Benjamin Lis et al.

Patent Trials and Appeals Board

Aug 2, 2019

13952866 - (D) (P.T.A.B. Aug. 2, 2019)

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.
13/952,866 07/29/2013 Benjamin Lis TCC-12-1278R 2734
35811 7590 08/02/2019
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
pto.phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BENJAMIN LIS and FRANCOIS LEPART1
____________

Appeal 2018-003218
Application 13/952,866
Technology Center 3600
____________

Before JAMES R. HUGHES, CATHERINE SHIANG, and
JOYCE CRAIG, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final decision rejecting claims 1–5, 8–16, and 19–23. Claims 6,
7, 17, and 18 have been canceled. See Final Act. 1–2; Appeal Br. 1.2 We
have jurisdiction under 35 U.S.C. § 6(b).

1 The Clearing Corporation (“Appellant”) is the applicant as provided in
37 C.F.R. § 1.46 and is identified as the real party in interest as the real party
in interest. Appeal Br. 1.
2 We refer to Appellant’s Specification (“Spec.”) filed July 29, 2013
(claiming benefit of US 61/677,833, filed July 31, 2012); Appeal Brief
(“Appeal Br.”) filed Oct. 2, 2017; and Reply Brief (“Reply Br.”) filed Jan.
30, 2018. We also refer to the Examiner’s Final Office Action (“Final
Act.”) mailed May 4, 2017; and Answer (“Ans.”) mailed Dec. 13, 2017.
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We affirm.
Appellant’s Invention
The invention is “generally related to processing, clearing and
recording firm trades between clearing participants, and more particularly to
computer systems and methods for identifying and clearing firm trades
generated by a price discovery process.” Spec. ¶ 1; see Spec. ¶¶ 3–4; and
Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. An automated computer implemented method for
trade processing, comprising:
activating, by at least one computer, a clearing module
comprising specialized computer-readable instructions that,
when executed, cause the clearing module to generate at least
one firm trade involving one or more clearing participants,
wherein generating the at least one firm trade comprises:
receiving, by the clearing module, one or more
trade submissions from the one or more clearing participants
via one or more participant computing devices;
comparing, by the clearing module, the received
one or more trade submissions from among the one or more
clearing participants to create one or more hypothetical trades,
said hypothetical trades being non-clearable trades; and
converting, by the clearing module, the one or
more hypothetical trades into the at least one firm trade to be
enriched;
automatically transmitting, by a trading link module, a
data request to the one or more clearing participants, responsive
to the clearing module generating the at least one firm trade;
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receiving, by the trading link module, participant specific
data from the one or more clearing participants responsive to
the transmitted data request;
responsive to receiving the participant specific data,
automatically transmitting, by the trading link module, the
participant specific data to the clearing module;
converting, by the clearing module, the at least one firm
trade to at least one enriched firm trade using the received
participant specific data, said at least one enriched firm trade
being clearable;
automatically processing, by the clearing module, the at
least one enriched firm trade as at least one cleared trade, said
processing further comprising clearing, by the clearing module,
the at least one enriched firm trade;
automatically generating, by one of the clearing module
and a clearing services API embodied in the at least one
computer, enriching data using default values if the participant
specific data is not received from the one or more clearing
participants within a predetermined time period; and
submitting, by the clearing module, the processed at least
one enriched firm trade to a trade reporting repository.
Appeal Br. 23 (Claim App.).
Rejections on Appeal3, 4
1. The Examiner rejects claims 1–5, 8–16, and 19–23 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. See
Final Act. 10–24.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103, e.g., to rename § 103’s
subsections. Because the instant application has an effective filing date
earlier than the AIA’s effective date, this decision refers to the pre AIA
versions of § 103.
4 The Examiner renews the rejection of claims 1–5, 8–16, and 19–23 under
35 U.S.C. § 112, first paragraph (see Ans. 2–5), then withdraws the rejection
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2. The Examiner rejects claims 1–4, 8, and 10 under 35 U.S.C.
§ 103(a) as being unpatentable over DePetris et al. (US 2010/0005030 A1;
published Jan. 7, 2010) (“DePetris”), King et al. (US 2006/0041605 A1;
published Feb. 23, 2006) (“King”), and Bice et al. (US 2012/0323947 A1;
published Dec. 20, 2012 (filed June 14, 2011)) (“Bice”). See Final Act.
37–45.
3. The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over DePetris, King, Bice, and Financial Stability Board
(“FSB”), Implementing OTC Derivatives Market Reforms, pp. 13–14 (Oct.
20, 2010) (“FSB”). See Final Act. 48–49.
4. The Examiner rejects claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over DePetris, King, Bice, and Callahan (US 2012/0078775
A1; published Mar. 29, 2012). See Final Act. 49–50.
5. The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as
being unpatentable over DePetris, King, Bice, and International Swaps and
Derivatives Association (“ISDA”), Comments on Proposed rule: Trade
Acknowledgment and Verification of Security-Based Swap Transactions, p. 7
(Feb. 22, 2011) (“ISDA”). See Final Act. 50–51.

of claims 1–5 and 8–11 (see Ans. 5–8). The Examiner includes claims 12–
16 and 19–23 in the renewed statement of rejection (see Ans. 3), but does
not otherwise mention claims 12–16 and 19–23 (see Ans. 3–8). It is unclear
whether the Examiner has withdrawn the rejection of claims 12–16 and 19–
23 under 35 U.S.C. § 112, first paragraph. In view of the Examiner’s
reasoning with respect to claims 1–5 and 8–11 (see Ans. 5–8), we deem the
Examiner to have withdrawn the rejection of claims 12–16 and 19–23 under
35 U.S.C. § 112, first paragraph. Even if the Examiner has not withdrawn
the rejection, we reverse the Examiner’s rejection of claims 12–16 and 19–
23 for these same reasons. Accordingly, we do not address the rejection of
claims 1–5, 8–16, and 19–23 under 35 U.S.C. § 112, first paragraph.
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6. The Examiner rejects claims 12–15, 19, 20, and 22 under
35 U.S.C. § 103(a) as being unpatentable over DePetris, King, Bice, and
Steuart (US 2002/0083072 A1; published June 27, 2002). See Final Act.
51–61.
7. The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as
being unpatentable over DePetris, King, Bice, Steuart, and FSB. See Final
Act. 61–62.
8. The Examiner rejects claim 21 under 35 U.S.C. § 103(a) as
being unpatentable over DePetris, King, Bice, Steuart, and Callahan. See
Final Act. 62–63.
9. The Examiner rejects claim 23 under 35 U.S.C. § 103(a) as
being unpatentable over DePetris, King, Bice, Steuart, and ISDA. See Final
Act. 63–65.
ISSUES
Based upon our review of the record, Appellant’s contentions, and the
Examiner’s findings and conclusions, the issues before us follow:
1. Did the Examiner err in finding Appellant’s claims were
directed to patent-ineligible subject matter, without significantly more, under
35 U.S.C. § 101?
2. Did the Examiner err in determining that the combination of
DePetris, King, and Bice would have collectively taught or suggested an
“automated computer implemented method for trade processing” that
comprises:
automatically transmitting, by a trading link
module, a data request to the one or more clearing
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participants, responsive to the clearing module generating
the at least one firm trade;
receiving, by the trading link module, participant
specific data from the one or more clearing participants
responsive to the transmitted data request;
responsive to receiving the participant specific data,
automatically transmitting, by the trading link module, the
participant specific data to the clearing module; [and]
converting, by the clearing module, the at least one
firm trade to at least one enriched firm trade using the
received participant specific data, said at least one
enriched firm trade being clearable
within the meaning of Appellant’s claim 1 and the commensurate limitations
of claims 12?
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)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77–80 (2012), “for 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. Assuming that a claim nominally falls within one of the statutory
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categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts” (id.), e.g., to an abstract
idea. 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, but are not limited to, 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.
(15 How.) 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 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). The
Supreme Court continued by qualifying its findings, indicating that a claim
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“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 claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step of the Alice and Mayo
framework where the elements of the claims are considered “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).
This second step is described as “a search for an ‘inventive concept’—i.e.,
an element or combination of elements that is ‘. . . significantly more than
. . . the [ineligible concept] itself.’” Id. at 217–218 (quoting Mayo, 566 U.S.
at 72–73). “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].’” Alice, 573 U.S. at 221 (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 Court acknowledged in Mayo that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
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abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 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
(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”).
