Flemm, Lori

Patent Trials and Appeals Board

Oct 26, 2020

2020002929 (P.T.A.B. Oct. 26, 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.
11/452,653 06/14/2006 William J. Albert 4672-05555BUS 4300
12684 7590 10/26/2020
Lempia Summerfield Katz LLC/CME
20 South Clark Street
Suite 600
Chicago, IL 60603
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
10/26/2020 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):
docket-us@lsk-iplaw.com
mail@lsk-iplaw.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM J. ALBERT, PAUL ANDREW BAUERSCHMIDT,
PAUL J. CALLAWAY, DMITRIY GLINBERG, EDWARD M. GOGOL,
STEPHEN M. GOLDMAN, ANDREW E. GRETA, BRYAN C. HUNTER,
MATTHEW J. KELLY, JOHN W. LABUSZEWSKI, PAUL I. LICHTER,
JEFFREY ROBERT MITCHELL, ARI L. STUDNITZER,
SHANTHI A. THIRUTHUVADOSS, and TAE SEOK YOO
___________

Appeal 2020-002929
Application 11/452,653
Technology Center 3600
____________

Before ERIC B. CHEN, MICHAEL J. STRAUSS, and SHARON FENICK,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5, 6, 8–11, 14–20, 22–45, 47–49,
51, 52, 55–61, and 63–88. Claims 4, 7, 12, 13, 21, 46, 50, 53, 54, 62, and
89–93 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to trading of over the counter (“OTC”) foreign
exchange (“FX”) contracts on a centralized matching and clearing
mechanism. (Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter, with bracketing added:
1. A method comprising:
[i] trading over the counter (OTC) foreign exchange (FX)
contracts among a plurality of entities via an intermediary that
includes a computer;
[ii] receiving, by the computer, a request for quote via a
computer network from a first entity of the plurality of entities,
the request for quote identifying the first entity and specifying
an interest in trading an OTC FX contract, wherein the request
for quote includes data which further specifies a first expiration
time period;
[iii] determining, by the computer, a subset of the
remainder of the plurality of entities to which the request for
quote will be transmitted by matching one or more parameters
of an interest profile of each of the remainder of the plurality of

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 Chicago
Mercantile Exchange, Inc. (Appeal Br. 2.)
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entities with one or more parameters of an interest profile of the
first entity;
[iv] anonymizing, by the computer, the request for quote;
[v] transmitting, by the computer, the anonymized
request for quote via the computer network only to the
determined subset of the remainder of the plurality of entities;
[vi] receiving, by the computer, at least one response via
the computer network from at least one of the subset of the
remainder of the plurality of entities responsive to the
transmitted anonymized request for quote, the at least one
response including data specifying a time of transmission and
identifying the anonymized request for quote and including an
actionable quote, wherein the actionable quote further included
data which specifies a second expiration time period, the at
least one response not identifying the first entity;
[vii] determining, by the computer based on the specified
time of transmission of the at least one response and without
regard to whether the received at least one response was
received after the first expiration time period has expired, that
the received at least one response was transmitted prior to the
expiration of the first expiration time period and, based thereon,
transmitting, by the computer via the computer network, the at
least one response only to the first entity; and
[viii] receiving, by the computer subsequent to the
transmitting of the at least one response, an indication of
acceptance of the actionable quote of one of the at least one
response by the first entity, the received indication including
data specifying a time of transmission; and
[ix] determining, by the computer based on the specified
time of transmission of the indication and without regard to
whether the received indication was received after the second
expiration time period has expired, that the received indication
was transmitted prior to the expiration of the second expiration
time period and, in response thereto, performing a first
transaction between the intermediary and the first entity in
accordance with the actionable quote, and performing a second
transaction,
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[x] independent of the first transaction, in accordance
with the actionable quote between the intermediary and the
entity of the remainder of the plurality of entities from which
the actionable quote was received, wherein performance of the
first transaction does not depend upon performance of the
second transaction.

REJECTIONS
Claims 1–3, 5, 6, 8–11, 14–20, 22–45, 47–49, 51, 52, 55–61, and 63–
88 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible
subject matter.

