Clifford J. Weber et al.

Patent Trials and Appeals Board

Jan 14, 2020

14822198 - (D) (P.T.A.B. Jan. 14, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/822,198 08/10/2015 Clifford J. Weber MKT-14-1087CCC-CON 6576
35811 7590 01/14/2020
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
01/14/2020 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):
pto.phil@us.dlapiper.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLIFFORD J. WEBER and GARY L. GASTINEAU
Appeal 2018-005812
Application 14/822,198
Technology Center 3600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 NYSE MKT LLC,
appeals from the Examiner’s decision rejecting claims 1–11 and 13–33,
which are all claims pending in the application. Appellant has canceled
claim 12. See Appeal Br. 22 (Claims App.). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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 NYSE
MKT LLC. Appeal Br. 1.
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STATEMENT OF THE CASE2
The claims are directed to an exchange trading of mutual funds or
other portfolio basket products. See Spec. (Title). In particular, Appellant’s
disclosed embodiments and claimed invention “relate[] to systems and
methods to allow public intra-day trading of financial instruments such as
shares of actively managed funds on secondary markets without knowledge
of the specific assets underlying the traded instruments.” Spec. ¶ 2.
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested prior-art limitations):
Exemplary Claim
1. A computer-implemented method of intra-day
transacting in constituents of a first data set without revealing
the constituents, the method comprising:
in at least one computer of a trusted system comprising a
physical hardware and operating system configuration
comprising domain configuration and trust relationships that
control access to a decrypted portfolio file representing
positions taken in an actively managed fund, the at least one
computer having non-transitory memory storing computer
software and at least one processor executing the computer
software, thereby causing the at least one computer to perform
the steps of:
receiving, from a fund computer, the first
data set in an encrypted format, the first data set
defining the actively managed fund having

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 13, 2017); Reply Brief (“Reply Br.,” filed May 21, 2018); Examiner’s
Answer (“Ans.,” mailed Mar. 27, 2018); Non-Final Office Action (“Non-
Final Act.,” mailed June 16, 2017); and the original Specification (“Spec.,”
filed Aug. 10, 2015).
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constituents, the constituents comprising fund
assets;
decrypting the first data set based on the
domain configuration and trust relationships;
generating a second data set defining a
basket of instruments that tracks one or more
characteristics of the decrypted first data set, the
second data set being non-predictive of the first
data set;
initiating, responsive to input, one or more
transactions involving the basket of instruments
defined by the second data set such that neither the
basket of instruments nor the one or more
transactions reveals at least one of the group
consisting of the fund assets and changes in the
fund assets defined by the first data set, said one or
more transactions resulting in a modification of at
least one of the one or more characteristics of the
first data set; and
initiating, responsive to further input, one or
more intra-day transactions, the one or more intra-
day transactions involving the constituents in
accordance with the modified characteristics of the
first data set.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Kiron et al. (“Kiron”) US 2002/0143676 A1 Oct. 3, 2002
Payne US 2003/0144947 A1 July 31, 2003
Shah US 2005/0137969 A1 June 23, 2005
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Rejections on Appeal3
R1. Claims 1, 11, and 23 stand rejected under 35 U.S.C. § 112, first
paragraph, as lacking written description support. Non-Final Act. 3.4
R2. Claims 1, 11, and 23 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Non-Final Act. 4.
R3. Claims 1–11 and 13–33 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or abstract idea) without significantly more. Non-Final Act. 4.
R4. Claims 1–11 and 13–28 stand rejected under the judicially
created doctrine of obviousness-type double patenting (OTDP) as being
unpatentable over claims 1–19 of U.S. Patent 8,024,258 and claims 1–18 of
U.S. Patent 8,341,070. Non-Final Act. 11.5
R5. Claims 1–11 and 13–33 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Payne, Kiron, and Shaw.
Ans. 4.6

3 The Examiner also objects to the Specification as lacking support for the
recitations of “domain configuration,” “trust relationships,”, and “non-
predictive” in claims 1, 11, and 23. We note that an objection to the
Specification is a petitionable matter, and is not properly before us on
Appeal.
4 The Examiner did not reject claims depending from independent claims 1,
11, and 23 under either of Rejections R1 or R2 even though these claims
appear to inherit the same deficiency as their respective base claims.
5 The Examiner explicitly rejects claims 1–28 under OTDP Rejection R4.
Non-Final Act. 11. However, claim 12 has been canceled and is not before
us on Appeal.
6 Rejection R5 is a new ground of rejection levied by the Examiner in the
Answer. Ans. 4–9.
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CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 5–19; Reply Br. 1–6)
and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of
written description Rejection R1 of claims 1, 11, and 23 on the basis of
representative claim 1; we decide indefiniteness Rejection R2 of claims 1,
11, and 23 on the basis of representative claim 1; we decide the patent-
ineligible subject matter Rejection R3 of claims 1–11 and 13–33 on the basis
of representative claim 1; and we decide the appeal of obviousness Rejection
R5 of claims 1–11 and 13–33 on the basis of representative claim 1. We
address Rejection R4, not separately argued, infra.7
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellant with respect
to Rejections R3 and R5 of claims 1–11 and 13–33 for the specific reasons
discussed below.

7 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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However, we disagree with Appellant’s arguments with respect to
Rejections R1 and R2 of independent claims 1, 11, and 23 and, unless
otherwise noted, we incorporate by reference herein and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, and (2) the reasons and rebuttals set forth in the
Examiner’s Answer in response to Appellant’s arguments. We highlight and
address specific findings and arguments regarding claim 1 for emphasis as
follows.
1. § 112, ¶ 1, Written Description Rejection R1 of Claims 1, 11, and 23
Issue 1
Appellant argues (Appeal Br. 5–6; Reply Br. 5–6) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 112, first paragraph, as lacking
written description support is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the recitation of “non-predictive”
lacks written description support in the originally filed disclosure?
Principles of Law
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id.
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However, “actual ‘possession’ or reduction to practice outside of the
specification is not enough. Rather, . . . it is the specification itself that must
demonstrate possession.” Ariad, 598 F.3d at 1352; see also PowerOasis,
Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir. 2008)
(explaining that § 112, first paragraph, “requires that the written description
actually or inherently disclose the claim element”). “[I]t is ‘not a question of
whether one skilled in the art might be able to construct the patentee’s device
from the teachings of the disclosure . . . . Rather, it is a question whether the
application necessarily discloses that particular device.’ . . . A description
which renders obvious the invention for which an earlier filing date is sought
is not sufficient.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572
(Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA
1963)).
Analysis
Appellant contends “[t]here is substantial (and more than sufficient)
support for the term ‘non-predictive’ in the specification, at least at Paras.
[0011], [0016]–[0018], [0031]–[0032], [0035], [0038], and [0042] of the
Subject Specification.” Appeal Br. 5 (alterations in original). Appellant
further argues that paragraph 42 “describes that the ‘intra-day value
calculations . . . result in an intra-day proxy, because they may be based on a
portfolio that does not exactly mirror the fund portfolio’” (Appeal Br. 5–6),
and “the specification uses the phrase ‘without revealing,’ which is
acknowledged and echoed by the Examiner throughout the Latest Action.”
Appeal Br. 6. Further, Appellant states:
[O]ne of ordinary skill in the art would understand that use of
the term “non-predictive,” in the context of the rest of the
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specification, as applied to the second data set refers back to the
ability of the claimed invention to perform intra-day
transactions for a first data set without revealing the
constituents of the first data set. Thus, the term “non-
predictive” is fully supported by Appellant’s specification.
Id.
Appellant has not persuaded us the Examiner erred in finding that
“[t]he terms ‘non-predictive’ and ‘without revealing’ are not known in the
art and one skilled in the art would not recognize that they are analogous
terms. The Appellant has offered no evidence of the contrary.” Ans. 10; see
Lockwood, 107 F.3d at 1572 (“[Written Description] is ‘not a question of
whether one skilled in the art might be able to construct the patentee’s device
from the teachings of the disclosure.’”).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s finding that the term “non-predictive”
lacks written description support such that we sustain the Examiner’s written
description Rejection R1 of claims 1, 11, and 23, which all recite the
disputed term.
2. § 112, ¶ 2, Indefiniteness Rejection R2 of Claims 1, 11, and 23
Issue 2
Appellant argues (Appeal Br. 6–7; Reply Br. 5–6) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 112, second paragraph, as being
indefinite is in error. These contentions present us with the following issue:
Did the Examiner err in concluding the recitation of “non-predictive”
is indefinite, when considered in the context of claim 1 in light of the
Specification?
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Principles of Law
“[A] patent is invalid for indefiniteness if its claims, read in light of
the specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of
the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901
(2014). Further, we give pending claims “their broadest reasonable
interpretation consistent with the specification” and “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Analysis
Appellant contends:
[I]t may be helpful to first note the critical difference between
the contents of the first data set (e.g., the actual funds and
constituents defined by the first data set) and the characteristics
of the first data set (e.g., behaviors exhibited by the first data
set. This distinction is made explicitly clear by the actual langue
[sic] of the claims, which explicitly recite that the second data
set is generated to track characteristics of the first data set in a
manner that does not reveal constituents of the first data set. By
tracking the characteristics of the first data set, the second data
set is able to exhibit behaviors of the first data set without
having to reveal the actual constituents or contents of the first
data set. Thus, contrary to the Examiner’s assertion, the claimed
invention does not publish anything that is predictive of the
“actual funds” (e.g., the contents or constituents) of the first
data set.
Appeal Br. 6 (emphasis omitted).
The Examiner responds by noting “[A]ppellant’s use of the term ‘non-
predictive’ requires an extensive explanation by the [A]ppellant.” Ans. 11.
The Examiner further finds:
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[A]ppellant attempts to explain that the term “non-predictive” is
directed toward the content of the data set and not the
characteristics. However, nothing in the claims would lead one
to conclude this and, since there is no support in the
specification for the term “non-predicative” [sic] leading to the
claims limits using this term to be indefinite since it is not
entirely clear what is not being predicted.
Id.
Appellant responds by alleging
[T]he Examiner (at best) does not appear to understand the
concepts in this technical field. Appellant submits that such
terminology and concepts would be readily apparent to the
ordinary skilled person in the art. If the Examiner is unable to
(or unwilling to) understand the claimed invention, then he
cannot properly examine the claims; therefore the Examiner's
entire analysis and rejection are suspect.
Reply Br. 6.
We are not persuaded by Appellant’s argument because attorney
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984).8 For the same reason, we are particularly unpersuaded by
Appellant’s continued argument that “the Appellant submits that the
Examiner’s failure to properly consider the claims renders all of the
Examiner’s objections and rejections (including the § 112, § 101 and § 103)

8 “Argument in the brief does not take the place of evidence in the record.”
In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d
769, 773 (CCPA 1964)).
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incorrect and improper; and all of the rejections/ objection should be
reversed.” Reply Br. 6.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s conclusion that the term “non-
predictive” lacks definiteness such that we sustain the Examiner’s
indefiniteness Rejection R2 of claims 1, 11, and 23, which all recite the
disputed term.
3. § 101 Rejection R3 of Claims 1–11 and 13–33
Issue 3
Appellant argues (Appeal Br. 7–18; Reply Br. 6–15) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.9
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include

9 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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implicit exceptions: “[L]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (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.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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
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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.
B. USPTO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised 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);10 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).11
See Revised Guidance 52–53.

10 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
11 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial
exception.12
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and

12 Items (3) and (4) continue to be collectively referred to as “Step 2B” of
the Supreme Court’s two-step framework, described in Mayo and Alice.
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(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.13
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.

