Clifford J. Weber et al.

Patent Trials and Appeals Board

Apr 23, 2020

14822355 - (D) (P.T.A.B. Apr. 23, 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.
14/822,355 08/10/2015 Clifford J. Weber MKT-14-1087CDCCC-
CON
1134
35811 7590 04/23/2020
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
04/23/2020 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, CAROL ALEXANDER,
JASON MacQUEEN, CHARLES A. BAKER,
GARY L. GASTINEAU, and TERRY NORMAN
Appeal 2018-008605
Application 14/822,355
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), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–27, which are all claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). 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 systems and methods for trading actively
managed funds. 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 or exchange-traded notes on secondary markets
without knowledge of the specific assets underlying the traded instruments.
More particularly, this invention relates to systems and methods for
checking how well a model portfolio tracks an actively managed fund.”
Spec. ¶ 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (italics added to contested prior-art limitations, and underlining
added to contested written description limitation):
1. A computer-implemented method for
supplementing a data set without revealing contents of the data
set, comprising the steps of:
receiving, by at least one computer having non-transitory
memory storing computer software and at least one processor
executing the computer software, the data set comprising
information defining a fund having fund assets;
creating, by the at least one processor of the at least one
computer, a supplemental data set representative of the data

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Feb. 13, 2018); Reply Brief (“Reply Br.,” filed Aug. 30, 2018); Examiner’s
Answer (“Ans.,” mailed July 6, 2018); Final Office Action (“Final Act.,”
mailed Oct. 6, 2017); and the original Specification (“Spec.,” filed Aug. 10,
2015) (claiming ultimate benefit of US 09/536,663 filed Mar. 27, 2000).
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set, the supplemental data set not revealing the contents of the
data set, the step of creating further comprising:
generating data set parameters comprising a
set of fund sensitivity coefficients based on a
measure of an exposure of the fund to a set of risk
factors, the risk factors comprising a historical
time series of price data for a set of instruments
and each fund sensitivity coefficient indicating the
exposure of the fund to at least one of the risk
factors;
storing the data set parameters on computer
readable media;
generating the supplemental data set based
on the data set parameters, the supplemental data
set defining a proxy portfolio having instruments
selected from a proxy universe of instruments, the
proxy portfolio having sensitivity coefficients that
track sensitivity coefficients of the fund, and
the proxy portfolio not revealing at least one
of the group consisting of the fund assets and
changes in the fund assets; and
transmitting the supplemental data set to one
or more trader computers in communication with
the at least one computer;
initiating, by the one or more trader computers, one or
more transactions involving at least a portion of the data set
without receiving the data set, based on the supplemental data
set; and
executing, by the at least one computer, the one or more
transactions initiated by the one or more trader computers.
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Dembo US 5,799,287 Aug. 25, 1998
Kiron et al. (“Kiron”) US 2002/0143676 A1 Oct. 3, 2002
Present et al. (“Present”) US 2009/0063363 A1 Mar. 5, 2009
Related Applications
A Notice of Appeal was filed in copending Application Serial Number
14/822,286, Appeal Number 2018-005744. In our Decision mailed
January 3, 2020, we reversed the Examiner's rejections.
A Notice of Appeal was filed in copending Application Serial Number
14/812,717, Appeal Number 2018-005741. In our Decision mailed
January 3, 2020, we affirmed in part the Examiner's rejections.
A Notice of Appeal was filed in copending Application Serial Number
14/822,198, Appeal Number 2018-005812. In our Decision mailed
January 14, 2020, we affirmed in part the Examiner's rejections.
A Notice of Appeal was filed in copending Application Serial Number
14/788,931, Appeal Number 2018-008654. A Decision on Appeal is
pending.
Rejections on Appeal
R1. Claims 1, 9, 11, and 20 stand rejected under 35 U.S.C. § 112,
first paragraph, as lacking written description support. Final Act. 2.
R2. Claims 1–27 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
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natural phenomenon, or abstract idea) without significantly more. Final
Act. 3.
R3. Claims 1–27 stand provisionally rejected under the judicially-
created doctrine of obviousness-type double patenting over claims 1–17 of
U.S. Patent 7,822,678 and claims 1–5 of U.S. Patent 8,170,934. Final Act.
9.3
R4. Claims 1–15 and 17–27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Dembo and Kiron. Final
Act. 12.
R5. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dembo, Kiron, and Present. Final
Act. 18.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 9–23) 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, 9, 11, and 20 on the basis of
representative claim 1; we decide the appeal of patent-ineligible subject
matter Rejection R2 of claims 1–27 on the basis of representative claim 1;
and we decide the appeal of obviousness Rejection R4 of claims 1–15
and 17–27 on the basis of representative claim 1. Remaining claim 16 in
obviousness Rejection R5, not argued separately, stands or falls with

3 The Examiner indicates this is a provisional OTDP rejection (Final
Act. 9), but the reference patent claims are found in issued patents,
suggesting instead that the claims should be non-provisionally rejected under
the OTDP doctrine.
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independent claim 11 from which it depends.4 We address provisional
OTDP Rejection R3 of claims 1–27, not argued separately, infra.
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).
We agree with particular arguments presented by Appellant with
respect to written description Rejection R1 of claims 1, 9, 11, and 20, and
subject matter eligibility Rejection R2 of claims 1–27.
However, we disagree with Appellant’s arguments with respect to
obviousness Rejections R4 and R5 of claims 1–27 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.

4 “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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1. § 112, ¶ 1 Written Description Rejection R1 of Claims 1, 9, 11, 20
Issue 1
Appellant argues (Appeal Br. 9–10; Reply Br. 8) 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 “initiating, by the one
or more trader computers, one or more transactions involving at least a
portion of the data set without receiving the data set, based on the
supplemental data set,” as recited in claim 1, lacks written description
support?
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. 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
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necessarily discloses that particular device.” 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
The Examiner finds “[t]here is no support for a computer initiating a
trade in the present disclosure,” and “[a]t best, a human trader makes trade
decisions based on the received information.” Final Act. 3 (citing Spec.
¶ 47).
Appellant responds, “it is inherent in the specification that the one or
more transactions could be initiated and executed by one or more trader
computers based on the supplemental data set.” Appeal Br. 9.
In the present case, the Appellant’s specification (see, for
example, paras. [0052]–[0055]) explicitly makes clear that Fig.
3 is a method that may be performed on a system involving a
fund computer. From that statement alone, it is clear to one of
ordinary skill in the art that each and every step involved in Fig.
3 is carried out by the system involving a fund computer,
including the subsequent initiation of the trade based on the
supplemental data set. Moreover, the specification explicitly
recites that the "provides computer software for performing any
or all of the processes and steps described herein" and goes into
detail regarding what the software may include. (See, for
example, para. [0095] of the specification.) Thus, by assuming
that the only embodiment disclosed by the application is one in
which a human initiates a trade using a computer, the Examiner
is improperly limiting Appellant’s claim language.
Appeal Br. 10.
We are persuaded by Appellant’s argument that the Examiner erred.
We are persuaded because we find the Specification discloses computer
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initiation of a trade.5 For example, “[t]he method depicted in Fig. 3 may be
performed on a system involving a fund computer 110 and a pricing and
hedging computer (“PH computer”) 300. The PH computer may be operated
by an exchange, a fund company, or a third party.” Spec. ¶ 52.
Therefore, we do not sustain the Examiner’s written description
Rejection R1 of independent claim 1, and grouped claims 9, 11, and 20
which recite the contested limitation in commensurate form, and which stand
therewith. See Claim Grouping, supra.
2. § 101 Rejection R2 of Claims 1–27
Issue 2
Appellant argues (Appeal Br. 10–21; Reply Br. 1–8) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error because of the lack of Step 2B analysis of
the claims under the Federal Circuit’s holding in Berkheimer. 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 because the Examiner failed to provide analysis of the well
understood, routine, and conventional nature of the recited elements as
required by Berkheimer?

