Bartko, Peter et al.

Patent Trials and Appeals Board

Apr 15, 2020

12464099 - (D) (P.T.A.B. Apr. 15, 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.
12/464,099 05/11/2009 Peter Bartko 09-2310 1923
63710 7590 04/15/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
TINKLER, MURIEL S
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
04/15/2020 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 PETER BARTKO, JOHN CAPUANO, SVEN MIKA, and
THOMAS D. BRADSHAW
Appeal 2019-001365
Application 12/464,099
Technology Center 3600
Before: ROBERT E. NAPPI, JAMES R. HUGHES, and
MICHAEL T. CYGAN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–20 are pending, stand rejected, are appealed by Appellant,1
and are the subject of our decision under 35 U.S.C. § 134(a). See Final Act.
1–2.2 We have jurisdiction under 35 U.S.C. § 6(b).

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 BGC Partners,
Inc. Appeal Br. 3.
2 Throughout our decision we refer to Appellant’s Specification (“Spec.”)
filed May 11, 2009; Appeal Brief (“Appeal Br.”) filed July 5, 2018; and
Reply Brief (“Reply Br.”) filed Dec. 4, 2018. We also refer to the
Examiner’s Final Office Action (“Final Act.”) mailed Jan. 12, 2018; and
Answer (“Ans.”) mailed Oct. 15, 2018.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates “an apparatus . . . configured to determine a
market price and execute a trade between users.” Spec. ¶ 87; Abstract.
Claims 1 (reciting an apparatus), 9 (reciting a method), and 22 (reciting a
machine-readable medium) are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An apparatus for facilitating an electronic trading
system over a network with interfaces of computing devices,
the apparatus comprising:
at least one processor of a computing device of an
electronic trading system; and
a memory that stores instructions which, when executed by
the at least one processor of the computing device of the
electronic trading system, directs the at least one processor of
the computing device of the electronic trading system to:
[A] receive, from interfaces of computing devices of
a plurality of users of an electronic trading system, a
corresponding plurality of bid-offer pairs for a currency
exchange between a first currency and a second currency
such that a bid-offer pair is received from each of the
plurality of users, the plurality of users comprising a first
user and a second user, each bid-offer pair comprising:
(1) a bid price comprising an estimate of a fair
bid price comprising an exchange rate for exchanging
the second currency into the first currency,
(2) an offer price comprising an estimate of a fair
offer price comprising an exchange rate for
exchanging the first currency into the second
currency,
the bid-offer pair defining (a) a range of prices
between the offer price and the bid price and (b) a
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quote spread comprising the difference between the
bid price and the offer price;
[B] determine from the plurality of bid-offer pairs a
set of overlapping bid-offer pairs, in which the act of
determining the set of overlapping bid-offer pairs
comprises to:
(1) determine that the bid price and the offer
price of each bid-offer pair in the set of overlapping
bid-offer pairs is unexpired during a time of interest;
(2) determine whether any of the bid-offer pairs
comprises a bid price that is higher than the offer
price of the bid-offer pair;
(3) for each bid-offer pair, determine that the bid-
offer pair comprises a quote spread that is less than a
predetermined threshold; and
(4) determine from the plurality of bid-offer pairs
a set of qualifying bid-offer pairs, the set of qualifying
bid-offer pairs comprising each bid-offer pair of the
plurality of bid-offer pairs that satisfies each of the
following conditions:
(a) the bid price of the bid-offer pair and the
offer price of the bid-offer pair are both
unexpired at the time of interest;
(b) the bid price of the bid-offer pair is
lower than the offer price of the bid-offer pair;
(c) the bid-offer pair comprises a quote
spread that is less than a predetermined
threshold;
(5) determine from the set of qualifying bid-offer
pairs a set of overlapping bid-offer pairs, in which
each overlapping bid-offer pair comprises a range
such that (i) the number of bid-offer pairs having a
range that overlaps the range of the bid-offer pair is at
least half of (ii) the number of eligible bid-offer pairs
minus one, in which two ranges overlap if they both
include at least one price in common;
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[C] determine an exchange rate for converting the
first currency into the second currency based on the set of
overlapping bid-offer pairs, in which the act of
determining the exchange rate comprises calculating an
average of the bids and offers in the set of overlapping bid-
offer pairs;
[D] receive, from an interface of a computing device
of the first user, a first order to exchange the second
currency for the first currency, in which the first order is
unexpired during the time of interest;
[E] receive, from an interface of a computing device
of the second user, a second order to exchange the first
currency for the second currency, in which the second
order is unexpired during the time of interest;
[F] matching the first order and the second order;
[G] execute an electronic trade between the interface
of the computing device of the first user and the interface
of the computing device of the second user based on the
act of matching and based on the determined exchange
rate;
[H] transmit data representing a confirmation of the