OPINION
§ 101 Rejection
We are unpersuaded by Appellant’s arguments (Appeal Br. 9–24) that
independent claims 1, 47, 87, and 88 are directed to patent-eligible subject
matter under 35 U.S.C. § 101.
The Examiner determined that “the claims are directed to a judicial
exception such as a law of nature, a natural phenomenon, or an abstract
idea” with a citation to Alice. (Final Act. 3.) In particular, the Examiner
determined that “[t]rading over the counter (OTC) foreign exchange (FX)
contracts among a plurality of entities via an intermediary is a fundamental
economic practice long prevalent in commerce systems.” (Id. at 10–11.)
Moreover, the Examiner determined that “checking a timestamp [with] a
defined . . . period of response and to ensure that the timestamp occurs prior
to the define response period” is analogous to “using rules to identify
options (accept or reject submission for trade) (Electric Power Group LLC).”
(Ans. 5.)
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Furthermore, regarding the additional elements (e.g., computer or
computer network) the Examiner determined that:
[T]he additional element of using a processor to perform the
abstract idea(s) amounts to no more than mere instructions to
apply the exaction using a generic computer component. Mere
instruction to apply an exertion using a generic computer
component cannot provide an inventive concept. These generic
computer components are claimed at a high level of generality
to perform their basic functions which amount to no more than
generally linking the use of the judicial exception to the
particular technological environment of field of use . . . .
(Final Act. 13.) We agree with the Examiner’s determinations and ultimate
conclusion that the claims are directed to patent-ineligible subject matter.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
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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” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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 that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 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. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
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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. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Id.
The PTO published revised guidance on the application of § 101.
USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50 (Jan. 7, 2019); see also USPTO, October 2019 Update:
Subject Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 18, 2019). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2019)).
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
are 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.
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See 84 Fed. Reg. 56.

Are the claims at issue directed
to a patent-ineligible concept?
Step One
Claim 1 is a method claim, which falls within the “process” category
of 35 U.S.C. § 101. Claims 47, 87, and 88 are system claims, which fall
within the “manufacture” category of 35 U.S.C. § 101. Therefore, claims 1,
47, 87, and 88 fall within one of the four statutory categories of patentable
subject matter identified by 35 U.S.C. § 101.
Although claims 1, 47, 87, and 88 fall within the statutory categories,
we must still determine whether the claims are directed to a judicial
exception, namely an abstract idea. See Alice, 573 U.S. at 216. Thus, we
must determine whether the claims recite a judicial exception and whether
the exception is integrated into a practical application. See 84 Fed. Reg. at
52–55. If a claim recites a judicial exception without integrating the judicial
exception into a practical application, the claim is directed to a judicial
exception under the first step of the Alice/Mayo test. See id.