13 In the rare circumstance in which an Examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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The seven identified “practical application” sections of the MPEP,14
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional

14 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.15 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).16 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).17
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified

15 See, e.g., Diehr, 450 U.S. at 187.
16 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
17 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.18
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
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).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s).

18 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s).
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
Analysis
Step 1 – Statutory Category
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is “directed to the abstract
idea(s) of intra-day transacting in constituents of a first data set without
revealing the constituents.” Non-Final Act. 5. The Examiner further
concluded:
[T]he abstract idea of the application which is directed toward
allowing public intraday trading of financial instruments such
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as shares of actively managed funds or exchange-traded notes
on secondary markets without knowledge of the specific assets
underlying the traded instruments and particularly which is
analogous to organizing human activity (activities which can be
performed mentally by a human using a pencil and paper) and
to the fundamental economic practices found to be abstract
ideas by the courts.
Ans. 13 (citations omitted).
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention “relates to systems and methods to allow public intra-day
trading of financial instruments such as shares of actively managed funds on
secondary markets without knowledge of the specific assets underlying the
traded instruments.” Spec. ¶ 2.
Appellant’s Abstract provides the following context for the claimed
invention:
The invention provides systems and methods for intra-
day trading of actively managed exchange traded funds
(AMETFs). The invention provides creation and redemption
structures for AMETF shares that allow arbitrage, intra-day
value estimations for AMETF shares, and hedging portfolios
for hedging risks associated with trading AMETF shares, all
without requiring disclosure of the specific assets underlying
the AMETF.
Spec. 56 (Abstract).
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In TABLE 1 below, we identify in italics the specific claim
limitations in claim 1 that we conclude recite an abstract idea. We
additionally identify in bold the additional (non-abstract) claim limitations
that are generic computer components and techniques, and underline
limitations representing extra or post-solution activity:
TABLE 1
Independent Claim 1 Revised Guidance
A computer-implemented
method of intra-day transacting
in constituents of a first data set
without revealing the
constituents, the method
comprising:
A process (method) is a statutory
subject matter class. See 35 U.S.C.
§ 101.
[L1] in at least one computer
of a trusted system comprising
a physical hardware and
operating system
configuration comprising
domain configuration and trust
relationships that control access
to a decrypted portfolio file
representing positions taken in
an actively managed fund,
the at least one computer
having non-transitory
memory storing computer
software and at least one
processor executing the
computer software, thereby
causing the at least one
computer to perform the steps
of:
A memory, a computer/processor,
“physical hardware,” operating
system, and computer software all
represent generic computer
components.
[L2] receiving, from a fund
computer, the first data set in
Receiving information, i.e., data
gathering, is merely insignificant
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Independent Claim 1 Revised Guidance
an encrypted format, the first
data set defining the actively
managed fund having
constituents, the constituents
comprising fund assets;
extra-solution activity that does not
add significantly more to the abstract
idea to render the claimed invention
patent-eligible. Revised Guidance 55,
n.31; see In re Bilski, 545 F.3d 943,
962 (Fed. Cir. 2008) (en banc), aff’d
on other grounds, 561 U.S. 593
(2010) (“[T]he involvement of the
machine or transformation in the
claimed process must not merely be
insignificant extra-solution activity”).
Providing data in an encrypted format
represents generic computer
functionality and is a well-understood
technique.
[L3] decrypting the first data
set based on the domain
configuration and trust
relationships;
Decrypting data is a generic, well-
understood computer technique,
particularly in this Appeal in which,
similar to RecogniCorp, Appellant
does not allege a particularized
application of encoding and decoding
data. See RecogniCorp, LLC v.
Nintendo Co., Ltd., 855 F.3d 1322,
1328 (Fed. Cir. 2017).
Alternatively, decrypting data
involves a mathematical calculation
and thus is an abstract idea. Revised
Guidance 52 and n.12 citing SAP
America, Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018)
(“holding that claims to a ‘series of
mathematical calculations based on
selected information’ are directed to
abstract ideas”).
[L4] generating a second data
set defining a basket of
Generating data is insignificant post-
solution activity. Revised Guidance
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Independent Claim 1 Revised Guidance
instruments that tracks one or
more characteristics of the
decrypted first data set, the
second data set being non-
predictive of the first data set;
55, n.31; see also MPEP
§ 2106.05(g); and see buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014) (computer receives
and sends information over a
network).
[L5] initiating, responsive to
input, one or more transactions
involving the basket of
instruments defined by the
second data set such that
neither the basket of
instruments nor the one or more
transactions reveals at least one
of the group consisting of the
fund assets and changes in the
fund assets defined by the first
data set, said one or more
transactions resulting in a
modification of at least one of
the one or more characteristics
of the first data set; and
See Step 2A(ii) analysis, infra.
[L6] initiating, responsive to
further input, one or more
intra-day transactions, the one
or more intra-day transactions
involving the constituents in
accordance with the modified
characteristics of the first data
set.
Initiating a transaction is an abstract
idea, i.e., “Certain methods of
organizing human activity . . .
including . . . commercial . . .
interactions . . . in the form of . . .
sales activities”. See Revised
Guidance 52.
Spec. 20 (Claims App.).
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Under the broadest reasonable interpretation standard,19 we conclude
limitations L1 through L6 recite steps that would ordinarily occur when
executing intra-day trading of financial instruments such as shares of
actively managed funds on secondary markets without knowledge of the
specific assets underlying the traded instruments. See Final Act. 12 et seq.
For example, L3, “decrypting the first data set” is an operation that generally
occurs when dealing with secure information, e.g., financial information.
Further, L6, “initiating . . . one or more intra-day transactions,” is abstract,
whether initiated person-to-person, on paper, or using a computer.
We determine that claim 1, overall, recites a certain method of
organizing human activity, i.e., a commercial interaction in the form of sales
activities that may also be performed by pen and paper. This type of
activity, i.e., intra-day trading of financial instruments as recited in
limitations L1 through L6, for example, and aside from any computer-
related aspects, includes longstanding conduct that existed well before the
advent of computers and the Internet, and could be carried out by a human