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.5
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. at 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. Id.
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

5 All references to the MPEP are to the Ninth Edition, Revision 08–2017
(rev. Jan. 2018).
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Guidance 84 Fed. Reg. at 56; 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 § 106.05(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.6
See 2019 Revised Guidance, 84 Fed. Reg. 56.
Eligibility Analysis—Revised Guidance Steps 1 and 2A, Prong 1
Turning to the first step of the eligibility analysis, “the first step in the
Alice inquiry . . . asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities . . . or, instead, on a process
that qualifies as an ‘abstract idea’ for which computers are invoked merely
as a tool.” Enfish, 822 F.3d at 1335–36. “The abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting
O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)).
The Examiner rejects claims 1–5 and 8–11 as a group based on claim
8 (see Final Act. 10–24). The Examiner also rejects claims 12–16 and 19–
23 as a group based on claim 12 (see Final Act. 24–37) using essentially the
same reasoning. Appellant argues the claims together as a group and does
not separately argue claims 1–5, 8–16, and 19–23 (see Appeal Br. 7–19).

6 Items (3) and (4) are collectively referred to as “Step 2B” hereinafter and
in the 2019 Revised Guidance.
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We select independent claim 1 as representative of Appellant’s arguments
with respect to claims 1–5, 8–16, and 19–23. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner concludes claim 1 is directed to patent-ineligible
subject matter because claim 1 “is directed toward generating a firm trade
between clearing participants” by “transmit[ting] a firm trade enrichment
request to the clearing participants, and receive enriched firm data in
response” “to process the firm trade as a cleared trade using the enriched
firm data” (Final Act. 12 (quotations and emphasis omitted)), which is a
fundamental economic practice similar to several cases. See Final Act. 10–
13. The Examiner also concludes that claim 1 includes additional
elements—the computer, the clearing module, the trading link module, and
the clearing services API embodied in the computer—that are “recited at a
high level of generality” and “perform basic computer functions,” which are
generic established and well understood computer functions.” Final Act.
20–21. See Final Act 10–24; Ans. 8–25.
Appellant contends that the Examiner erred in rejecting the claims as
being directed to patent ineligible subject matter. See Appeal Br. 7–19;
Reply Br. 2–13. Specifically, Appellant contends, inter alia, with respect to
the first step of the Alice analysis, that the Examiner did not present a prima
facie rejection under the prevailing guidance and the Examiner improperly
over-simplified the claim. See Appeal Br. 15–18. Appellant further
contends that claim 1 recites an improvement to technology. See Appeal Br.
9–15; Reply Br. 2–13.
For the reasons discussed below, we conclude Appellant’s claim 1
recites abstract ideas, these abstract ideas are not integrated into a practical
application, nor do they include an inventive concept. Here, in rejecting the
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claims (in particular claim 1) under 35 U.S.C. § 101, the Examiner analyzed
the claims using the Mayo/Alice two-step framework, consistent with the
guidance set forth in the USPTO’s “2014 Interim Guidance on Patent
Subject Matter Eligibility,” 79 Fed. Reg. 74618 (Dec. 16, 2014), in effect at
the time the rejection was made, i.e., on May 4, 2017. 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. 23 (Claim App.)). Claim 1 recites “[a]n
automated computer implemented method for trade processing, comprising:
activating, by at least one computer, a clearing module comprising
specialized computer-readable instructions that . . . cause the clearing
module to generate at least one firm trade involving one or more clearing
participants.” In other words, a method (process) for processing of trades
(of financial instruments) utilizing a computer including the step of the
computer activating a clearing module—a processor executing instructions
(see Spec. ¶ 28)—which causes the clearing module to generate a trade (at
least one firm trade) involving (one of more) clearing participants.
Hereinafter refer to this limitation as “Step A.”