5 We find human interaction in effecting the trade, as suggested by the
Examiner, is neither precluded nor required by the broadest reasonable
interpretation of the claim language.
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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. § 101.6
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
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);

6 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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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))).
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
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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
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 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
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of organizing human activity such as a fundamental economic
practice, or mental processes);7 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)).8
See Revised Guidance 52–53.
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.9
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;

7 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
8 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
9 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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(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
(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.10
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

10 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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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.
The seven identified “practical application” sections of the MPEP,11
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-

11 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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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
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.12 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).13 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).14

12 See, e.g., Diehr, 450 U.S. at 187.
13 See, e.g., Amdocs, 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).
14 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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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
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.15
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-

15 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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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). . . .
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 2B – “Inventive Concept” or “Significantly More”
Based upon Appellant’s argument (Reply Br. 2–4), we determine
analysis under Step 2B to be dispositive to our Decision.16

16 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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Assuming for purposes of this Decision that the claims are directed to
a judicial exception, and not integrated into a practical application under the
Revised Guidance, Steps 2A(i) and 2A(ii), we proceed to the “inventive
concept” step. For Step 2B we must “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, 838 F.3d at 1258 (citation
omitted).
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. 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, 881 F.3d at 1368.
We note the Examiner does not cite to any of the four types of
evidence cited in the Berkheimer Memo as support for a finding that a claim
element or combination of claim elements is well-understood, routine, and
conventional, as required by USPTO guidelines. See Berkheimer Memo 3–4
(cited supra).
Thus, because the Examiner did not follow the extant Step 2B
Berkheimer guidance, we agree with Appellant that the Examiner erred in
rejecting the claims under 35 U.S.C. § 101.17

17 The Berkheimer Memo was issued April 19, 2018, and the Examiner’s
Answer was mailed after that date, on July 6, 2018.
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3. Provisional OTDP Rejection R3 of Claims 1–27
Issue 3
Did the Examiner err in provisionally rejecting claims 1–27 over
claims 1–17 of U.S. Patent 7,822,678 and claims 1–5 of U.S. Patent
8,170,934 under the judicially-created doctrine of obviousness-type double
patenting?
Analysis
In view of the lack of any substantive or separate arguments directed
to provisional OTDP Rejection R3 of claims 1–27 over the cited patent
claims of record (see Appeal Br. 21), we pro forma sustain the Examiner’s
rejection of these claims. See n.3, infra. Arguments not made are waived.18
4. § 103 Rejection R4 of Claims 1–15 and 17–27
Issue 4
Appellant argues (Appeal Br. 21–23) the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of
Dembo and Kiron 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 for supplementing a data set
without revealing contents of the data set” that includes, inter alia, the steps

18 Appellant merely states, “Appellant respectfully disagrees and submits
that the claims of the instant application are patentably distinct from the
cited patents. Nonetheless, Appellant respectfully requests that further
treatment of this double patenting issue be held in abeyance pending
resolution of all other rejections.” Appeal Br. 21.
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of “creating, by the at least one processor of the at least one computer, a
supplemental data set representative of the data set, the supplemental data
set not revealing the contents of the data set,” and “initiating, by the one or
more trader computers, one or more transactions involving at least a portion
of the data set without receiving the data set, based on the supplemental data
set,” as recited in claim 1?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
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use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Analysis
Independent Claim 1
The Examiner cites to the Kiron reference as teaching or suggesting
the contested “creating” and “initiating” limitations of claim 1. Final
Act. 12–13 (citing Kiron claims 146–149, ¶¶ 21, 50, 55–57, 61–62; Fig. 2
(elements 52–60)).
Appellant contends:
Independent Claim 1 includes features that are neither
disclosed nor suggested by the cited art, including (without
limitation):
• a computer that creates a supplemental data set having
sensitivity coefficients that track (historical data-based)
sensitivity coefficients of a data set without revealing the
content of the data set (with different content) and
• a trader computer that initiates transaction(s)
involving the data set without receiving the data set based on
the supplemental data set.
Appeal Br. 21. “No combination of Dembo and Kiron discloses, teaches or
suggests at least these above-identified features.” Appeal Br. 22. “Dembo
cannot teach, disclose or suggest a trader computer that initiates the
execution of transactions involving the (proprietary) data set without
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receiving the data set based on the supplemental data set, as recited by
Appellant’s claims. Kiron also fails to disclose any of these features, and as
such, fails to cure the deficiencies of Dembo.” Id. (emphasis added).
We disagree with Appellant’s contention because their arguments are
not responsive to the rejection as articulated by the Examiner, which relied
upon Kiron as teaching or suggesting the contested “creating” and
“initiating” limitations. See Final Act. 12–13. We also are not persuaded
because Appellant’s conclusory statements are not considered to be
arguments. 37 C.F.R. § 41.37(c)(1)(vii) [now § 41.37(c)(1)(iv)] (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
Thus, we do not find Appellant’s arguments to be persuasive.
Independent Claim 4
Appellant makes similar arguments against the rejection of claim 4,
and contends:
Independent Claim 4 as presented herein includes
additional features that are neither disclosed nor suggested by
the cited art, including (without limitation):
• receive a price feed,
• estimate an intra-day value of the data set by
calculating an intra-day value of the proxy portfolio using the
price feed, and
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• publish the intra-day value of the data set to a remote
computer system
Appellant submits that Dembo and Kiron, whether taken
alone or in combination, fail to teach or suggest at least these
above-identified features of Claim 4. Moreover, as discussed
above with respect to Claim 1, neither Dembo nor Kiron
disclose, teach or suggest a computer that creates a
supplemental data set having sensitivity coefficients that track
(historical databased) sensitivity coefficients of a data set
without revealing the content of the data set (with different
content). Accordingly, Claim 4 is also patentable over Dembo
and Kiron.
Appeal Br. 22–23.
Again, we are not persuaded with Appellant’s argument because “[a]
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” Lovin, 652
F.3d at 1356 (citation and emphasis omitted).
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner’s resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner’s obviousness rejection of independent
claim 1, and grouped claims 2–15 and 17–27 which fall therewith. See
Claim Grouping, supra.
3. § 103 Rejection R5 of Claim 16
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R5 of claim 16 under § 103 (see Appeal Br. 23),
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we sustain the Examiner’s rejection of these claims. Arguments not made
are waived.19
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1–8) 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 erred with respect to written description
Rejection R1 of claims 1, 9, 11, 20 under 35 U.S.C. § 112, first paragraph,
and we do not sustain the rejection.
(2) The Examiner erred with respect to the patent ineligibility
Rejection R2 of claims 1–27 under 35 U.S.C. § 101, and we do not sustain
the rejection.
(3) The Examiner did not err with respect to provisional
obviousness-type double patenting Rejection R3 of claims 1–27 over the
cited patent claims of record, and we pro forma sustain the rejection.

19 Appellant merely argues, “Present fails to cure the deficiencies set forth
above with regard to the combination of Dembo and Kiron. Thus Claim 16,
which depends from Claim 11, is also patentable over Dembo and Kiron
combined with Present.” Appeal Br. 23.
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(4) The Examiner did not err with respect to obviousness
Rejections R4 and R5 of claims 1–27 under 35 U.S.C. § 103(a) over the
cited prior art combinations of record, and we sustain the rejections.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).
DECISION SUMMARY
Claims
Rejected
35
U.S.C. §
Basis /
References Affirmed Reversed
1, 9, 11, 20 112, ¶ 1 Written Description 1, 9, 11, 20
1–27 101 Subject Matter Eligibility 1–27
1–27 Provisional OTDP 1–27
1–15, 17–
27 103(a)
Obviousness
Dembo, Kiron
1–15, 17–
27
16 103(a) Obviousness Dembo, Kiron, Present 16
Overall
Outcome 1–27
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