executed electronic trade to the interface of the computing
device of the first user and to the interface of the
computing device of the second user;
[I] determine data representing output price flow
information which indicates information about a change in
price of products purchased or sold on an exchange
between one or more users;
[J] transmit, to interfaces of computing devices of the
one or more users, data representing the output price flow
information;
[K] calculate data representing a recommended
adjustment in a market price between one or more users so
that aggregate flow between the one or more users is close
to zero over time;
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[L] transmit, to interfaces of computing devices of
the one or more users, data representing the recommended
adjustment in the market price for transactions between the
users;
[M] receive, from interfaces of computing devices of
the one or more users, data representing an adjustment
value specifying that the adjustment rate is to be active
until the aggregate flow between the user over a time of
interest is within a specified range of zero; and
[N] in response to the received adjustment value,
determine an adjusted market price between the one or
more users so that aggregate flow between the one or more
users is close to zero over time.
Appeal Br. 22–24 (Claims App.) (bracketed claim limitation designations
added).
REJECTION
The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 3–6.
ANALYSIS
Subject Matter Eligibility—35 U.S.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Association for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77–80 (2012). “[F]or distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The
framework requires us first to consider “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If so, we then examine “the elements of [the] claim both individually and ‘as
an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). That is, we examine the
claim for an “inventive concept,” “an element or combination of elements
that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Alice,
573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
The Patent Office has published revised guidance concerning this
framework and the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(hereinafter “2019 Revised Guidance”). Under that guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people) (hereinafter
“Step 2A, prong 1”); and
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(hereinafter “Step 2A, prong 2”).3
See 2019 Revised Guidance, 84 Fed. Reg. 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019
Revised Guidance, 84 Fed. Reg. 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. See 2019 Revised Guidance, 84 Fed. Reg.
54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. 56; see also Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
(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.4

3 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
4 Items (3) and (4) are collectively referred to as “Step 2B” hereinafter and
in the 2019 Revised Guidance.
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See 2019 Revised Guidance, 84 Fed. Reg. 56. With these principles in
mind, we turn to the merits of the § 101 rejection. The Examiner rejects
Appellant’s claims 21–28, 30–38, 41, and 47–53 as being directed to patent-
ineligible subject matter. See Final Act. 4–5; Ans. 3–4. Appellant does not
separately argue the claims with specificity and, instead, argues the claims
together for this rejection. See Appeal Br. 7. Accordingly, we address the
Examiner’s rejection of independent claim 21 and the claims not separately
argued by Appellant as a group based on claim 21, as permitted by 37 C.F.R.
§ 41.37(c)(1)(iv).
Statutory Subject Matter
Claim 1 recites an “apparatus” (supra). Appellant’s “apparatus”
includes a processor (“at least one processor”) and a “memory” that stores
computer executable “instructions,” which “when executed by [the
processor] directs [the processor] to” perform a process comprising a
number of functions or steps. Appeal Br. 22 (Claims App.) (claim 1).
Accordingly, we analyze Appellant’s system as a machine (for performing
the delineated functionality), which is a statutory category of invention
(subject matter) (USPTO’s Step 1).
Abstract Idea
The Examiner rejects Appellant’s claim 1 as being directed to patent-
ineligible subject matter. See Final Act. 3–6; Ans. 6–9. Specifically, the
Examiner concludes claim 1 and the other independent claims “are directed
to facilitating an electronic trading system over a network with interfaces of
computing devices,” which may be interpreted as an abstract concept such as
“a fundamental economic practice, and “certain methods of organizing
human activity,” and an idea of itself (mental process). Final Act. 4–5.
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Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 12–20;
Reply Br. 2. Specifically, Appellant contends, with respect to the first step
of the Alice analysis, that the instant claims “amount to an improvement in
computer performance”—in particular, “improvements in facilitating an
electronic trading system over a network with interfaces of computing
devices.” Appeal Br. 14. Appellant further contends the claims provide
“improved techniques in facilitating an electronic trading system over a
network with interfaces of computing devices,” for example, “these
techniques may help control activity over the network and control
computer workload including computer resources.” Appeal Br. 15–16.