19 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011).20
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
“method of intra-day transacting in constituents of a first data set without
revealing the constituents” is a judicial exception. We conclude claim 1,
under our Revised Guidance, recites a judicial exception of certain methods
of organizing human activity, i.e., a commercial interaction in the form of
sales activities, and thus is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a judicial exception, as we conclude above, we
proceed to the “practical application” Step 2A(ii) in which we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.

20 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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As to the specific limitations, we find limitation L2, “receiving . . . the
first data set” recites insignificant data gathering. See MPEP § 2106.05(g).
Data gathering, as performed by the steps or function in Appellant’s claims,
is a classic example of insignificant extra-solution activity. See, e.g., In re
Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski v.
Kappos, 561 U.S. 593 (2010).
We also find limitation L4, “generating a second data set,” recites
insignificant post solution activity. The Supreme Court guides that the
“prohibition against patenting abstract ideas ‘cannot be circumvented’ by . . .
adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11
(quoting Diehr, 450 U.S. at 191–92). Limitation L1 merely recites various
conventional computer components. On this record, we are of the view that
Appellant’s claims do not operate the recited generic computer components
in an unconventional manner to achieve an improvement in computer
functionality. See MPEP § 2106.05(a).
In addition to the abstract steps L3 and L6 identified in Step 2A(i),
supra, claim 1 further recites limitation L5, “initiating . . . one or more
transactions involving the basket of instruments defined by the second data
set such that neither the basket of instruments nor the one or more
transactions reveals at least one of the group consisting of the fund assets
and changes in the fund assets defined by the first data set, said one or more
transactions resulting in a modification of at least one of the one or more
characteristics of the first data set.” Claim 1 (emphasis added).
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For the reasons discussed below, we conclude limitation L5 integrates
the abstract idea into a practical application as determined under at least one
of the MPEP sections cited above.21
Appellant argues,
[t]he claims are statutory under §101 (at a minimum) because
the claims recite specific structures that perform specific
functions (e.g., as per a specific set of rules) that, as discussed
below, provide improvements to another technical field, add
specific limitations other than what is conventional in the field,
and improve the functioning of the computer itself.
Appeal Br. 8. Further,
the claimed limitations describe a novel network architecture
with a novel security mechanism for keeping a proprietary data
set secret while at the same time conveying characteristics of
the proprietary data set, such that it incentivizes transactions in
the proprietary data set without having to reveal contents (or
changes to contents) of said proprietary data set.
Id.
Notably, the linkage between the first data set and the second
data sets allows initiation of transactions involving the
(proprietary) first data set without ever knowing the content of
the first data set. As previously explained, this is because the
second data set (e.g., value proxy), by exhibiting characteristics
that track those of the (proprietary) first data set, exhibits
behaviors similar to those of the first data set (e.g., reacts
similarly to market volatility).
Appeal Br. 9.

