Howard W. Lutnick et al.

Patent Trials and Appeals Board

Dec 16, 2019

10938143 - (D) (P.T.A.B. Dec. 16, 2019)

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.
10/938,143 09/10/2004 Howard W. Lutnick 03-1089CIP 5172
63710 7590 12/16/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
BAIRD, EDWARD J
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
12/16/2019 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):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HOWARD W. LUTNICK and MICHAEL SWEETING
____________

Appeal 2018-006155
Application 10/938,143
Technology Center 3600
____________

Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 187–195, which are all the
pending claims. 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. The Appellant identifies the real party in interest as BGC
Partners, Inc. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The Appellant’s invention generally “relates to trading application
program interfaces. More particularly, this invention relates to a trading
application program interface suitable for use with quantitative analysis
trading.” Spec. ¶ 2. “Quantitative analysis trading (colloquially known as
‘program trading’ or ‘quant trading’) refers to a trading strategy that makes
use of information technology to substantially remove the human element
from the decision-making process involved in trading.” Id. ¶ 3.
Claim 187 is the only independent claim on appeal, is representative
of the subject matter on appeal, and is reproduced below (with added
bracketing for reference):
1. A method, comprising the steps of:
[(a)] in a computer of an electronic trading system having
computers in a network, executing a first trade between a first
party on a first side of the first trade and a first counterparty on a
second side of the first trade, in which the first trade is for a first
volume of an item and at a first price;
[(b)] in response to executing the first trade, providing, by
the electronic trading system, the first party with a period of
exclusivity for trading in the item at the first price on the first
side of the first trade, in which providing the period of exclusivity
includes the electronic trading system restricting matching of at
least one order for another trade on the first side of the first trade
from at least one other party during the period of exclusivity;
[(c)] while the period of exclusivity is in effect, the
electronic trading system accepting trading commands from
excluded parties requesting trades in the item at prices less
favorable than the first price of the first trade, and executing
trades on the accepted commands while the period of exclusivity
remains in effect;
[(d)] during the period of exclusivity, preventing, by the
electronic trading system, cancelation of second orders that are
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for the second side of the first trade from parties other than the
first counterparty;
[(e)] determining, by the electronic trading system, that the
first party has additional volume for trading on the first side of
the first trade beyond the volume of the first counterparty for
trading on the second side of the first trade;
[(f)] in response to an end of the period of exclusivity and
in response to determining that the first party has the additional
volume for trading on the first side of the trade, determining, by
the electronic trading system, matches with the additional
volume and the second orders that are for the second side of the
first trade in a price and time priority;
[(g)] allowing, by the electronic trading system,
cancelation of unmatched portions of the second orders
remaining after determining the matches with the additional
volume and the second orders.
Appeal Br. 13 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Donato et al.
(“Donato”)
US 2002/0077962 A1 June 20, 2002
Keith US 7,496,533 B1 Feb. 24, 2009

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REJECTIONS2
Claims 187–1953 stand rejected under pre AIA 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 187–195 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception without significantly more.
Claims 187–189 and 191–195 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Keith and Donato.
Claim 190 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Keith, Donato, and Official Notice.

OPINION
Written Description4
The Examiner rejects independent claim 187 (and thus also dependent
claims 188–195) for being indefinite under pre-AIA 35 U.S.C. § 112, second
paragraph because limitation (c) of accepting trading commands from
excluded parties during the period of exclusivity “is vague and indefinite in
that it is not clear how trades can be executed on accepted commands
(during the period of exclusivity) in that the parties are excluded from
requesting trades during this period.” Final Act. 3–4. The Examiner
additionally rejects dependent claims 188 and 189 because “[i]t is not clear