Appellant also contends the instant claims, similar to the claims in Core
Wireless (Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d
1356 (Fed. Cir. 2018)) are drawn to an improved user interface which
provides advantages over prior art systems. Appeal Br. 17. Appellant
additionally contends the claims include “very specific” recitations of
features that “do not preempt all ways of achieving the intended result,” and
therefore “clearly recite statutory subject matter.” Appeal Br. 19.
For the reasons discussed below, we conclude Appellant’s claim 1
(and the other pending claims) recites abstract ideas, these abstract ideas are
not integrated into a practical application, nor do they include an inventive
concept. In view of the 2019 Revised Guidance, we clarify and expand the
Examiner’s reasoning as follows.
We begin our analysis by broadly but reasonably construing
Appellant’s claim 1 (see Appeal Br. 22–24 (Claims App.)). Omitting the
portions of the claim invoking use of generic technology (which are
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discussed separately below), claim 1 focuses on (as stated in the preamble)
“facilitating an electronic trading system” that performs the delineated
functionality (steps or functions) for currency exchange (see limitation A).
These functions elaborate on the functionality of the currency exchange
process, and comprise: (A) “receiv[ing]” or collecting information
comprising “bid-offer pairs for currency exchange” (limitation A) and
characterizing the information received (limitations A1–A2); (B)
“determin[ing] . . . overlapping bid-offer pairs” (limitation B) and further
detailing the determining process (limitations B1–B5); and (C)
“determin[ing] an exchange rate for converting the first currency into the
second currency” (limitation C). The functions of the currency exchange
process further include receiving currency exchange orders (limitations D
and E), matching the currency exchange orders (limitation F), and executing
a trade according to the matched orders (limitation G). The functions of the
currency exchange process also include “transmit[ting] . . . confirmation of
the executed electronic trade” to the users (limitation H). Additionally, the
currency exchange process functionality includes calculating product pricing
adjustments by: “determin[ing] . . . output price flow information” (a
changing in product pricing) (limitation I); “transmit[ting] . . . the output
price flow information” to users (limitation J); “calculate[ing] . . . a
recommended adjustment in a market price between . . . users so that
aggregate flow between the . . . users is close to zero over time” (limitation
K); “transmit[ting] . . . the recommended adjustment” to the users (limitation
L); “receiv[ing] . . . data” (“representing an adjustment value”) (limitation
M); and “determin[ing] an adjusted market price” (limitation N).
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Apart from the use of generic technology (discussed further below),
each of the limitations of claim 1 describes “‘collecting information,
analyzing it, and displaying certain results of the collection and analysis,’
where the data analysis steps are recited at a high level of generality such
that they could practically be performed in the human mind.” October 2019
Update: Subject Matter Eligibility 7, available at https://www.uspto.gov
/sites/default/files/documents/peg_oct_2019_update.pdf (hereinafter
“October 2019 Update”). The currency exchange process amounts to a
mental process (“idea of itself”—see Final Act. 4–5) that is very similar to
Electric Power Group. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1351–54 (Fed. Cir. 2016)).
A person can practically perform the functions of limitations B, C, F,
I, K, N (the determining, matching, and calculating functions) mentally, or
by using pen and paper. Nowhere does Appellant point to specific claim
limitations that distinguish over a human process. Further, the revised
guidance explains that “mental processes” include acts that people can
perform in their minds or using pen and paper, even if the claim recites that
a generic computer component performs the acts. See 2019 Revised
Guidance, 84 Fed. Reg. 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”)
Because each of the limitations discussed above encompasses an act that
people can perform in their minds or using pen and paper, claim 1 recites
mental processes. Appellant’s arguments have not persuaded us otherwise.
See Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
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1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying,
and manipulating data); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1345, 1347 (Fed. Cir. 2014)
(Finding the “claims generally recite . . . extracting data [and] recognizing
specific information from the extracted data” and that the “claims are drawn
to the basic concept of data recognition.”). Even where the analysis requires
one to access and gather data, or utilize a pen and paper in the analysis, such
analysis may still be an abstract mental process. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (“[E]ven if
some physical steps are required to obtain information from the database . . .
such data-gathering steps cannot alone confer patentability.”). Additionally,
the functions of “receiving” and “transmitting” information (limitations A,
D, E, H, J, L, and M), as well as the executing function (limitation G)
amount to extra-solution activity to the mental process.
