technology. The technology is unaffected by
Appellant’s claims. It is not a technical improvement to merely
perform a better methodology compared to the prior art which
is what occurs in Appellant’s claims. Performing an initial
analysis on data (e.g., comparing new orders to needed orders)
to eliminate some of the data and only analyzing the remaining
data (e.g., comparing price levels when the new orders
correspond to needed orders) is not a technical improvement
compared to analyzing “all of the data”.

Ans. 5–6. Further, the Examiner points out at that Core Wireless involved
an improvement to the user interface of a device and that improving the
manner of processing orders is not equivalent to an improved interface.
Ans. 6.
We are not persuaded of error by Appellant’s arguments. As
discussed above, we concur with the Examiner that the claim recites an
abstract idea. Further, we do not consider the claim to be drawn to a
practical application of the abstract idea as we do not find that the claim
recites an improvement to the functioning of the computer or other
technology or otherwise tied to technology as Appellant argues.
Appeal 2019-001400
Application 14/030,639

11
We do not consider the claims to improve efficiency or a particular
machine or in a particular technology as were the claims in Core Wireless.
In Core Wireless the court held that claims which recited an interface were
patent eligible as the claims recited specific limitations of the interface such
as: an application summary that can be reached through a menu, the data
being in a list and being selectable to launch an application, and additional
limitations directed to the actual user interface displayed and how it
functions. Core Wireless, 880 F.3d at 1363. The court found that the claims
were directed to an improved user interface and not the abstract concept of
an index as the claim “limitations disclose a specific manner of displaying a
limited set of information to the user, rather than using conventional user
interface methods to display a generic index on a computer.” Id. Further, an
improvement in efficiency alone does not render it patent eligible “While the
claimed system and method certainly purport to accelerate the process of
analyzing audit log data, the speed increase comes from the capabilities of a
general-purpose computer, rather than the patented method itself. See
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012) (‘[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.’).” FairWarning IP, LLC v.
Iatric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016
Representative claim 11 does not recite a particular machine. As
identified by the Examiner, the claim just cites a system, with several
memories, a computer device to analyze orders, and an exchange computer
that compares orders and executes trades, which are recited generally and
are performing generic functions routinely used in computer applications.
Appeal 2019-001400
Application 14/030,639

12
Final Act 6–7, Ans. 4−5. Appellant’s Specification identifies that the
invention “may be implemented with one or more mainframe, desktop or
other computers” and “with computer devices and computer networks that
allow users to exchange trading information.” Specification ¶¶ 22 and 23.
Thus, we do not consider the invention to be limited to any particular
computer or machine.
The use of tradable prices levels and trading templates does not tie the
invention to a particular machine or technology. Appellant’s Specification
discusses the trade template as a template that identifies the structures of a
variety of trades, and is used to match orders. Specification ¶ 32. The
“tradable price” is merely a price of the financial instrument. Specification ¶
48. We consider these to be arrangements of data concerning trades and
which are used to implement the trade, i.e. improvements to the abstract idea
of gathering and analyzing data and the fundamental economic process of
trading financial instruments. This data is similar to that at issue in Trading
Technologies where “generic information that assists traders in processing
information more quickly” was not considered to improve the functioning of
the computer make it operate more efficiently. Trading Technologies at
1903. As such the claim does not overcome a problem specifically arising in
the realm of computer networks, here the problem to be solved is to facilitate
matching groups of orders for financial instruments. Speciation ¶¶ 3–5.
Thus, the problem addressed in representative claim 11 is not related to a
computer or to another technology, but instead to “the performance of some
business practice known from the pre-Internet world along with the
requirement to perform it” via computer and Internet, which the DDR court
distinguished as not involving solutions necessarily rooted in computer
Appeal 2019-001400
Application 14/030,639

13
technology. DDR Holdings, 773 F.3d at 1257. Rather, the claims, when
interpreted in light of the Specification, merely recite use of a computer as a
tool to implement a process of gathering, analyzing and displaying data (an
abstract idea). See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1327 (Fed. Cir. 2017) (“Unlike Enfish, [the claim] does not claim a software
method that improves the functioning of a computer . . . [but] claims a
‘process that qualifies as an “abstract idea” for which computers are invoked
merely as a tool.’” (citation omitted)). Thus, we conclude representative
claim 11 does not recite a practical application of the judicial exception.