2 The Examiner withdraws the rejections of claims 1–16 under pre-AIA
35 U.S.C. § 112, first and second paragraphs. Ans. 2.
3 We consider the Examiner’s inclusion of claims 185 and 186 to be
inadvertent error as the “Examiner asserts that the Office Action was clearly
referring to the claim limitation of claim 187.” Ans. 17.
4 We address the rejections in the order presented by the Examiner in the
Final Action.
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if ‘the party’ refers to ‘the first party’, ‘at least one other party’, ‘the first
counterparty’ or something else.” Id. at 4.
The Appellant contends that because the Examiner “fails to even once
identify one of ordinary skill in the art,” the rejection is improper. Appeal
Br. 9. We disagree.
The Appellant does not direct attention to any specific requirement
that the Examiner’s rejection must state the term “one of ordinary skill in the
art,” and we find no such requirement. Rather, “[t]he [E]xaminer’s focus
during examination of claims for compliance with the requirement for
definiteness of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second
paragraph, is whether the claim meets the threshold requirements of clarity
and precision set forth in the statute.” MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2173.02(II) (Jan. 2018). “If the language of the
claim is such that a person of ordinary skill in the art could not interpret the
metes and bounds of the claim so as to understand how to avoid
infringement, a rejection of the claim under 35 U.S.C. 112(b) or pre-AIA
35 U.S.C. 112, second paragraph, is appropriate.” Id. To establish a clear
record, the Examiner
should provide enough information in the Office action to permit
applicant to make a meaningful response, as the indefiniteness
rejection requires the applicant to explain or provide evidence as
to why the claim language is not indefinite or amend the claim.
For example, in making a prima facie case of indefiniteness, the
examiner should point out the specific term or phrase that is
indefinite, explain in detail why such term or phrase renders the
metes and bounds of the claim scope unclear and, whenever
practicable, indicate how the indefiniteness issues may be
resolved to overcome the rejection.
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Id. § 2173.02(III)(B). Here, the Examiner clearly articulates why the claim
language is indefinite.
The Appellant, however, provides no explanation, evidence, or
technical reasoning “why [the] claim language would be recognized by a
person of ordinary skill in the art as definite.” Id.
We therefore sustain the Examiner’s rejections under pre-AIA
35 U.S.C. § 112, second paragraph of claim 157–195.

Patentable Subject Matter
The Appellant argues the claims as a group. See Appeal Br. 6–8. We
select claim 187 as representative of the group, with claims 188–195
standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
35 U.S.C. § 101 Framework
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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
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settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (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 176; 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
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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
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). “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.
After the Appellant’s Briefs were filed and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (“USPTO”) published revised
guidance on the application of § 101. 2019 REVISED PATENT SUBJECT
MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) providing groupings of subject matter that are considered an abstract
idea; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
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or after January 7, 2019. Id.5 Under the 2019 Revised Guidance, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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.
See 2019 Revised Guidance, 84 Fed Reg. at 54, 56.
Step One of the Mayo/Alice Framework
Reciting a Judicial Exception
Under the first step of the Mayo/Alice framework and Step 1 of Office
Guidelines (see 2019 Revised Guidance, 84 Fed. Reg. at 53–54), the
Examiner first determines that claim 187 “is directed to a method,” i.e., a
process, one of the categories of statutory subject matter. Final Act. 5.

5 The 2019 Revised Guidance supersedes MPEP § 2106.04(II) and also
supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet
Identifying Abstract Ideas.” See 2019 Revised Guidance, 84 Fed. Reg. at 51
(“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.”).
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Under the first step of the Mayo/Alice framework and Step 2A,