Also, apart from the use of generic technology (discussed further
below), each of the limitations of claim 1 describes activities that would be
performed during a currency exchange or electronic trading: limitations D,
E, H, J, L, and M describe exchanging (collecting and transferring)
information, limitations B, C, F, I, K, N describe analyzing (determining,
calculating, and matching) the exchanged information, and limitation G
executes the exchange.
As stated in the Revised Guidance, subject matter relating to
commerce is an example of organizing human activity, and in particular a
fundamental economic practice. October 2019 Update 5; Revised Guidance,
84 Fed. Reg. 52. The interaction between users and a service provider (e.g.,
an electronic trading system) for exchanging currency (perform trades) and
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adjusting prices of products (based on the exchange) (see Spec. ¶ 87),
performing electronic trade processing (including exchanging data,
processing (analyzing and manipulating) data, and executing trades), and
performing financial transactions all fall under this description. Analogous
authority includes, e.g., Smart Sys. Innovations, LLC v. Chicago Transit
Auth., 873 F.3d 1364, 1371–72 (Fed. Cir. 2017) (“Taken together, the
Asserted Claims are directed to the formation of financial transactions in a
particular field . . . and data collection related to such transactions,” which is
“an abstract idea under Alice step one.”); OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359 (Fed. Cir. 2015) (offer-based price optimization);
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352–54 (Fed. Cir. 2014)
(Claims reciting sending and receiving communications over a computer
network to facilitate online commercial transactions are directed to
“contractual relations, which are intangible entities” and “constitute[] ‘a
fundamental economic practice long prevalent in our system of
commerce.’”). See also Content Extraction, 776 F.3d at 1347 (summarizing
precedent in which “claims directed to the performance of certain financial
transactions” involve abstract ideas and holding that claims drawn to the
abstract concept of financial transaction-related “data collection, recognition,
and storage is undisputedly well-known.”).
Appellant’s contentions (supra) focus on the purported
“improvements in facilitating an electronic trading system”, i.e., technical
improvements provided by the apparatus of claim 1. Appeal Br. 14; see
Appeal Br. 13–16. We address the purported technical improvements with
respect to the “Practical Application” of the abstract idea (below).
Appellant also contends the Examiner erred in rejecting the claims because
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the claims do not completely preempt “all ways of achieving the intended
result.” Appeal Br. 19. Although preemption is the concern that drives the
exclusionary principle of judicial exceptions to patent-eligible subject
matter, Alice, 573 U.S. at 216, preemption is not a separate test of patent-
eligibility, but is inherently addressed within the Alice framework. See
Ariosa Diagnostics, Inc., v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”).
Appellant also contends the claims are similar to those in Core
Wireless because the claims are drawn to an improved user interface. See
Appeal Br. 16–17. Appellant’s claim limitations (discussed supra),
however, do not even mention how information is displayed on the various
interfaces or the structure of the recited interfaces. Therefore, the claims
cannot be “drawn to” an improved user interface.
To the extent Appellant argues utilizing devices (e.g., the processor,
network, computing device interfaces (interfaces of computing devices), and
memory) to perform the recited functionality is not abstract, Appellant
misconstrues the inquiry. As we explained supra, the devices are additional
elements that are not part of this part of the abstract idea analysis. The
relevant inquiry is whether the processes (functionality) recited in the claims
(in particular claim 1) are abstract.
In summary, we conclude Appellant’s claim 1 recites a judicial
exception (USPTO’s Step 2A, Prong 1; see 2019 Revised Guidance).
Specifically, claim 1 recites a machine facilitating an electronic trading
system for exchanging currency—the currency exchange process—by
exchanging information, analyzing the exchanged information, and
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executing the currency exchange, as discussed supra. The currency
exchange process consists of processes (functionality) for organizing human
activity and mental processes that can be practically performed in the human
mind (or utilizing pen and paper) including observation, evaluation, or
judgment. See 2019 Revised Guidance, 84 Fed. Reg. 52, 53 (listing
“[c]ertain methods of organizing human activity—fundamental economic
principles or practices” and “[m]ental processes—concepts performed in the
human mind (including an observation, evaluation, judgment, opinion)” as
some of the “enumerated groupings of abstract ideas” (footnote omitted)).