The method further recites that “generating the at least one firm trade”
(the firm trade generation, Step A) “comprises: receiving, by the clearing
module, one or more trade submissions from the one or more clearing
participants via one or more participant computing devices.” That is, the
process of generating a firm trade further includes the step of receiving (one
or more) trade submissions from the (one or more) clearing participants
(entities authorized to clear trades) by the clearing module via (one or more)
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participant computing devices. Hereinafter refer to this limitation as “Step
A1.” The method also recites that Step A further comprises “comparing, by
the clearing module, the received one or more trade submissions from
among the one or more clearing participants to create one or more
hypothetical trades, said hypothetical trades being non-clearable trades.” To
wit, the process of generating a firm trade further includes the step of the
clearing module comparing (the clearing module executing specialized
computer-readable instructions causing the clearing module to compare) the
received trade submissions from the clearing participants to create one or
more hypothetical, non-clearable trades. Hypothetical trades are utilized to
determine a price for the trade (financial instrument – see Spec ¶ 9).
Hereinafter refer to this limitation as “Step A2.” Additionally, the method
also recites that Step A comprises “converting, by the clearing module, the
one or more hypothetical trades into the at least one firm trade to be
enriched.” That is, the process of generating a firm trade further includes the
step of the clearing module converting the hypothetical, non-clearable trades
into a (an at least one) firm trade to be enriched, i.e., converting hypothetical
trades into trades to be enriched (a term of art— “Trade enrichment is the
process of applying relevant information to the trade that is necessary to
settle the trade correctly.” Ans. 9.). Hereinafter refer to this limitation as
“Step A3.”
The method of claim 1 also recites “automatically transmitting, by a
trading link module, a data request to the one or more clearing participants,
responsive to the clearing module generating the at least one firm trade.” In
other words, when the firm trade is generated, automatically sending
(transmitting) a request for data to a clearing participant by a trading link
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module—a processor executing instructions (see Spec. ¶ 28). Hereinafter
refer to this limitation as “Step B.” The method additionally recites
“receiving, by the trading link module, participant specific data from the one
or more clearing participants responsive to the transmitted data request”; i.e.,
the trading link module receiving participant specific data from the clearing
participant. Hereinafter refer to this limitation as “Step C.”
The method further recites “responsive to receiving the participant
specific data, automatically transmitting, by the trading link module, the
participant specific data to the clearing module”; i.e., automatically
transmitting from the trading link module to the clearing module, the
received participant specific data. Hereinafter refer to this limitation as
“Step D.” Additionally, the method recites “converting, by the clearing
module, the at least one firm trade to at least one enriched firm trade using
the received participant specific data, said at least one enriched firm trade
being clearable.” That is, the process also includes the step of enriching the
firm trade (converting the at least one firm trade into at least one enriched
firm trade) by the clearing module using the received participant specific
data, such that the enriched firm trade is clearable (becomes a clearable
trade). Hereinafter refer to this limitation as “Step E.”
The method of claim 1 also recites “automatically processing, by the
clearing module, the at least one enriched firm trade as at least one cleared
trade, said processing further comprising clearing, by the clearing module,
the at least one enriched firm trade”; i.e., automatically processing and
clearing (executing) the enriched trade as a cleared trade by the clearing
module. Hereinafter refer to this limitation as “Step F.” Alternately, the
method of claim 1 recites “automatically generating, by one of the clearing
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module and a clearing services API embodied in the at least one computer,
enriching data using default values if the participant specific data is not
received from the one or more clearing participants within a predetermined
time period.” In other words, the process includes the alternate step of the
clearing module and a clearing services API (software operating within the
computer) enriching data (as in Step E, above) using default values if the
participant specific data is not received from the one or more clearing
participants within a predetermined time period. Hereinafter refer to this
limitation as “Step G.”
Finally, the method of claim 1 recites “submitting, by the clearing
module, the processed at least one enriched firm trade to a trade reporting
repository”; i.e., submitting the enriched, cleared (executed) trade to a
reporting repository. Hereinafter refer to this limitation as “Step H.”
In summary, claim 1 recites a process for processing financial
instrument trades utilizing a computer by comparing trade submissions,
creating hypothetical trades, converting the hypothetical trades into actual
firm trades, adding information to (enriching) the firm trade, clearing the
enriched firm trade, and submitting the cleared trade to a reporting
repository. Hereinafter, we refer to this process as the process of enriching,
processing, clearing and recording firm trades (see Spec. ¶¶ 1, 3) or simply
the “firm trade process.”