Prong 1 of the 2019 Revised Guidelines, 84 Fed. Reg. at 54, the Examiner
determines that claim 187 is “directed to a method for identifying trade
prices of securities which is a fundamental business practice of offer-based
price optimization” and an abstract idea. Final Act. 6 (emphases omitted).
When viewed through the lens of the 2019 Revised Guidance, the
Examiner’s analysis depicts the claimed subject matter as a “[c]ertain
method[] of organizing human activity—fundamental economic principles
or practices (including hedging, insurance, mitigating risk).” 2019 Revised
Guidance, 84 Fed. Reg. at 52 (footnote omitted).
The Appellant contends that the Examiner’s characterization is in
error because the claim is not analogous or related to the concept of “price
testing” in OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir.
2015). Appeal Br. 6. The Appellant also argues that the Examiner
“unlawfully over simplifies the claim when saying that they are directed to
‘identifying trade prices of securities’” and that “[t]he claim[] include[s]
numerous meaningful limitations that are ignored by this characterization.”
Appeal Br. 6–7. For at least the following reasons, we disagree.
Before determining whether the claim at issue is directed to an
abstract idea, we first determine to what the claim is directed. The Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
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in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification, and the claim language, that the
focus of claim 187 is on an abstract idea, and not on any improvement to
technology and/or a technical field.
The Specification provides for “a trading application program
interface suitable for quantitative analysis trading.” Spec. ¶ 9. One object of
the invention is “to allow such users to identify and trade prices outside the
boundaries of a current trading application’s interactive trading rules and
according to their particular requirements and where suitable logic allows.”
Id. ¶ 12.
Consistent with the disclosure, claim 187 recites “[a] method,
comprising the steps of:” (a) “in a computer of an electronic trading system
having computers in a network, executing a first trade”; (b) “in response to
executing the first trade, providing, by the electronic trading system, the first
party with a period of exclusivity for trading in the item” that restricts
matching of an order with another party; (c) “while the period of exclusivity
is in effect, the electronic trading system accepting [and executing] trading
commands from excluded parties requesting trades in the item at prices less
favorable than the first price of the first trade”; (d) “during the period of
exclusivity, preventing, by the electronic trading system, cancelation of
second orders” under certain criteria; (e) “determining, by the electronic
trading system, that the first party has additional volume for trading on the
first side of the first trade”; (f) in response to an end of the exclusivity period
and determination of additional volume, “determining, by the electronic
trading system, matches with the additional volume and the second orders
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that are for the second side of the first trade in a price and time priority;” and
(g) “allowing, by the electronic trading system, cancelation of unmatched
portions of the second orders remaining after determining the matches with
the additional volume and the second orders.” Appeal Br. 13 (Claims. App).
When considered collectively and under the broadest reasonable
interpretation, the limitations of claim 187 recite a method for identifying
prices of and trading securities according to particular requirements.6
Limitations (a), (b), (d), (e), (f), and (g) of executing a trade, providing a
period of exclusivity, preventing cancelation of a trade, determining a party
has additional volume, determining matches, and allowing cancelation of
portions of orders are recited functionally without technical or technological
details on how, i.e., by what algorithm or on what basis/method, the
electronic trading system performs these steps. Limitations (a) and (c) of
executing a trade and accepting trading commands are similar to gathering
and transmitting information, which are activities ordinarily done in trading
securities and are extra-solution activities. See In re Bilski, 545 F.3d 943,
963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593
(2010) (characterizing data gathering steps as insignificant extra-solution
activity). Limitations (b), (d), and (g) of restricting matching, preventing
trades, and allowing cancelation under certain conditions are similar to
filtering data, which is an abstract idea (see BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)) and can

6 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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comprise an analysis of data based on rules, which can be performed
mentally (see FairWarning IP LLC v. Iatric Systems, Inc., 839 F.3d 1089,
1093 (Fed. Cir. 2106) (analyzing information according to certain rules is a
mental process). Limitations (e) and (f) of determining additional volume
and determining matched are steps of analyzing information, which also can
be performed mentally. See Electric Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (“[W]e have treated analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes”).
Similar to the concepts of hedging in Bilski, of “offer-based price
optimization’’ in OIP Technologies, 788 F.3d at 1362–63, and of “placing
an order based on displayed market information” in Trading Technologies
International, Inc. v. IBG LLC, 921 F.3d 1084, 1092 (Fed. Cir. 2019),
identifying prices of and trading securities according to particular
requirements is a fundamental economic practice. Accordingly, we
conclude the claim recites a fundamental economic practice, which is one of
the certain methods of organizing human activities identified in the 2019
Revised Guidance, 84 Fed. Reg. at 52.
Integration into a Practical Application
Under Step 2A, Prong 2 of the 2019 Revised Guidance, 84 Fed. Reg.
at 54, we look to whether the claim “appl[ies], rel[ies] on, or use[s] the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception,” i.e., “integrates a judicial exception
into a practical application.” Here, the only additional element recited in
claim 187 beyond the abstract idea is an electronic trading system — an
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element that, as the Examiner observes (Final Act. 6, 8), is described in the
Specification as a generic computer system with generic computers linked
by a network. See Spec. ¶¶ 27–34, Figs. 1, 2.
We find no indication in the Specification, nor does the Appellant
direct us to any indication, that the operations recited in claim 187 require
any specialized computer hardware or other inventive computer components,
i.e., a particular machine, invoke any asserted inventive programming, or
that the claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”). Accordingly,
we conclude claim 187 does not contain an element that imposes a
meaningful limit on the abstract idea that integrates the abstract idea into a
practical application.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 187 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework (corresponding to Step
2B of the 2019 Revised Guidance), we find supported the Examiner’s
determination that the limitations of claim 187, taken individually and as an
ordered combination, do not amount to significantly more than the judicial
exception, that the electronic trading system is “recited at a high level of
generality and [is] recited as performing generic computer functions
routinely used in computer applications,” and that the claimed system
“perform[s] generic computer functions that are well-understood, routine
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and conventional activities [and] amount[s] to no more than implementing
the abstract idea with a computerized system.” Final Act. 9; see also id.
at 10.
The Appellant argues that the Examiner’s “allegations amount to a
factual finding of the state of the art made without evidentiary support. It is
not readily apparent that all of these claim limitations were actually well
understood, routine, conventional or previously known to the industry at the
time of the filing of this application.” Appeal Br. 7. However, the Examiner
cites to cases cited in the USPTO’s 2014 Interim Guidance on Patent
Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014) (Final Act. 9)
as support for the finding that the claimed generic system performs functions
that are well-understood, routine, and conventional (see id.). In doing so, the
Examiner follows “Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO Memorandum, Robert
W. Bahr, Deputy Commissioner for Patent Examination Policy, April 19,
2018 (the “Berkheimer Memo”)).
The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual
issues.”’)). But, the court also held that “[w]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is
well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
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law.” Berkheimer, 881 F.3d at 1368 (emphasis added). This qualification
has been subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56 requires that
summary judgment be denied. In Berkheimer, there was such a
genuine dispute for claims 4–7, but not for claims 1–3 and 9. . . .
[I]n accordance with Alice, we have repeatedly recognized the
absence of a genuine dispute as to eligibility for the many claims
that have been defended as involving an inventive concept based
merely on the idea of using existing computers or the Internet to
carry out conventional processes, with no alteration of computer
functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018) (Moore, J., concurring); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1368 (Fed. Cir. 2018) (“A factual allegation or dispute should not
automatically take the determination out of the court’s hands; rather, there
needs to be justification for why additional evidence must be considered—
the default being a legal determination.”). Here, the Specification
indisputably shows the claimed computing system was conventional at the
time of filing. And the Appellant’s simple statement that the functions are
not well-understood, routine, and conventional (Appeal Br. 7) is an
unsupported allegation. Accordingly, no genuine issue of material fact
exists as to the well-understood, routine, or conventional nature of the
system as claimed.
The Appellant also argues that the claim elements amount to
significantly more than the abstract idea because, like BASCOM, “the claims
here apply ideas related to computers and networks in a more efficient
manner.” Appeal Br. 8. However, the Appellant does not show how the
claim here is similar to BASCOM’s “particular arrangement of elements
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[that] is a technical improvement over prior art ways of filtering such
content.” 827 F.3d at 1350. The patent at issue in BASCOM “claim[ed] a
technology-based solution (not an abstract-idea-based solution implemented
with generic technical components in a conventional way) to filter content
on the Internet that overcomes existing problems with other Internet filtering
systems.” Id. at 1351. The court determined that “[b]y taking a prior art
filter solution (one-size-fits-all filter at the ISP server) and making it more
dynamic and efficient (providing individualized filtering at the ISP server),
the claimed invention represents a ‘software-based invention[ ] that
improve[s] the performance of the computer system itself.’” Id. Here, there
is no such improvement to the claimed computer component itself.
The Appellant does not offer additional reasoning or argument why
the claim “[a]dds a specific limitation or combination of limitations that [is]
not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present.” 2019 Revised
Guidance, 84 Fed. Reg. at 56. The claimed generic system operates in its
ordinary and conventional capacity to perform the well-understood, routine,
and conventional functions of receiving and transmitting data (i.e., executing
a trade and accepting commands), analyzing data (i.e., determining volume
and matches), filtering data (i.e., restricting matches and preventing
cancelations), and performing an action based on the analysis (i.e., allowing
cancelation). See Spec. ¶¶ 27–34 (describing a generic computer system);
Electric Power, 830 F.3d at 1354–55 (gathering, sending, monitoring,
analyzing, selecting, and presenting information does not transform the
abstract process into a patent-eligible invention); Alice, 573 U.S. at 226
(“Nearly every computer will include a ‘communications controller’ and
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‘data storage unit’ capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”); BASCOM,
827 F.3d at 1349 (filtering, generally, is not inventive). We note that, as
discussed above, the claim simply recites the functional results to be
achieved by a conventional computer system. The claim “provides only a
result-oriented solution[] with insufficient detail for how a computer
accomplishes it. Our law demands more.” Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
Considered as an ordered combination, the components of Appellant’s
claim 187 add nothing that is not already present when the steps are
considered separately. The sequence of receiving and transmitting data (i.e.,
executing a trade, providing a period, accepting commands), analyzing data
(i.e., determining volume and matches), filtering data (i.e., preventing
cancelations), and performing an action based on the analysis (i.e., allowing
cancelation) is equally generic and conventional or otherwise held to be
abstract. See Electric Power, 830 F.3d at 1354–56 (holding that the
sequence of gathering, analyzing, and displaying in real-time was abstract);
OIP Techs., 788 F.3d at 1363–64 (holding that sequence of sending,
communicating, gathering, determining, selecting, and sending data), and
FairWarning., 839 F.3d at 1095 (holding that sequence of generating a rule
related to accessing information, applying the rule, and storing and
announcing the results was abstract). The ordered combination of the steps
is, therefore, ordinary and conventional.
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of the claim do not transform the claim into significantly
more than the abstract idea.
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We therefore sustain the Examiner’s rejection under 35 U.S.C. § 101
of claim 187 and of claims 188–195, the rejection of which stands with
claim 187.
Obviousness
The Examiner determines that the combination of Keith and Donato
teaches the method claimed in independent claim 187. See Final Act. 12.
Specifically, the Examiner finds that Keith teaches limitations (b), (c), (d),
and (g) of providing a period of exclusivity restricting matching, accepting
trading commands from excluded parties, canceling second orders, and
allowing cancelation of unmatched portions. See Final Act. 12–13; see also
Ans. 18–19. The Examiner finds that Donato teaches limitation (e) of
determining additional volume, and that Keith and Donato together teach
limitations (a) and (f) of executing a first trade and determining matches
with the additional volume. See Final Act. 13–14. The Examiner
determines it would have been obvious to one of ordinary skill in the art to
combine Keith and Donato to “provide[] a flexible and user responsive
trading system that encourages users to post bids, and encourages other users
to make offers on such bids.” Id. at 15.
We find the Examiner has established a prima facie case of
obviousness as the Examiner has provided articulated reasoning with
rational underpinning to support a legal conclusion of obviousness. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Therefore, the burden
shifts to the Appellant to rebut the Examiner’s prima facie case by distinctly
and specifically pointing out the supposed errors in the Examiner’s action, as
well as the specific distinctions believed to render the claims patentable over
the applied references. See 37 C.F.R. § 41.37(c)(iv) (“A statement which
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merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); see also 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.”).
The Appellant has failed to carry their burden. Rather than distinctly
pointing out the Examiner’s supposed errors, the Appellant has made mere
general allegations that the claims define a patentable invention because the
Examiner has failed to establish a prima facie case of unpatentability,
without specifically articulating what gaps exist between the cited references
and the claims. For example, although the Appellant appears to contend that
Keith does not teach limitations (c) and (d) of accepting trading commands
and canceling second orders during the period of exclusivity (see Appeal
Br. 10–12), the Appellant does not provide persuasive arguments or
evidence to support that contention.
Viewed as a whole, the Appellant’s arguments amount to a recitation
of the claim language and a quotation of each of the cited portions of the
prior art reference, from which the Appellant summarily concludes that the
quoted language “do[es] not teach or suggest anything related to exclusivity,
cancelation prevention, or accepting of orders during exclusivity. There is
simply no discussion that appears relevant to these claim limitations at all in
these citations.” Appeal Br. 10–12. Other than seeking direct quotations of
identical terminology, the Appellant has not identified error in the
Examiner’s interpretations of the cited references or the claim language,
such as why the Examiner’s interpretation of Keith’s “holding tank” as
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equivalent to the claimed “period of exclusivity” (Ans. 18) or the findings
regarding cancelation prevention and accepting orders during exclusivity are
in error. The Appellant may well disagree with how the Examiner
interpreted and applied the references, but the Appellant offers no
substantive arguments to rebut the specific underlying factual findings made
by the Examiner in support of the ultimate legal conclusion of obviousness.
And we decline to examine the claim sua sponte, looking for distinctions
over the prior art. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed.
Cir. 1991) (“It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”).
In the absence of a more detailed explanation, we are not persuaded of
error on the part of the Examiner. See Jung, 637 F.3d. at 1365 (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner's rejections,” citing Ex Parte Frye, Appeal No. 2009-
006013, 2010 WL 889747, at *4 (BPAI Feb. 26, 2010) (precedential) (“The
panel then reviews the obviousness rejection for error based upon the issues
identified by appellant, and in light of the arguments and evidence produced
thereon.”)).
We therefore sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) as obvious over Keith and Donato of independent claim 187 and
dependent claims 188, 189, and 191–195, which were not argued separately.
We also sustain the rejection under 35 U.S.C. § 103(a) as obvious over
Keith, Donato, and Official Notice of claim 190, for which no separate
argument was presented.
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CONCLUSION
The Examiner’s decision to reject claims 187–195 is sustained.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
187–195 112, second
paragraph
Indefiniteness 187–195
187–195 101 Eligibility 187–195
187–189, 191–195 103 Keith, Donato 187–189,
191–195

190 103 Keith, Donato,
Official Notice
190
Overall Outcome 187–195
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).

AFFIRMED