Practical Application
Having determined that claim 1 recites an abstract idea, we next
determine, under Step 2A, Prong 2 of the 2019 Revised Guidance, whether
the claims are directed to that abstract idea, or whether the claims integrate
the abstract idea into a practical application of that abstract idea. See 2019
Revised Guidance, 84 Fed. Reg. 54. In doing so, we evaluate the claim as a
whole to determine whether the claim “integrate[s] the [abstract idea] into a
practical application, using one or more of the considerations laid out by the
Supreme Court and the Federal Circuit.” 2019 Revised Guidance, 84 Fed.
Reg. 55; see also October 2019 Update 12 (discussing the practical
application analysis). That is, we consider any additional elements recited in
the claim along with the limitations that recite an abstract idea to determine
whether the claim integrates the abstract idea into a practical application.
See October 2019 Update 12.
Claim 1 recites additional elements beyond the abstract currency
exchange process (the judicial exception). The additional elements in claim
1 include the processor (“at least one processor”), memory, network, and
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interfaces (interfaces of computing devices, i.e., user interfaces). Appeal Br.
22 (Claims App.) (claim 1).
Appellant’s Specification describes the processor as any one of
“microprocessors, central processing units (CPUs), computing devices,
microcontrollers, digital signal processors, or like devices or any
combination thereof, regardless of the architecture.” Spec. ¶ 58.
Appellant’s Specification further explains that “the various processes
described herein may be implemented by, e.g., appropriately programmed
general purpose computers.” Spec. ¶ 57. Appellant’s Specification does
not expressly discuss the “memory” recited in claim 1, but describes
memory as including “dynamic random access memory (DRAM), which
typically constitutes the main memory” (Spec. ¶ 61), and explains “data may
be . . . delivered from RAM to a processor” (Spec. ¶ 62). The Specification
also describes the operations and structure of the “network”—as a “wired or
wireless medium (e.g. the Internet, LAN, WAN or Ethernet . . . [or] a
combination of any of the above). Spec. ¶ 67. Appellant’s Specification
additionally describes interfaces (user interfaces) that “may comprise a
user’s PDA or computer, or a program running on a user’s computer.” Spec.
¶ 160; see Spec. ¶¶ 8, 224; Figs. 14–25.
In summary, Appellant’s written description does not portray the
processor, interfaces, or other enumerated additional elements as anything
but standard computer components. Nor does Appellant’s written
description portray these components as operating in a new way. Instead the
written description depicts these components as generic components
operating in their accustomed manner.
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Accordingly, Appellant’s written description shows that additional
elements are generic. 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.”); 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.”).
None of these additional elements, whether taken alone or in the
context of the claims as a whole, integrate the judicial exception into a
practical application. In particular, the recited limitations including the
additional elements may improve the mental process and fundamental
economic practice of providing a currency exchange process, but do not
describe an improvement in the functioning of a computer, or an
improvement to other technology or technical field. See Revised Guidance,
84 Fed. Reg. 55.
Appellant contends claim 1 (and the other pending claims) provides
“improvements in facilitating an electronic trading system”, i.e., technical
improvements provided by the apparatus of claim 1. Appeal Br. 14; see
Appeal Br. 13–16. In other words, Appellant contends the claims recite a
technological improvement that amounts to more than simply utilizing a
computer as a tool to accomplish the currency exchange process.
Appellant’s contentions correspond to the reasoning in MPEP
§ 2106.05(a)–(c), where additional elements integrate the judicial exception
into a practical application. We, however, disagree with Appellant’s
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contentions. Appellant’s additional elements do not apply or use the
currency exchange process (the judicial exception) in a manner that imposes
a meaningful limit on the judicial exception, such that it is more than a
drafting effort designed to monopolize the exception. See Alice, 573 U.S. at
221–24 (citing Mayo, 566 U.S. at 78–85). Rather, Appellant’s claim recites
generic computer elements (e.g., the processor and interfaces) that are
utilized as tools to carry out the exchange of information and information
analysis to determine various information for exchanging currency
(performing/executing trades or currency exchanges) as discussed supra.