We find that claim 1 recites a “computer implemented method for
trade processing” (supra)—the firm trade process. A process is a statutory
category of invention (subject matter) (USPTO’s Step 1). Utilizing our
interpretation of claim 1 (supra), we next analyze whether the claim is
directed to an abstract idea (USPTO’s Step 2A).
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Here, Appellant’s claims generally, and independent claim 1 in
particular (as summarized, supra), recite a process for enriching, processing,
clearing and recording trades (of financial instruments). This is consistent
with how Appellant describes the claimed invention. See Appeal Br. 2
(“Claim 1 is generally directed towards an automated computer implemented
method for trade processing”); Spec. ¶ 1 (the invention “generally related to
processing, clearing and recording firm trades”); see also Spec. ¶ 3.
Performing trade processing, including requesting and collecting data
to supplement (enrich) trade participant information, as well as clearing and
recording trades—the firm trade process—recites analyzing, processing, and
manipulating data related to performing financial transactions—i.e.,
fundamental business practices that are not patent eligible. See, 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.”); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (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.”); 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
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intangible entities” and “constitute[] a fundamental economic practice long
prevalent in our system of commerce.”).
Appellant’s contentions (supra) focus on the purported technological
improvements or advances provided by the recited firm trade process.
Claim 1, however, recites no substantive limitations on how the various
steps or processes are accomplished. For example, the method of claim 1
does not describe how the clearing module (a processor executing
instructions (see Spec ¶ 9)) receives, compares or converts trade data (see
Steps A, A1, A2, and A3 (supra)). Nor does claim 1 describe how the trade
link module automatically transmits, receives and transfers (automatically
transmits) the various trade-related data (see Steps B, C, and D (supra)).
Further, claim 1 does not specify how the clearing module converts and
processes firm trades, or automatically generates enriching data (to perform
the conversion) (see Steps E, F, and G (supra)). The limitations are entirely
functional in nature. The claim does not delineate any specific technological
improvements. The processes involving comparing, processing, and
converting trades (financial transactions), and related exchanges of
information (sending (transmitting) and receiving trade-related information)
are part and parcel of processing financial transactions. See Spec. ¶¶ 2, 3.
Nowhere does Appellant point to specific claim limitations that distinguish
over this abstract fundamental economic practice.
Additionally, “[a]s many cases make clear, even if a process of
collecting and analyzing information is limited to particular content or a
particular source, that limitation does not make the collection and analysis
other than abstract.” SAP America, Inc. v. Investpic, LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018) (quotations omitted); see also, Intellectual Ventures I
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LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017)
(identifying the abstract idea of collecting, displaying, and manipulating
data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) (characterizing collecting information, analyzing information by steps
people go through in their minds, or by mathematical algorithms, and
presenting the results of collecting and analyzing information, without more,
as matters within the realm of abstract ideas); Content Extraction &
Transmission LLC v. Wells Fargo Bank, National Association, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (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 claim 1 recites a judicial exception (USPTO’s Step 2A,
Prong 1; see 2019 Revised Guidance). Specifically, claim 1 recites a
computer implemented firm trade process as discussed supra. The firm
trade process consists of information exchange (acquisition (collection) and
transmission), as well as information analysis and manipulation (comparing,
processing, and converting trades) that together recite fundamental economic
practices. Included in the groupings of abstract ideas recognized in the 2019
Revised Guidance are “[c]ertain methods of organizing human activity,”
which include “fundamental economic . . . practices.” 2019 Revised
Guidance, 84 Fed. Reg. 52.
Eligibility Analysis—Revised Guidance Step 2A, Prong 2
Appellant’s claim 1 also recites additional elements beyond the
abstract firm trade process (the judicial exception) (supra). These elements
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include, the “at least one computer,” the “clearing module,” the “trading link
module,” and the “clearing services API embodied in the . . . computer.”
Claim 1 (Appeal Br. 23 (Claim App.)). We evaluate these additional
elements to determine whether the additional elements integrate firm trade
process (the judicial exception) into a practical application of the exception
(USPTO’s Step 2A, Prong 2; see 2019 Revised Guidance).
Appellant contends claim 1 recites, inter alia, an improvement to
technology (see Appeal Br. 11–15), “solves a particular technical problem in
a specific technical field” (Appeal Br. 10), and transforms data (see Appeal
Br. 11). See Appeal Br. 10–18; Reply Br. 3–13. In other words, Appellant
contends the Specification and claims describe a technological improvement
that amounts to more than simply utilizing a computer as a tool to
accomplish the firm trade 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 disagree. Appellant’s additional elements
(or the combination of the additional elements) do not apply or use the firm
trade 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 claims recite computers and
modules (a processor executing instructions) that are utilized as tools to
carry out the firm trade process (the abstract idea). Utilizing a computer as a
tool to perform the 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
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implement an abstract idea on a computer that addition cannot impart patent
eligibility” (quotations and internal citations omitted)).
Appellant’s claims can be distinguished from patent-eligible claims
such as those in McRO, Enfish, BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) that are directed to
“a specific means or method that improves the relevant technology” (McRO,
837 F.3d at 1314), or “a specific improvement to the way computers
operate” (Enfish, 822 F.3d at 1336), solving a technology-based problem
(BASCOM, 827 F.3d at 1349–52), or a method “rooted in computer
technology in order to overcome a problem specifically 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 sufficiently and persuasively explain how
the instant claims 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. 17–19.
Moreover, even if Appellant’s claimed process includes an improved
algorithm for comparing, coverting, or enriching trades, claim 1 does not
specify any improvement in how a computer or modules performs the
underlying mathematical analysis necessary to perform the algorithm. In
other words, only the abstract ideas in claim 1 are potentially new (although
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we make no determination as to novelty or obviousness), not the way a
computer or module operates.
To the extent Appellant contends the clearing module submitting the
processed enriched firm trade to a trade reporting repository demonstrates
significant non-abstract subject matter, such activity is merely extra-solution
activity. See MPEP § 2106.05(g).
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) (emphasis omitted) (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. at 55, n.30. Thus, we conclude the claims are directed to an
abstract idea that is not integrated into a practical application.
Step 2B Analysis—“Significantly More”
Having concluded Appellant’s claims are directed to an abstract idea
under the 2019 Revised Guidance Step 2A analysis, we next address
whether the claims add significantly more to the alleged abstract idea. As
directed by our reviewing court, we search for an “‘inventive concept’
sufficient to ‘transform the nature of the claim into a patent-eligible
application.’” McRO, 837 F.3d at 1312 (quoting Alice, 573 U.S. at 217).
Under the second step of the Mayo/Alice framework, we “look with more
specificity at what the claim elements add, in order to determine ‘whether
they identify an ‘inventive concept’ in the application of the ineligible
subject matter’ to which the claim is directed.” Affinity Labs of Texas, LLC
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v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting Elec.
Power Grp., 830 F.3d at 1353). An “inventive concept” requires more than
“well-understood, routine, conventional activity already engaged in” by the
relevant industry. Rapid Litigation Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79–80); see Content
Extraction, 776 F.3d at 1347–48. The “inventive concept” “must be
significantly more than the abstract idea itself, and cannot simply be an
instruction to implement or apply the abstract idea on a computer.”
BASCOM, 827 F.3d at 1349 (citation omitted). But a “non-conventional and
non-generic arrangement of known, conventional pieces” may provide an
“inventive concept” satisfying Mayo/Alice Step 2. Id. at 1350.
Here, the Examiner rejects claim 1 (and the other pending claims) as
being directed to patent-ineligible subject (supra), reiterates the limitations
of the claim 1 (see Final Act. 13–20), and explains in detail why the
additional elements (supra) represent generic computers performing generic
computer functions that are not sufficient to amount to significantly more
than the abstract idea (judicial exception) (see Final Act. 20–24). See Final
Act. 13–24; Ans. 8–12, 19–25.
Appellant, on the other hand, contends “the claims specifically and
explicitly recite limitations that are a clear departure from conventional
features and functions in this art . . . the claims necessarily include
significantly more, and as such, are patent eligible.” Appeal Br. 9; see
Appeal Br. 7–10; Reply Br. 2–13.
Appellant fails to persuade us of error in the Examiner’s rejection
with respect to the second Alice step. We agree with the Examiner that
Appellant’s claim 1 (and the other pending claims) does not evince an
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“inventive concept” that is significantly more than the abstract idea itself. In
particular, Appellant fails to explain persuasively how the additional
elements (above) 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—specifically the computer and modules—to perform the
firm trade process (the abstract idea).
Appellant’s Specification describes the additional elements as
conventional (generic) computers performing traditional computer functions.
For Example, the Specification describes the computer as “any type of a
computing device” and that the computer “may comprise one or more
processors configured to execute instructions stored on a non-transitory
memory configured to provide any type of computing services.” Spec. ¶ 13.
The Specification also explain that “the modules . . . may be embodied on a
single computing device that comprises one or more processors configured
to execute instruction stored on a non-transitory memory.” Spec. ¶ 28; see
Spec. ¶¶ 29–32.
Accordingly, Appellant’s Specification itself describes the additional
elements as being well-understood, routine, and conventional. Such
conventional computer processes operating on conventional computer
hardware “do not alone transform an otherwise abstract idea into patent-
eligible subject matter.” FairWarning, 839 F.3d at 1096 (citing DDR
Holdings, 773 F.3d at 1256).
For at least the reasons above, 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 § 101 of independent claim 1, independent claim
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12, and dependent claims 2–5, 8–11, 13–16, and 19–23, which depend from
claims 1 and 12 (respectively) and which were not separately argued with
specificity.
Obviousness Rejections of Claims 1–5, 8–16, and 19–23
Appellant argues independent claims 1 and 12, and dependent claims
2–5, 8–11, 13–16, and 19–23, together as a group with respect to the
35 U.S.C. § 103 rejection. See Appeal Br. 19–22. We select independent
claim 1 as representative of Appellant’s arguments with respect to claims 1–
5, 8–16, and 19–23. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner rejects independent claim 1 as being obvious in view of
DePetris, King, and Bice. See Final Act. 37–45; Ans. 25–37. The Examiner
finds that DePetris and King teach the features of Appellant’s claim 1 with
the exception of the participant specific data used to enrich (convert) the
firm trade. See Final Act. 44–45; see also Final Act. 41–44; Ans. 25–37.
The Examiner relies on Bice to teach the participant specific data (enriching
information). See Final Act. 44–45 (citing Bice ¶¶ 19, 30, 33–36, and 39–
42); see also Ans. 25–37.
Appellant contends that the combination of DePetris, King, and Bice
does not teach the disputed features of claim 1. See Appeal Br. 19–22;
Reply Br. 13–15. Specifically, Appellant contends, inter alia, that DePetris
provides no “teaching, disclosure or suggestion of the claimed ‘transmitting’
and ‘receiving’ of enrichment data requests and data, as recited in Claim 1”
(Appeal Br. 20; see Appeal Br. 19–21; Reply Br. 13–14) and Bice does not
teach enrichment data specific to trade participants, but instead describes
“querying external data sources for information . . . to ‘enrich’ company
data” (Appeal Br. 21; see Appeal Br. 21–22; Reply Br. 13–14).
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We agree with Appellant that the Examiner-cited portions of DePetris
and Bice do not teach the participant specific enrichment data of Appellant’s
claim 1—much less receiving and transmitting such data, or converting
trades using such data. See Appeal Br. 19–21; Reply Br. 13–14. Bice
merely teaches querying external data sources to enrich private company
data. See Bice ¶¶ 30, 36. This data has nothing to do with information
concerning participants in a financial transaction that is utilized to process
the financial transaction.
Consequently, we are constrained by the record before us and
Appellant’s contentions persuade us the Examiner erred in concluding that
DePetris, King, and Bice render obvious Appellant’s claim 1. Accordingly,
we do not sustain the Examiner’s rejection of representative claim 1,
independent claim 12 that includes limitations of commensurate scope, and
dependent claims 2–5, 8–11, 13–16, and 19–23 that depend from claims 1
and 12, respectively.
CONCLUSIONS
Appellant has not shown that the Examiner erred in rejecting claims
1–5, 8–16, and 19–23 under 35 U.S.C. § 101.
Appellant has shown that the Examiner erred in rejecting claims 1–5,
8–16, and 19–23 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 1–5, 8–16, and 19–23.

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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); 37 C.F.R. § 41.50(f).

AFFIRMED