Significantly More than the Abstract Idea
Under the Memorandum, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Appellant argues “[T]he Office Action fails to present any evidence or
arguments that satisfy the Office's burden to prove that the claimed features
are ‘routine and conventional’ with clear and convincing evidence” as is
required by Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Appeal
Br. 11–12. Further, Appellant argues that because the Examiner has not
presented evidence, the Examiner has violated the Administrative
Procedures Act. Appeal Br. 13–14.
Appeal 2019-001400
Application 14/030,639

14
We are not persuaded of error by these arguments. As discussed
above, representative claim 11 recites and abstract idea. The claim recites
the additional elements of a first, second and third memory, a computer
device to analyze orders, and an exchange computer that compares orders
and executes trades. As discussed above these elements are described in the
Specification generally, and as performing generic functions of storing data,
analyzing data, and comparing data. The Examiner cites to Appellant’s
Specification and cites prior art, patent to Sundaram and Janiszewski to
demonstrate these are well known routine and conventional elements. Ans.
9–10 (citing Specification ¶¶24-30, Sundaram ¶¶19, 20, Janiszewski ¶35).
We have reviewed the evidence cited by the Examiner and concur with the
Examiner. Both the Sundaram and Janiszewski references, demonstrate that
it is well known and conventional to use memory to store data related to
trading financial instruments and to use computers to analyze and match
offers in trading financial instruments.
We are not persuaded by Appellant’s argument that the Berkheimer
requirements are not met as the Examiner improperly limited the analysis to
the computer and because the Examiner only cited a single reference “even
though the Berkheimer decision expressly drew a distinction between what
is well-understood, routine, and conventional, and what is simply known in
the prior art.” Reply Br. 5. The USPTO Memorandum of April 19, 20184,
identifies that this inquiry is to the additional elements of the claim. As

4 Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF (Apr. 19, 2018) (“USPTO Berkheimer
Memorandum”).
Appeal 2019-001400
Application 14/030,639

15
identified above the additional limitations of the claim are several memories,
a computer device to analyze orders, and an exchange computer that
compares orders and executes trades. The Examiner has addressed these
limitations by citing to three documents, not one as argued by Appellant, to
show that they recite elements that are well-understood, routine,
conventional. The USPTO Memorandum of April 19, 2018, identifies that
evidence to demonstrate well-understood, routine, and conventional can
come from express statements in the Specification, citations of court
decisions and publications. Here the Examiner has cited to both Appellant’s
Specification and prior publications, thus, we consider the Examiner to have
provide ample evidence to support the findings that the additional limitations
are well-understood, routine, and conventional. Similarly, we are not
persuaded that the rejection is in error because by “failing to present any
supporting evidence,” the Examiner has violated the Administrative
Procedures Act. Appeal Br. 13. We do not find such argument persuasive,
because as discussed supra, the Examiner has made findings supported by
evidence. See also Ans. 9–10. Thus, we do not find that representative
claim 11 recites significantly more.

In summary, Appellant’s arguments have not persuaded us of error
in the Examiner’s determination that representative claim 11 is directed to an
abstract idea; both a mental process and a fundamental economic process.
Further, Appellant’s arguments have not persuaded us that the Examiner
erred in finding that the claim is not: directed to an improvement in the
functioning of the computer or to other technology or other technical field;
directed to a particular machine; directed to performing or affecting a
Appeal 2019-001400
Application 14/030,639

16
transformation of an article to a different state or thing; directed to using a
judicial exception in some meaningful way beyond linking the exception to a
particular technological environment such that the claim as a whole is more
than a drafting effort to monopolize the judicial exception. For these
reasons, we are unpersuaded that the claim recites additional elements that
integrate the judicial exception into a practical application nor do the claims
add a specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional. See Memorandum, 84 Fed. Reg. at 54.
Accordingly, we sustain the Examiner’s rejection, under 35 U.S.C. § 101, of
representative claim 11 and claims 13 through 17 grouped with claim 11.

35 U.S.C. § 103(a) Rejection
Appellant argues the Examiner’s obviousness rejection of claim 11 is
in error as the combination of the references does not teach the claimed
feature of comparing a new order to a tradeable price. Appeal Br. 14.
Specifically, Appellant asserts that Sundaram, paragraph 20, cited by the
Examiner does not teach this feature. Appeal Br. 14–15. Further, Appellant
argues that the Examiner did not provide sufficient rationale to combine the
references. Appeal Br. 15.
The Examiner, in response to Appellant’s arguments identifies that the
claimed “tradeable price” is interpreted in light of the Specification as being
“a minimum bid price or maximum offer price.” Ans. 12 (citing
Specification ¶ 48). And, the Examiner finds that Sundaram teaches a match
engine that meets the disputed limitation. Ans. 12−13 (citing Sundaram ¶
20). Based upon this interpretation of the claim term and the teachings of
Sundaram, the Examiner concludes:
Appeal 2019-001400
Application 14/030,639

17
The teaching “a match engine module is included to
match bid and offer prices” teaches the BRI of “a tradeable
price level” as required by the claim. The bid/offer price of a
tradeable instrument as taught by Sundaram and its comparing
of prices of the corresponding trade sides in order to match
trades for execution teaches Appellant's limitation.

Ans. 13. Further, with respect to Appellant’s arguments concerning rationale
to combine the references the Examiner states:
Sundaram teaches a majority of the limitations. Sundaram
teaches a single memory for storing information instead of
discreet 1st, 2nd, and 3rd memories. Examiner states that the
reference Janiszewski teaches a partitioned memory for storing
various portions of a program in paragraph [0030]. Examiner
then provides a rationale for combining references (as noted in
KSR) the motivation is that Appellant’s claims are merely a
combination of old elements as taught by the prior art, and in
the combination each element would have performed same
function as it did separately. Examiner noted that one of
ordinary skill in the art would have recognized that the results
of the combination were predictable. Examiner provide
additional motivation to combine which includes having data
stored in separate memories can increase the security of the
underlying data.
Ans. 14.

We concur with the Examiner’s claim interpretation and finding that
Sundaram’s match engine which matches bid and offer prices meets the
claimed comparing a new order to a tradable price. We are not persuaded of
error by Appellant’s statement in the Reply Brief that the Examiner
disregards the term “tradable” as “many offers have price levels below the
lowest bid.” Reply Br. 5–6. The Examiner’s interpretation of the term
“tradable price” is supported by Appellant’s Specification, therefore we
Appeal 2019-001400
Application 14/030,639

18
consider it to be a reasonable interpretation. See Specification ¶ 48. Further,
Appellant’s arguments concerning the Examiner’s rationale to combine
being in error “the office merely discussed modifying the prior art to create
acceptable trade templates and never provides any rationale or motivation
for modifying the prior art to incorporate the tradable price levels” is not
persuasive of error. The Examiner found that the use of templates and price
levels are taught by Sundaram and merely modified this teaching to use
multiple memories. Thus, Appellant’s argument does not address the
Examiner’s finding of obviousness. Further, the Examiner has provided two
rationales for combining the references, neither of which is addressed by
Appellant’s arguments. Thus, Appellant’s arguments have not persuaded us
of error in the Examiner’s obviousness rejection of representative claim 11,
and claims 13 through 17 grouped with claim 11.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
11, 13–
17
101 Eligibility 11, 13–17
11, 13–
17
103(a) Sundaram,
Janiszewski
11, 13–17
Overall
Outcome
11, 13–17

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).

Appeal 2019-001400
Application 14/030,639

19
AFFIRMED