Utilizing computers as tools to perform common data information analysis
and data collection functions that can be mental processes (an abstract idea)
does not impose a meaningful limit on the abstract idea. See MPEP
§ 2106.05(f); see also Alice, 573 U.S. at 223 (Finding “if [the] recitation of a
computer amounts to a mere instruction to implement an abstract idea on a
computer that addition cannot impart patent eligibility.”) (quotations and
citations omitted).
Appellant’s claim 1 (and the other pending claims) can be
distinguished from patent-eligible claims such as those in McRO, Enfish,
BASCOM, and DDR Holdings that are directed to “a specific means or
method that improves the relevant technology” (McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)), or “a
specific improvement to the way computers operate” (Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)), solving a
technology-based problem (BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016)), or a method
“rooted in computer technology in order to overcome a problem specifically
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arising in the realm of computer [technology]” (DDR Holdings, 773 F.3d at
1257). Contrary to Appellant’s arguments, claim 1 is not a technological
improvement or an improvement in a technology. Appellant’s claim 1 does
not “improve the functioning of the computer itself” or “any other
technology or technical field.” Alice, 573 U.S. at 225. Nor does it provide a
technological solution to a technological problem. See DDR Holdings, 773
F.3d at 1257; MPEP § 2106.05(a). Appellant fails to explain sufficiently
and persuasively how the instant claim(s) are directed to an improvement in
the way computers operate, nor has Appellant identified any technical
advance or improvement or specialized computer components. See Appeal
Br. 13–16.
In summary, “the focus of the claims is not on such an improvement
in computers as tools, but on certain independently abstract ideas that use
computers as tools.” Elec. Power Grp., 830 F.3d at 1354; see also MPEP
§ 2106.05(f) (instructing Examiners to consider “[w]hether the claim
invokes computers or other machinery merely as a tool to perform an
existing process” in determining whether the claim recites mere instructions
to apply the exception) (cited in 2019 Revised Guidance, 84 Fed. Reg. 55,
n.30) (emphasis omitted). Thus, we conclude the claims are directed to an
abstract idea that is not integrated into a practical application.
Inventive Concept
Having concluded Appellant’s claims are directed to an abstract idea
under the 2019 Revised Guidance (Step 2A analysis), we consider whether
claim 1 has an inventive concept, that is, whether the claim has additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). As
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discussed above, this requires us to evaluate whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality.” 2019 Revised
Guidance, 84 Fed. Reg. 56.
The Examiner determined that Appellant’s claim 1 (and the other
pending claims) do not amount to significantly more than the abstract idea
itself—“[w]hen viewed individually, or as an ordered combination, the
additional limitations do not amount to a claim as a whole that is
significantly more than the abstract idea.” Final Act. 6; see Final Act. 5–6;
Ans. 6–7. Specifically, the Examiner found that the additional “elements
(memory and processor) perform generic computer functions of processing
information.” Final Act. 5; see Final Act. 5–6 (citing Spec. ¶¶ 26, 57, and
66).
Appellant does not address explicitly which additional elements are
not well-known, routine, or conventional, or how the additional elements
perform functions that are not well-known, routine, and conventional with
respect to the second step of the Alice analysis. Appellant does, however,
contend claim 1 (as well as the other pending claims) should be upheld
under the Step 2B analysis. See Appeal Br. 17–18. Specifically, Appellant
contends the Examiner’s “‘significantly more’ analysis in the Final Action is
not consistent with the USPTO guidelines.” Appeal Br. 17 (citing the
Office’s Berkheimer Memo).5

5 Memorandum from Robert W. Bahr, entitled “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
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Appellant fails to persuade us of error in the Examiner’s rejection
with respect to the second Alice step (USPTO’s Step 2B). We agree with the
Examiner that Appellant’s claim 1 (as well as the other pending claims) does
not evince an “inventive concept” that is significantly more than the abstract
idea itself. In particular, Appellant fails to explain how the additional
elements (supra) add specific limitations beyond the judicial exception that
are not well-understood, routine, and conventional in the field.
As previously discussed, claim 1 merely recites additional non-
abstract elements (processor(s), a memory, a network, and interfaces) that
perform the currency exchange process. The record supports the Examiner’s
findings (see Final Act. 5–6) that the additional elements, individually and as
an ordered combination, are generic computer components that carry out
common information collection and analysis functions recited in the
currency exchange process (the abstract idea), and that the additional
elements are well-understood, routine, and conventional, specified at a high
level of generality. See, e.g., Spec. ¶¶ 57, 58, 61, 62, 67, 160; see also
Revised Guidance, 84 Fed. Reg. 56.