21 See, e.g., MPEP § 2106.05(a) “Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field,” and
§ 2106.05(e) “Other Meaningful Limitations.”
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Appellant also contends, “[i]t is the incorporation of the Appellant’s
new system and rule sets that keep proprietary data secret while allowing
initiation of transactions involving the proprietary data set in a completely
unconventional manner, and not a mere use of a computer, that provides the
improvement to prior computer systems.” Appeal Br. 12 “It is Appellant’s
differently configured computer system (including the security mechanism
that initiates transactions involving the first data set without revealing the
first data set) that provides the specific improvements in the functioning of
the computer system itself, as discussed above.” Appeal Br. 13.
Appellant’s Specification confirms these representations. For
example,
[t]he invention includes methods of using computer means to
select a second set of securities that substantially tracks the
returns of a first set of securities over the course of a trading
day, wherein the second set of securities serves as a proxy for
the first set of securities, and market participants use the second
set of securities to price or hedge a position taken in the first set
of securities without knowing the composition of the first set of
securities.
Spec. ¶ 11. “The invention includes methods of using computer means to
select a second set of securities that substantially tracks the returns of a first
set of securities over the course of a trading day, wherein the second set of
securities serves as a proxy for the first set of securities, and market
participants use the second set of securities to price or hedge a position taken
in the first set of securities without knowing the composition of the first set
of securities.” Spec. ¶ 31. “The information provided by the invention need
not include specific information about the specific fund holdings or
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information sufficient even to determine approximate fund holdings.” Spec.
¶ 32.
We find Appellant’s argument persuasive that carrying out the step of
limitation L5, i.e.,
initiating, responsive to input, one or more transactions
involving the basket of instruments defined by the second data
set such that neither the basket of instruments nor the one or
more transactions reveals at least one of the group consisting of
the fund assets and changes in the fund assets defined by the
first data set, said one or more transactions resulting in a
modification of at least one of the one or more characteristics of
the first data set,
as recited in claim 1, provides improvements to the underlying technology or
technical field, namely, financial instrument trading systems. See MPEP
§ 2106.05(a) or, alternatively, § 2106.05(e) “Other Meaningful
Limitations.”22
With respect to these other meaningful limitations, we find guidance
in MPEP § 2106.05(e), which summarizes and relies upon the Supreme
Court’s holding in Diehr, cited supra, and our reviewing court’s holdings in
Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011) (decision on remand from the Supreme Court, which had vacated the
lower court’s prior holding of ineligibility in view of Bilski v. Kappos).
In Diehr, the Court evaluated the additional non-abstract limitations,
and found them to be meaningful, because they sufficiently limited the use

