Griffin, Kenneth C. et al.

Patent Trials and Appeals Board

Jan 28, 2020

12539435 - (D) (P.T.A.B. Jan. 28, 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.
12/539,435 08/11/2009 Kenneth C. Griffin 31401/44336 9300
4743 7590 01/28/2020
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
01/28/2020 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENNETH C. GRIFFIN and TOM MIGLIS
____________________

Appeal 2018-007988
Application 12/539,4351
Technology Center 3600
____________________

Before JOSEPH L. DIXON, HUNG H. BUI, and JON M. JURGOVAN,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Non-Final Office Action rejecting claims 1–3 and 11–14, which
are all the claims pending on appeal. Claims 4–10 and 15–20 have been
canceled. Appeal Br. A-2, A-3. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.2

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The real party in interest is KCG IP Holdings LLC. Appeal
Br. 3.
2 Our Decision refers to Appellant’s Appeal Brief filed April 9, 2018
(“Appeal Br.”); Reply Brief filed July 31, 2018 (“Reply Br.”); Examiner’s
Answer mailed May 31, 2018 (“Ans.”); Non-Final Office Action mailed
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STATEMENT OF THE CASE
Appellant’s invention is directed to an investment fund data
integration system and method for “measuring the exposure of an investment
fund to an issuer of financial assets” by “a display application configured to
create a display for displaying financial data” pertaining to financial assets,
the created display including (i) “a first view adapted to display a list of
financial transactions related to the financial assets” and (ii) “a second view
adapted to display asset metrics associated with the financial assets.” Spec.
¶ 6; Abstract. The display application enables a user to select, via the first
view, a particular financial transaction that is associated with a particular
financial asset, and presents, via the second view, asset metrics associated
with the particular financial asset and associated with other financial assets
(in the investment fund) issued by the issuer of the particular financial asset.
Spec., Abstract.
Claims 1 and 12 are independent. Independent claim 1, reproduced
below, is exemplary of the subject matter on appeal.
1. An investment fund data integration system operatively
coupled to a plurality of data sources, the data integration
system comprising:
a processor;
a database configured to store financial data pertaining to
a plurality of financial assets held by an investment fund, the
financial data collected or generated by the plurality of data
sources; and
a computer-readable memory storing a plurality of
instructions of a display application, the plurality of instructions
including instructions that, when executed on the processor,
cause the processor to create a display providing a plurality of

August 30, 2017 (“Non-Final Act.”); and original Specification filed August
11, 2009 (“Spec.”).
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views for displaying the financial data pertaining to the
plurality of financial assets stored in the database, wherein
a first view of the plurality of views includes a list
of financial transactions related to the plurality of financial
assets,
the display application enables a user to select, via
the first view, a particular financial asset associated with a
particular financial transaction included in the list of financial
transactions, and to drag the particular financial asset to a
second view of the plurality of views, and
in response to the user dragging the particular
financial asset to the second view, the display application
determines an issuer of the particular
financial asset,
determines all other financial assets, held by
the investment fund, that were also issued by the
determined issuer of the particular financial asset,
and
displays in the second view (i) an asset
metric associated with the particular financial
asset, and (ii) asset metrics associated with the
other financial assets that were also issued by the
determined issuer of the particular financial asset.

Appeal Br. A–1 (Claims App.).

Examiner’s Rejection
Claims 1–3 and 11–14 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter. Non-Final
Act. 5–7; Ans. 3–6.3

3 The Examiner’s Answer presents a more detailed 35 U.S.C. § 101 rejection
as “new grounds of rejection.” See Ans. 3. Below, we address together the
§ 101 rejection presented in the Non-Final Action (see Non-Final Act. 5–7)
and the § 101 rejection presented in the Answer (see Ans. 3–6).
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ANALYSIS
In support of the § 101 rejection of claims 1–3 and 11–14, the
Examiner determines that the claims “are directed to an abstract idea of
identifying exposure of an investment fund to an issuer of financial assets
for use in an investment fund data integration system operatively coupled to
a plurality of data sources,” which is similar to abstract ideas previously
identified by the courts, such as “collecting information, analyzing it, and
displaying certain results of the collection and analysis in Electric Power
Group and in Fairwarning.” Ans. 4 (citing Electric Power Group, LLC, v.
Alstom, 830 F.3d 1350 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089 (Fed. Cir. 2016)); see also Non-Final Act. 6.
The Examiner then determines the claims do not recite “significantly
more than the abstract idea itself” as they “do not amount to an improvement
to the functioning of a computer itself . . . [and] do not move beyond a
general link of the use of an abstract idea to a particular technological
environment.” Ans. 10.
Legal Framework
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
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In interpreting this statute, the Supreme Court has emphasized that
patent protection should not preempt “the basic tools of scientific and
technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
(“Benson”); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 71 (2012) (“Mayo”); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (“Alice”). The rationale is that patents directed to basic building
blocks of technology would not “promote the progress of science” under the
U.S. Constitution, Article I, Section 8, Clause 8, but instead would impede
the same. Accordingly, laws of nature, natural phenomena, and abstract
ideas, are not patent-eligible subject matter. Thales Visionix Inc. v. United
States, 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216).
The Supreme Court has set forth a two-part Alice/Mayo test for
subject matter eligibility in Alice (573 U.S. at 217–18). The first step is to
determine whether the claim is directed to a patent-ineligible concept. Id.
(citing Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis
proceeds to the second step of the Alice/Mayo test in which we “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 (internal quotation marks
omitted) (quoting Mayo, 566 U.S. at 72, 79). There is no need to proceed to
the second step, however, if the first step of the Alice/Mayo test yields a
determination that the claim is directed to patent-eligible subject matter.
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
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ineligible matter to which the claim is directed. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In an effort to achieve clarity and consistency in how the U.S. Patent
and Trademark Office (the “Office”) applies the Supreme Court’s two-step
framework, the Office has published revised guidance interpreting governing
case law and establishing a framework for all patent-eligibility analysis
under Alice and § 101 effective as of January 7, 2019. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7,
2019) (“2019 Revised Guidance”) and October 2019 Patent Eligibility
Guidance Update (October 2019 Update), as currently reflected in the
Manual of Patent Examination Procedure (MPEP) §§ 2103, 2104, 2105,
2106 and 2106.03 through 2106.07(c).
2019 Revised Guidance
Under the 2019 Revised Guidance, we first look under Alice step 1 or
“Step 2A” to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment,
opinion), or [iii] certain methods of organizing human activity
such as a fundamental economic practice or managing
personal behavior or relationships or interactions between
people); and

(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
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Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–
(h)).4
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A,
Prong One (Abstract Idea) and Prong Two (Integration into A Practical
Application). Only if a claim: (1) recites a judicial exception, and (2) does
not integrate that exception into a practical application, do we then evaluate
whether the claim provides an “inventive concept” under Alice step 2 or
“Step 2B.” See 2019 Revised Guidance at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
1) adds a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

2) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Thus, we review patent eligibility under § 101 de novo in comport
with the 2019 Revised Guidance, as discussed below.
USPTO Step 1–Categories of Invention
Under the 2019 Revised Guidance, we determine independent claim 1
recites an “investment fund data integration system” and independent claim
12 recites a “method,” which are a form of “machine” and “process,”
respectively, thereby falling within one of the categories enumerated under
§ 101 and satisfying Step 1 of the Revised Guidance.

4 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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Alice/Mayo—Step 1 (Abstract Idea)
USPTO Step 2A–Prongs 1 and 2

USPTO Step 2A—Prong 1 (Does the Claim Recite a Judicial Exception?)
We proceed to apply Step 2A, Prong 1 of the 2019 Revised Guidance
to determine if independent claims 1 and 12 recite a judicial exception
including (a) mathematical concepts; (b) certain methods of organizing
human activity such as a fundamental economic practice; and (c) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 51–52.
Reviewing claims 1 and 12, we note the claims involve a fundamental
economic practice of analyzing financial assets held by investment funds.
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52 (describing an abstract
idea category of “[c]ertain methods of organizing human activity—
fundamental economic principles or practices” and “commercial or legal
interactions (including . . . business relations)”).
USPTO Step 2A—Prong 2 (Integration into Practical Application)
Although claims 1 and 12 recite an abstract idea of a fundamental
economic practice, as provided for in the 2019 Revised Guidance, such
claims may nonetheless be patentable if they recite a particular, practical
application of the abstract idea embodied therein. Bascom Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016).
Accordingly, we proceed to the second prong of Step 2A, where we
inquire whether an additional element of the claims integrates the
fundamental economic practice into a practical application. 2019 Revised
Guidance at 54–55. Such an additional element may reflect an improvement
in the functioning of a computer, or an improvement to another technology
or technical field. Id. at 55; see also McRO, Inc. v. Bandai Namco Games
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America Inc., 837 F.3d 1299 (Fed. Cir. 2016); Finjan Inc. v. Blue Coat
Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018); and Core Wireless Licensing,
SARL v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) (claims were
directed to improvements instead of abstract ideas).
Having reviewed the evidence, we disagree with the Examiner’s
findings that (1) claim 1 (and claim 12, reciting similar limitations) is merely
directed to “collecting information, analyzing it, and displaying certain
results of the collection and analysis,” and (2) the claims provide “an
abstract business solution” to “a business problem of risk mitigation.” See
Ans. 4, 7; Non-Final Act. 6. Rather, we agree with Appellant that claim 1
(and similarly, claim 12) is “directed to an improved computer user interface
that enables a user to quickly and easily see the exposure that an investment
fund has to the issuer of a financial asset associated with a particular
financial transaction,” thereby providing “an improvement to the technology
of computer user interfaces.” Appeal Br. 9; Reply Br. 5.
Particularly, claim 1 (and similarly, claim 12) enables the creation of a
“display [of a display application] providing a plurality of views for
displaying the financial data pertaining to the plurality of financial assets,”
the views including a first view by which a user can select a particular
financial asset associated with a particular financial transaction and drag the
particular financial asset to a second view, and in response to the user’s
dragging the particular financial asset to the second view, the display
application (i) determines an issuer of the particular financial asset, (ii)
determines other financial assets issued by that issuer, and (iii) displays asset
metrics associated with the issuer’s financial assets. Thus, claim 1 provides
“a computer user interface having functionality for efficiently assessing the
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exposure of an investment fund to the issuer of a financial asset associated
with a particular financial transaction,” the computer interface providing a
“specific functional relationship between the ‘first view’ and ‘second view’
[that] enables the user to quickly and easily assess the impact of a potential
or recent financial transaction on the investment fund’s exposure/risk level,
for example.” Appeal Br. 11–12 (citing Spec. ¶ 60); see also Spec. ¶¶ 71–
74, 76–77. As Appellant’s Specification explains, the claimed investment
fund data integration system “may provide a first view (e.g., a trade blotter)
to display a list of financial transactions related to the various financial
assets held by the investment fund and a second view (e.g., a position
blotter),” such that
[a] trader . . . interested in determining an impact of a particular
trade on specific trading strategy. . . . may access the trade at
issue in the trade view 400. The trader may then select, for
example, the security associated with that trade (e.g., by clicking
on the security field in the entry associated with the trade) and
move the security into the position view 1000 (e.g., by grabbing
and dragging the security from the trade view 400 to the position
view 1000). The trader may then view one or more positions of
the security (e.g., open position, current position, and so on), one
or more positions of other securities issued by the same issuer;
one or more positions of other securities of the same time, and so
on. As a result, the trader may be able to assess the impact of a
particular trade on the overall exposure of the investment fund,
or a particular portfolio or trading strategy within the investment
fund, to different issuers, different security types, and so on.

Spec. ¶¶ 73, 76.
We therefore agree with Appellant that claims 1 and 12 “effect an
improvement to the technology of computer user interfaces” and address “a
problem arising in the realm of computer-based financial management tools:
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the inability of a user of such tools to quickly and easily ascertain, for a
particular financial asset of interest, total exposure to the issuer of that
financial asset.” Reply Br. 4–5; Appeal Br. 11–12. In particular,
Appellant’s improved computer interface provides specific operational
responses to particular triggers, by performing “three specific operations ‘in
response to’ . . . a specific trigger (i.e., in response to ‘the user dragging the
financial asset to the second view’)” to: (i) determine an issuer of the
particular financial asset; (ii) determine all other financial assets, held by the
investment fund, that were also issued by the determined issuer of the
particular financial asset; and (iii) display in the second view an asset metric
for the particular financial asset and asset metrics for the other financial
assets issued by that issuer. Appeal Br. 11–12; see Core Wireless Licensing,
880 F.3d at 1362–63 (“Although the generic idea of summarizing
information certainly existed prior to the invention, these claims are directed
to a particular manner of summarizing and presenting information in
electronic devices” that “restrains the type of data that can be displayed in
the summary window”; the claims are thus directed to “an improved user
interface for electronic devices” and to “a specific manner of displaying a
limited set of information to the user,” improve “the efficiency of using the
electronic device by bringing together ‘a limited list of common functions
and commonly accessed stored data,’” improve “[t]he speed of a user’s
navigation through various views and windows . . . [by] ‘sav[ing] the user
from navigating to the required application, opening it up, and then
navigating within that application to enable the data of interest to be seen,’”
and “are not directed to an abstract idea”); see also Trading Techs. Int’l, Inc.
v. CQG, Inc., 675 F. App’x 1001, 1002–05 (Fed. Cir. 2017) (claims directed
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to “improvements in existing graphical user interface devices that have no
‘pre-electronic trading analog’” and “recite more than ‘setting, displaying,
and selecting’ data or information that is visible on the [graphical user
interface] device” are not directed to an abstract idea).
Because claims 1 and 12 are directed to an improved computer
interface and technique for electronically determining investment funds’
exposures, claims 1 and 12 integrate the judicial exception into a practical
application. Thus, claims 1 and 12, and their dependent claims 2, 3, 11, 13,
and 14, are not directed to a judicial exception (abstract idea), rather, they
are directed to patent-eligible subject matter under § 101. Accordingly, we
do not address Step 2B of the 2019 Revised Guidance (corresponding to step
two of the Alice/Mayo test).
For these reasons, we do not sustain the Examiner’s rejections of
claims 1–3 and 11–14, as directed to non-statutory subject matter under
35 U.S.C. § 101.

CONCLUSION
On the record before us, we conclude Appellant has demonstrated the
Examiner erred in rejecting claims 1–3 and 11–14 under 35 U.S.C. § 101.
As such, we REVERSE the Examiner’s rejection of claims 1–3 and 11–14
under 35 U.S.C. § 101.

DECISION SUMMARY
In summary:

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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–3, 11–14 101 Eligibility 1–3, 11–14

REVERSED