Step 2A, Prong One
Independent claim 1 recites the following limitations: “[i] trading
over the counter (OTC) foreign exchange (FX) contracts among a plurality
of entities via an intermediary,” “[ii] receiving . . . a request for quote . . .
from a first entity of the plurality of entities, the request for quote identifying
the first entity and specifying an interest in trading an OTC FX contract,
wherein the request for quote includes data which further specifies a first
expiration time period,” “[iii] determining . . . a subset of the remainder of
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the plurality of entities to which the request for quote will be transmitted by
matching one or more parameters of an interest profile of each of the
remainder of the plurality of entities with one or more parameters of an
interest profile of the first entity,” “[iv] anonymizing . . . the request for
quote,” “[v] transmitting . . . the anonymized request for quote . . . only to
the determined subset of the remainder of the plurality of entities,” “[vi]
receiving . . . at least one response . . . from at least one of the subset of the
remainder of the plurality of entities responsive to the transmitted
anonymized request for quote, the at least one response including data
specifying a time of transmission and identifying the anonymized request for
quote and including an actionable quote, wherein the actionable quote
further included data which specifies a second expiration time period, the at
least one response not identifying the first entity,” “[viii] receiving, . . .
subsequent to the transmitting of the at least one response, an indication of
acceptance of the actionable quote of one of the at least one response by the
first entity, the received indication including data specifying a time of
transmission,” “[ix] determining . . . based on the specified time of
transmission of the indication and without regard to whether the received
indication was received after the second expiration time period has expired,
that the received indication was transmitted prior to the expiration of the
second expiration time period and, in response thereto, performing a first
transaction between the intermediary and the first entity in accordance with
the actionable quote, and performing a second transaction,” and “[x]
independent of the first transaction, in accordance with the actionable quote
between the intermediary and the entity of the remainder of the plurality of
entities from which the actionable quote was received, wherein performance
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of the first transaction does not depend upon performance of the second
transaction.” Such method steps of claim 1 are directed to a patent-ineligible
abstract idea of certain methods of organizing human activity, for example,
the fundamental economic practice of trading financial obligations via an
intermediary. See, e.g., Alice, 573 U.S. at 219 (“a method of exchanging
financial obligations between two parties using a third-party intermediary to
mitigate settlement risk” is directed towards an abstract idea). Moreover, as
further evidence that the claims are directed to a fundamental business
practice, in the “Background” section, Appellant’s Specification states that
“[a]lso known as forex or FX, currency trading typically involves the
simultaneous purchase of one currency while selling another currency”
(Spec. ¶ 4) and “OTC [Over the Counter] contracts include ‘forward’
contracts, i.e. private agreements between buyers and sellers, i.e. bilateral
contracts, for the future delivery of a commodity at an agreed price” (id.
¶ 6). Appellant’s Specification further discloses that “[Chicago Mercantile
Exchange’s] futures exchange offers its own benefits, such as centralized
and anonymous matching and clearing, as well as efficiency optimization
and risk management/credit screening mechanisms not available in the
present OTC markets.” (Id. ¶ 10.)
Independent claim 1 further recites “[vii] determining . . . based on the
specified time of transmission of the at least one response and without
regard to whether the received at least one response was received after the
first expiration time period has expired, that the received at least one
response was transmitted prior to the expiration of the first expiration time
period and, based thereon, transmitting . . . the at least one response only to
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the first entity.”2 This limitation is directed to a patent-ineligible abstract
idea of mental processes, such as collecting and analyzing information or
comparing new and stored information, for example, comparing time of
transmission to the expiration time period. See, e.g., Elec. Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“The advance
they purport to make is a process of gathering and analyzing information of
a specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions.”);
SmartGene, Inc. v. Advanced Biological Labs., 555 F. App’x 950, 955 (Fed.
Cir. 2014) (“the claim at issue here involves a mental process excluded from
section 101: the mental steps of comparing new and stored information and
using rules to identify medical options”).
Accordingly, claim 1 recites a judicial exception. Claims 47, 87, and
88 recite limitations similar to those discussed with respect to claim 1. Thus,
claims 47, 87, and 88 also recite a judicial exception.

Step 2A, Prong Two
Because claims 1, 47, 87, and 88 recite a judicial exception, we next
determine if the claims recite additional elements that integrate the judicial
exception into a practical application.
Independent claim 1 recites the following: “[i] trading over the
counter (OTC) foreign exchange (FX) contracts among a plurality of entities

2 Such limitation is similar to a well-known principle in contract law, the
“mailbox rule,” defined as “a rule treating the sending of something as
constituting a filing or as a basis for assuming receipt.” Merriam-
Webster.com Legal Dictionary, Merriam-Webster, https://www.merriam-
webster.com/legal/mailbox%20rule.
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via an intermediary that includes a computer,” “[ii] receiving, by the
computer, a request for quote via a computer network from a first entity of
the plurality of entities,” “[iii] determining, by the computer, a subset of the
remainder of the plurality of entities to which the request for quote will be
transmitted,” “[iv] anonymizing, by the computer, the request for quote,”
“[v] transmitting, by the computer, the anonymized request for quote via the
computer network only to the determined subset of the remainder of the
plurality of entities, “ “[vi] receiving, by the computer, at least one response
via the computer network from at least one of the subset of the remainder of
the plurality of entities responsive to the transmitted anonymized request for
quote,” “[vii] determining, by the computer based on the specified time of
transmission of the at least one response and without regard to whether the
received at least one response was received after the first expiration time
period has expired, that the received at least one response was transmitted
prior to the expiration of the first expiration time period and, based thereon,
transmitting, by the computer via the computer network, the at least one
response only to the first entity,” “[viii] receiving, by the computer
subsequent to the transmitting of the at least one response, an indication of
acceptance of the actionable quote,” and “[ix] determining, by the computer
based on the specified time of transmission of the indication and without
regard to whether the received indication was received after the second
expiration time period has expired, that the received indication was
transmitted prior to the expiration of the second expiration time period”
(emphases added).
The recited additional elements, including “computer” and “computer
network” are merely tools for performing the recited abstract idea. See
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Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed.
Cir. 2016) (“[T]he claims are directed not to an improvement in cellular
telephones but simply to the use of cellular telephones as tools in the aid of a
process focused on an abstract idea.”).
Accordingly, claim 1 does not recite additional elements that integrate
the judicial exception into a practical application. Claims 47, 87, and 88
recite limitations similar to those discussed with respect to claim 1. Thus,
claims 47, 87, and 88 do not recite additional elements that integrate the
judicial exception into a practical application.

Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Step 2B
Because claims 1, 47, 87, and 88 are directed to a judicial exception,
we next determine, according to Alice, whether these claims recite an
element, or combination of elements, that ensure that the claim is directed to
significantly more than the judicial exception.
Independent claim 1 recites “computer” and “computer network.”
Similarly, independent claims 47, 87, and 88 recite “processing circuitry,”
“memory,” “network interface,” and “network.”
With respect to the claimed additional elements, Appellant’s
Specification discloses the following:
Figure 1 shows a block diagram of an exemplary system
100 for trading OTC FX instruments according to the disclosed
embodiments. The system 100 is essentially a network 102
coupling market participants 104 106, including traders 104
and market makers 106 with the Exchange 108.
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(Spec. ¶ 22 (emphasis added).)
In one embodiment the server 118 includes one or more
processors . . . , one or more memories . . . and/or other storage
media coupled with the one or more processors and a network
interface . . . coupled with the one or more processors and the
network and operative to facilitate communications
therebetween. . . . For example, the server 118 may further
include first logic stored in the memory and executable by the
processor(s) to receive a first communication comprising a
request for quote via the network from one of the market
participants as described above . . . .
(Spec. ¶ 107 (emphasis added).)
Figure 8 depicts a block diagram of an exemplary system
800 for trading OTC FX instruments having a directed request
for quote system according to an alternative embodiment. Each
box shown in Figure 8 represents a specific computer, or set of
computers, performing a unique function as described.
(Spec. ¶ 117 (emphasis added).)
The generalized functional terms by which the additional elements are
described reasonably indicate that Appellant’s Specification discloses: (i) a
conventional “computer” (e.g., Figure 8); (ii) a conventional “computer
network” (e.g., network 102 (Spec. ¶ 22)); (iii) conventional “processing
circuitry” (e.g., “the server 118 includes one or more processors” (id.
¶ 107)); and (iv) conventional “memory” (e.g., “the server 118 includes . . .
one or more memories” (id.)).
Moreover, Appellant’s Figure 6 illustrates a “block diagram of an
exemplary system 600 for trading OTC FX instruments having a directed
request for quote [RFQ] server 118” (¶ 91), such server 118 including
processors and memories coupled to a network via a network interface
(¶ 107). In another embodiment, Appellant’s Figure 8 illustrates “a block
diagram of an exemplary system 800 for trading OTC FX instruments
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having a directed request for quote system,” in which each box represents a
separate computer. (¶ 117.) Accordingly, Appellant’s Specification,
including Figures 6 and 8, discloses trading OTC FX instruments using RFQ
server 118, which a portion of a computer network, and includes processors,
memories, networks, and network interfaces, function cooperatively as an
ordered combination.
Thus, independent claims 1, 47, 87, and 88 do no more than require
generic, purely conventional computer elements, as an ordered combination,
performing generic computer functions, rather than improve computer
capabilities.
First, Appellant argues that “[t]he claimed invention compensates for
latencies in the electronic networks over which the transactions travel by
determining whether a response to a time-limited request was transmitted
prior to expiration of the request regardless of whether the response was
received after expiration.” (Appeal Br. 9.) Similarly, Appellant argues that
“the current claims are integrated into a practical application of a transaction
protocol for completing anonymized transactions an intermediary device via
a network which accommodates for the technical deficiencies in those
networks, i.e. the latency imposed upon transactions transiting the network,
which may affect completion thereof.” (Appeal Br. 11; see also id. at 12–
19, 21–22.) In particular, Appellant argues that “[a]s long as the transaction
was transmitted prior to the elapse of the relevant expiration time period, the
intermediary will consider it valid” and “[t]his effectively mitigates any
latency in the communications between the senders of transactions and the
intermediary.” (Id. at 11.) However, Appellant has not adequately
explained why the claim “purport[s] to improve the functioning of the
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computer itself” or “any other technology or technical field.” Alice, 573
U.S. at 225. In particular, Appellant has not explained why the mental
process of comparing new and stored information (e.g., comparing a
specified time of transmission to the expiration time period) to apply certain
rules, improves the function of a computer or other technology. Rather than
reflecting an improvement in the functioning of a computer or implementing
the judicial exception with a particular machine or manufacture integral to
the claim, this appears to merely implement the judicial exception to a
particular technological environment, namely, one in which there is latency.
See 84 Fed. Reg. 55.
Second, Appellant argues that “the claim does not recite a mental
process because the claim, under the broadest reasonable interpretation, does
not cover performance in the mind but for the recitation of generic computer
components” (Appeal Br. 9) and “[t]he claims cannot be performed in the
human mind, or by using pen and paper” (id. at 10). However, the Examiner
determined that independent claim 1 was primarily directed towards the
patent-ineligible abstract idea of certain methods of organizing human
activity, for example, a fundamental economic practice, rather than mental
processes. Thus, Appellant’s arguments do not persuasively rebut the
Examiner’s determination.
Third, Appellant argues that “the claims are tied to a specific
application (electronic data communications and processing systems) and do
not attempt to cover the entire field.” (Appeal Br. 11.) However, although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
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Where claims are deemed to recite only patent ineligible subject matter
under the two-step Alice analysis, as they are here, “preemption concerns are
fully addressed and made moot.” Id.
Fourth, Appellant argues the following:
[T]he claims recite an improvement over the traditional
transaction matching systems by converting orders received in a
first format, which comprise an arbitrary combination of
component orders, into a set of expressions according to a
modeling language which enables simplification of the
component orders for rapid identification of suitable counter
orders.
(Appeal Br. 12.) However, Appellant’s arguments are not commensurate in
scope with independent claim 1, because the claim does not recite
“converting orders received in a first format, which comprise an arbitrary
combination of component orders, into a set of expressions according to a
modeling language which enables simplification of the component orders for
rapid identification of suitable counter orders.”
Fifth, with a citation to Ex parte Smith, Appeal No. 2018-000064
(PTAB Feb. 1, 2019)(informative), Appellant argues the following:
[T]he Board did not merely look to computer-related limitations
(e.g., an electronic database, a communication network, etc.) to
assess whether the claims integrated the abstract idea into a
practical application. Instead, the Board found that limitations
regarding delaying automatic execution and starting a timer
integrated “the recited judicial exception of derivative trading
into a practical application”.
(Appeal Br. 19 (citation omitted).) However, patentability decisions
involving claims in other patents or patent applications are not necessarily
germane to issues in another patent application. See In re Gyurik, 596 F.2d
1012, 1016 n.15 (CCPA 1979) (“Each case is determined on its own merits”
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and “[i]n reviewing specific rejections of specific claims, this court does not
consider allowed claims in other applications or patents.”). Furthermore,
Smith has not been designated as precedential, and therefore is not binding
on this panel.
Last, Appellant argues that “at least based on the lack of any valid
rejection under 35 U.S.C. §§ 102 or 103 . . . the Examiner cannot make any
such showing that the claimed elements, in combination, are well-
understood, routine, or conventional.” (Appeal Br. 24.) However,
Appellant improperly conflates the requirements for eligible subject matter
with the independent requirements of novelty and non-obviousness. “The
‘novelty’ of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.” Diehr,
450 U.S. at 188–89.
Thus, we agree with the Examiner that claims 1, 47, 87, and 88 are
directed towards patent-ineligible subject matter.
Accordingly, we sustain the rejection of independent claims 1, 47, 87,
and 88 under 35 U.S.C. § 101. Claims 2, 3, 5, 6, 8–11, 14–20, 22–45, 48,
49, 51, 52, 55–61, and 63–86 depend from claims 1, 47, 87, and 88, and
Appellant has not presented any additional substantive arguments with
respect to these claims. Therefore, we sustain the rejection of claims 2, 3, 5,
6, 8–11, 14–20, 22–45, 48, 49, 51, 52, 55–61, and 63–86 under 35 U.S.C.
§ 101, for the same reasons discussed with respect to independent claims 1,
47, 87, and 88.

Appeal 2020-002929
Application 11/452,653

19
CONCLUSION
The Examiner’s decision rejecting claims 1–3, 5, 6, 8–11, 14–20, 22–
45, 47–49, 51, 52, 55–61, and 63–88 under 35 U.S.C. § 101 is affirmed.

DECISION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–3, 5, 6,
8–11, 14–
20, 22–45,
47–49, 51,
52, 55–61,
63–88
101 Eligibility 1–3, 5, 6,
8–11, 14–
20, 22–45,
47–49, 51,
52, 55–61,
63–88

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

AFFIRMED