22 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
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of the (abstract idea) mathematical equation to the practical application of
molding rubber products. MPEP § 2106.05(e) (citing Diehr, 450 U.S. at
184, 187). In Classen, the Federal Circuit held that, although the analysis
step was an abstract mental process that collected and compared known
information, the (practical application) immunization step was meaningful
because it integrated the results of the analysis into a specific and tangible
method that resulted in the method “moving from abstract scientific
principle to specific application.” MPEP § 2106.05(e) (citing Classen, 659
F.3d at 1066–68).
In an analogous fashion to Diehr and Classen, We find this other
meaningful limitation in limitation L5 identified above provide a
technological improvement to financial instrument trading systems. Appeal
Br. 8. Accordingly, we conclude, when the claim is considered as a whole,
the recited judicial exception is integrated into a practical application as
determined under either MPEP sections 2106.06(a) or 2106.05(e) cited
above, such that the claim is patent-eligible.
Because the claims are directed to a patent-eligible concept, this
concludes the patent-eligibility inquiry.
Therefore, based upon the findings and legal conclusions above, on
this record and in consideration of the Revised Guidance, we are persuaded
the claims are directed to patent-eligible subject matter, such that we do not
sustain the § 101 rejection of claim 1, and grouped claims 2–11 and 13–33
which stand therewith. See Claim Grouping, supra.
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4. OTDP Rejection R4 of Claims 1–28
Issue 4
In view of the lack of any substantive or separate arguments directed
to OTDP Rejection R4 of claims 1–28 (see Appeal Br. 19), we sustain the
Examiner’s rejection of these claims. Arguments not made are waived.23
5. § 103 Rejection R5 of Claims 1–11 and 13–33
Issue 5
Appellant argues (Reply Br. 2–5) the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of Payne,
Kiron, and Shaw is in error. These contentions present us with the following
issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] computer-implemented method of intra-day transacting in
constituents of a first data set without revealing the constituents,” that
includes, inter alia, the steps of:
(a) “decrypting the first data set based on the domain
configuration and trust relationships;”

23 Appellant incorrectly argues, “[c]laims 1–11 and 13–33 stand
provisionally rejected on the ground of non-statutory obviousness-type
double patenting over Claims 1–19 of US Pat. No, 8,024,258 and Claims
1–18 of US Pat. No. 8,341,070. (See p.11 of the Latest Action). As these
are provisional rejections, the Appellant respectfully refrains from
addressing this rejection until such time as this application is deemed
allowable.” Appeal Br. 19 (emphasis added). Because the Examiner did not
designate the rejection as “provisional” (see Non-Final Act. 11), and because
the reference claims are from issued patents, we determine this is not a
provisional rejection. Arguments not made are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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(b) “generating a second data set defining a basket of
instruments that tracks one or more characteristics of the
decrypted first data set, the second data set being non-predictive
of the first data set;” and
(c) “initiating, responsive to input, one or more
transactions involving the basket of instruments defined by the
second data set such that neither the basket of instruments nor
the one or more transactions reveals at least one of the group
consisting of the fund assets and changes in the fund assets
defined by the first data set, said one or more transactions
resulting in a modification of at least one of the one or more
characteristics of the first data set,”
as recited in claim 1?
Analysis
The Examiner relies upon Shah as teaching or suggesting limitation
(a) (Ans. 5 (citing Shah ¶¶ 13–16, 27, 31, 35–36, 42, 48, and 57–58)); and
relies upon Payne as teaching or suggesting limitations (b) and (c). Ans. 4
(citing Payne ¶¶ 23–24, 27, 32–34, 49, 269–282).24
Appellant contends “[n]o combination of Payne, Kiron and Shah
discloses, teaches or suggests at least these above-identified features.”
Reply Br. 2.
The Examiner further finds:

24 We find the Examiner’s claim mapping on pp. 4–5 of the Answer of the
new ground of rejection R5 to be unclear because the Examiner misquotes
and/or omits the actual claim recitations in the analysis. Further, when
setting forth the motivational reason to combine the references in the manner
suggested, the Examiner states, after discussing the Shah reference, “[i]t
would have been obvious to one of ordinary skill in the art at the time of the
invention to have combined the teachings of Dembo with that of Payne to
achieve the claimed invention.” Ans. 5 (emphasis added). We note Dembo
is not a reference of record in this Appeal.
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Payne provides the invention of Kiron with the use of risk
factors derived from a risk factor model and the use of traded
fund sensitivity coefficients. The motivation to combine the
references would include the ability to trade a futures contract
on both a securitized fund share and an index of securitized
fund shares with linked derivative securities. In addition, the
present invention solves a long existing but unsolved and
unrecognized need. Many investors, both professional and
non-professional own multiple mutual funds in an effort to
diversify their investment portfolios.
Ans. 5 (emphasis added).
We determine the Examiner’s findings are problematic for at least two
reasons. First, as argued by Appellant, the Examiner’s motivational
statement is flawed because the condition proposed by the Examiner, i.e.,
“the ability to trade a futures contract on both a securitized fund
share and an index of securitized fund shares with linked
derivative securities” cannot occur because a futures contract is
not a security, and as such, it could not be a part of a securitized
fund. In addition, there is no such concept as “trading a futures
contract on a securitized fund share and an index of the
securitized fund shares.”
Reply Br. 4 (quoting Ans. 5). We are persuaded by Appellant’s analysis that
the Examiner’s rejection lacks proper motivation to combine the references
in the manner suggested, even assuming the Examiner’s reference to
“Dembo” in the Answer at page 5 should be interpreted as “Shah.”
Secondly, even assuming the Examiner has provided a proper prima
facie case of unpatentability under 35 U.S.C. § 103(a), which we do not find
based upon the above-cited improper motivation, the Examiner has made an
additional finding that supports patentability by way of reliance upon
objective indicia of nonobviousness, i.e., secondary considerations. “[T]he
present invention solves a long existing but unsolved and unrecognized
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need. Many investors, both professional and non-professional own multiple
mutual funds in an effort to diversify their investment portfolios.” Ans. 5.
The Examiner does not explain why the claims would be obvious in spite of
this finding.
Based upon the findings above, on this record, we are persuaded of at
least one error in the Examiner’s reliance on the cited prior art combination
to teach or suggest the disputed limitations of claim 1, such that we find
error in the Examiner’s resulting legal conclusion of obviousness.
Therefore, we do not sustain the Examiner’s obviousness rejection of
independent claim 1, and grouped claims 2–11 and 13–33 which fall
therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1–15) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to written description
Rejection R1 of independent claims 1, 11, and 23 under 35 U.S.C. § 112,
first paragraph, and we sustain the rejection.
(2) The Examiner did not err with respect to indefiniteness
Rejection R2 of independent claims 1, 11, and 23 under 35 U.S.C. § 112,
second paragraph, and we sustain the rejection.
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(3) Under our Revised Guidance, governed by relevant case law,
claims 1–11 and 13–33 are patent-eligible under 35 U.S.C. § 101, and we do
not sustain Rejection R3.
(4) Appellant has not shown that the Examiner erred with respect
to Rejection R4 of claims 1–11 and 13–28 under the judicially created
doctrine of obviousness-type double patenting over the cited reference
claims of record, and we pro forma sustain the rejection.
(5) The Examiner erred with respect to obviousness Rejection R5
of claims 1–11 and 13–33 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we sustain the rejections.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References
Affirmed Reversed
1, 11, 23 112, ¶ 1 Written
Description
1, 11, 23
1, 11, 23 112, ¶ 2 Indefiniteness 1, 11, 23
1–11,
13–33
101 Subject
Matter
Eligibility
1–11, 13–33
1–11,
13–28
Obviousness-
Type Double
Patenting
1–11, 13–28
1–11,
13–33
103(a) Payne, Kiron,
Shah
1–11, 13–33
Overall
Outcome
1–11, 13–28 29–33
Appeal 2018-005812
Application 14/822,198

37
FINALITY AND 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-IN-PART