Such conventional computer processes operating on conventional
computer hardware “do not alone transform an otherwise abstract idea into
patent-eligible subject matter.” FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at
1256). Further, generically claimed elements of processor(s), memories, and

Eligibility Decision (Berkheimer v. HP, Inc.),” dated April 19, 2018
(“Berkheimer Memo”). The Berkheimer Memo is available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (last visited Mar. 20, 2019).
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program instructions have been found to be no more than well-understood,
routine, and conventional activity in the context of gathering, assembling,
and analyzing information. See, e.g., Berkheimer, 881 F.3d at 1370 (“These
conventional limitations of claim 1, combined with limitations of analyzing
and comparing data and reconciling differences between the data . . . .
amount to no more than performing the abstract idea of parsing and
comparing data with conventional computer components.”).
To the extent that Appellant argues that the purported technical
improvements and benefits of the currency exchange process (the abstract
idea) in conjunction with the additional elements provide significantly more
than the abstract idea, we are not persuaded. See Appeal Br. 13–18.
According to Appellant, the Specification describes and the claims recite
purported benefits and technical improvements—e.g., the Specification
“describes advantages in facilitating an electronic trading system over a
network with interfaces of computing devices” (Appeal Br. 15 (citing
Spec. ¶¶ 231, 232)) and “the claimed subject matter provides improved
techniques in facilitating an electronic trading system over a network
with interfaces of computing devices” that “may help control activity
over the network and control computer workload including computer
resources” (Appeal Br. 15–16). The purported benefits and technical
improvements, however, flow from the abstract idea and not the additional
elements. That is, other than using generic technology, the purported
benefits and improvements are elaborations on the basic abstract idea itself.
“It is clear from Mayo that the ‘inventive concept’ cannot be the abstract
idea itself.” Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d
1354, 1359 (Fed. Cir. 2018).
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Appellant also fails to persuade us that the Examiner did not support
the determination that the additional elements are well-known, routine, and
conventional. The Examiner provides citations to Appellant’s Specification
to support the determination. See Final Act. 5–6 (citing Spec. ¶¶ 26, 57 (“a
processor” is, for example, a “microprocessor[], . . . microcontroller[], . . .
[or] digital signal processor[]”), and 66). Appellant does not address the
Examiner’s citations.
“The second step of the Alice test is satisfied when the claim
limitations ‘involve more than performance of []well-understood, routine,
[and] conventional activities previously known to the industry.’”
Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (quoting
Content Extraction, 776 F.3d at 1347–48 and Alice, 573 U.S. at 225).
“Whether something is well-understood, routine, and conventional to a
skilled artisan at the time of the patent is a factual determination.”
Berkheimer, 881 F.3d at 1369; see 2019 Revised Guidance, 84 Fed. Reg. 56.
Accordingly, we find the Examiner has supported the finding that that
the additional elements are well-known, routine, and conventional, and we
agree with the Examiner (Final Act. 5–6) that the additional elements
(supra) are well-known, routine, and conventional. The Examiner has
provided support from at least category 1 (below) of the four categories of
information required by the USPTO’s guidance in its Berkheimer Memo:
1. A citation to an express statement in the specification or to
a statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s) . . . .
2. A citation to one or more of the court decisions discussed
in MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
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3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s) . . . .
4. A statement that the examiner is taking official notice of
the well-understood, routine, conventional nature of the
additional element(s) . . . .
Berkheimer Memo at 3–4.
For at least the reasons above, Appellant has not persuasively shown
the additional elements amount to significantly more than the abstract idea
when considered either individually or as a combination, and we are not
persuaded of Examiner error in the rejection of claim 1 under 35 U.S.C.
§ 101. Thus, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of
independent claim 1, independent claims 9 and 19, and dependent claims 2–
8 and 10–18, which depend from claims 1 and 9, respectively, and which
were not argued separately with specificity.
CONCLUSION
For the reasons discussed above, we determine that claims 1–20 are
directed to an abstract idea and do not demonstrate an inventive concept.
Appellant has not shown that the Examiner erred in rejecting claims 1–20
under 35 U.S.C. § 101.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis 
Affirmed Reversed
1–20 101 Eligibility 1–20
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED