BondDesk Group LLC

Patent Trials and Appeals Board

Sep 17, 2020

2020001704 (P.T.A.B. Sep. 17, 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.
15/466,441 03/22/2017 Jan MAYLE 65024-20002.01 1025
25227 7590 09/17/2020
MORRISON & FOERSTER LLP
1650 TYSONS BOULEVARD
SUITE 300
MCLEAN, VA 22102
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/17/2020 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):
EOfficeVA@mofo.com
PatentDocket@mofo.com
pair_mofo@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAN MAYLE, KEN HOFFMAN,
STEVEN JAY SHAW, and P. HOWARD EDELSTEIN
____________

Appeal 2020-001704
Application 15/466,441
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13, 16, 26, and 27. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as BondDesk
Group LLC. (Appeal Br. 2).
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Application 15/466,441

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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a system for providing
price evaluation on fixed income securities in odd-lot trades (Spec., para. 2).
Claim 1, reproduced below with the italics added, is representative of the
subject matter on appeal.
1. A system for graphically providing odd lot pricing
evaluation of a fixed-income security, the system comprising
one or more processors and a memory storing one or more
programs that, when executed by the one or more processors,
cause the one or more processors to perform instructions
comprising:
receiving, from a user device, a quote inputted by a user
into a user interface displayed on the user device, wherein the
quote is associated with an odd lot transaction or a potential
transaction of a fixed-income security and the quote comprises
a quoted price and a quoted quantity;
in respond to receiving the quote, searching a database
of Odd Lot Pricing (OLP) ranges to select an OLP range
associated with the quoted quantity;
comparing the quoted price against the OLP range to
determine a result indicating whether to verify the quote;
in response to comparing the quoted price against the
OLP range, transmitting the result to the user device; and
causing the user device to:
display, in the user interface, an icon indicating whether
the quote is verified with respect to the OLP range, and
upon receiving a selection from the user of the icon,
display a graphical representation showing a range of prices,
wherein the graphical representation includes a first graphical
indicator representing the OLP range and a second graphical
indicator representing the quoted price in association with the
first graphical indicator.

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THE REJECTION
The following rejection is before us for review:
Claims 1–13, 16, 26, and 27 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Appeal Br. 4–7; Reply Br. 2–5).
The Appellant also argues that the claim is integrated into a practical
application (Appeal Br. 7–8; Reply Br. 5–6). The Appellant argues further
that the claim is “significantly more” than the alleged abstract idea (Appeal
Br. 8–11).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2–8; Ans. 3–19).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See 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
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 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
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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. (internal citation omitted) (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.”).
In January 2019, the published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
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, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to
monopolize the judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(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.
See Guidance.
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 ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The Specification at paragraph 2 states that the invention generally
relates to providing price evaluation on fixed-income securities in the odd lot
market. Here, the Examiner has determined that the claim recites
“comparing the quoted price against the OLP [(odd lot pricing)] range to
determine a result and verify a quote, and display a graphical representation
showing a range of prices” and sets forth an abstract concept (Ans. 8). The
Examiner at page 9 of the Answer cites to the claim as falling within a
certain methods of organizing human activities and fundamental economic
principles. We substantially agree with the Examiner. We determine that
the claim sets forth the subject matter in italics above which describes the
concept of: [1] “receiving . . . a quote inputted by a user . . . wherein the
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quote is associated with an odd lot transaction or a potential transaction of a
fixed-income security”; [2] “in respond to receiving the quote, searching a
database of Odd Lot Pricing (OLP) ranges to select an OLP range associated
with the quoted quantity”; [3] “comparing the quoted price against the OLP
range to determine a result indicating whether to verify the quote”; [4]
“transmitting the result to the user device”; [5] “display . . . an icon
indicating whether the quote is verified with respect to the OLP range”; and
[6] “upon receiving a selection from the user of the icon, display a graphical
representation showing a range of prices,” which sets forth receiving a quote
for an odd lot transaction of a security, determining if the quote is in an odd
lot range for verification, and then providing the verification to the user
which is a certain method of organizing human activities and a fundamental
economic practice and an abstract concept, i.e., a judicial exception. See
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
(collecting information, analyzing it, and displaying results from certain
results of the collection and analysis was held to be an abstract idea). A
method, like the claimed method, “a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible.” See Digitech Image Techs, LLC v. Elecs.
for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). In OIP
Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015), it was held that offer-based price optimization was directed to an
abstract idea. In Chicago Board of Options Exchange v. International
Securities Exchange, 640 F. App’x 986 (Mem) (Fed. Cir. 2016), the Federal
Circuit affirmed the determination in three cases (CBM2013-00049,
CBM2013-00050, CBM2013-00051) involving trading technologies that
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were held to not meet the requirements of 35 U.S.C. § 101. See also, 84
Fed. Reg. at 52.
The Appellant at page 4 of the Appeal Brief has also cited to Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), to show that the
claim is not abstract and that the claims in that case were not similar in scope
to those here and were in contrast directed to a self-referential data table.
The Appellant in the Appeal Brief at page 4 also cites to Trading Techs.
Int'l. v. CQG, Inc., No. 2016-1616 (Fed. Cir. Jan. 18, 2017) to show the
claim is not abstract but the claim in that case “require[d] a specific,
structured graphical user interface paired with a prescribed functionality
directly related to the graphical user interface’s structure.” In contrast, the
claim at issue here only uses a conventional computer icon and graphical
representation method on the user device. In Trading Techs. Int’l v. IBG,
LLC, 921 F.3d 1084, 1089 (Fed. Cir. 2019), it was held that claims directed
to a financial trading method used by a computer were not patent eligible.
We next determine whether the claim recites additional elements in
the claim to integrate the judicial exception into a practical application. See
Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the
MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c)
and (e)–(h).
Here, the claims do not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claims imposes a meaningful limit on the judicial exception, such that the
claims are more than a drafting effort to monopolize the judicial exception.
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For example, in the claim, the additional elements beyond the abstract
idea are the recited processors, memory, and user device. The claimed
limitations of “receiving,” “searching,” “comparing,” “transmitting,” and
“display[ing]” as recited in the claim do not purport to improve the
functioning of the computer itself, do not improve the technology or
technical field, and do not require a particular machine. Rather, they are
performed using generic computer components. Further, the claim as a
whole fails to effect any particular transformation of an article to a different
state. The recited steps in the claim fail to provide meaningful limitations to
limit the judicial exception. In this case, the claim merely uses the claimed
computer elements as a tool to perform the abstract idea.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
Considering the claim both individually and as an ordered
combination, the claim fails to add subject matter beyond the judicial
exception that is not well-understood, routine, and conventional in the field.
Rather, the claim uses well-understood, routine, and conventional activities
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previously known in the art and they are recited at a high level of generality.
The Specification at paragraphs 89 and 90 for example describes using
conventional computer components such as hard disks, computers, and
networks in a conventional manner. The claim specifically includes
recitations for computers to implement the method but these computer
components are all used in a manner that is well-understood, routine, and
conventional in the field. Here, the claimed generic computer components
which are used to implement the claimed method are well understood,
routine, or conventional in the field. The Appellant at page 9 of the Appeal
Brief has also cited to McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299 (Fed. Cir. 2016), but the claims in that case are distinguished from
this case in being directed to rules for lip sync and facial expression
animation. Here, the claim has not been shown to be “significantly more”
than the abstract idea.
Concerning Appellant’s specific argument at page 10 of the Appeal
Brief that “[b]y providing verification of the quote in the form of the icon
and the first and second graphical indicators, claims 1 and 27 are directed to
non-conventional functionality not present in prior art pricing tools and
trading workstations”, the Appellant does not identify, any analogous
modification to the routine and conventional functioning of computer
technology. At best, the claims appear to use generic computer components,
(a user interface displaying icons and graphic indicators) to perform an
otherwise abstract concept.

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For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same arguments drawn to the remaining claims
which are drawn to similar subject matter and the rejection of these claims is
sustained as well.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–13, 16, 26, and 27 under 35 U.S.C. § 101.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–13, 16,
26, 27
101 Eligibility 1–13, 16,
26, 27

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED