INTERCONTINENTALEXCHANGE, INC.

Patent Trials and Appeals Board

Jan 15, 2021

2020005072 (P.T.A.B. Jan. 15, 2021)

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.
13/625,423 09/24/2012 Charles A. Vice ICE-11-1291R 5132
35811 7590 01/15/2021
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
01/15/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pto.phil@us.dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHARLES A. VICE, THOMAS FARLEY,
EDWARD BAGINSKI, GREG HAMAMGIAN,
SIMON SHLYAYFER, MAYUR KAPANI,
and PETRE ALEXANDRESCU
____________

Appeal 2020-005072
Application 13/625,423
Technology Center 3600
____________

Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–24. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed January 16, 2020) and Reply Brief (“Reply Br.,” filed June 26, 2020),
and the Examiner’s Answer (“Ans.,” mailed April 30, 2020) and Final
Office Action (“Final Act.,” mailed July 25, 2019). Appellant identifies
Intercontinental Exchange Holdings, Inc. as the real party in interest (Appeal
Br. 1).
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We AFFIRM.
CLAIMED INVENTION
The Specification describes that “[t]he disclosure is generally related
to limiting unwanted price movement of a financial instrument” (Spec. ¶ 2).
Claims 1 and 13 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method of limiting price movements in an
electronic server system, comprising:
providing an exchange server comprising at least one
matching engine module, said exchange server comprising at
least one processor executing instructions that cause the
exchange server to perform the steps of:
[(a)] establishing an interval price limit (IPL) period that
defines a predetermined length of time commencing at a start
time;
[(b)] establishing an anchor price that defines a
benchmark value of a financial instrument by communicating
with one or more market participant terminals to determine a
current market value or price level of the particular financial
instrument;
[(c)] establishing an IPL amount that defines a
permissible increase or decrease in the anchor price of the
financial instrument during the IPL period;
[(d)] receiving and matching, via the at least one
matching engine module, at least one buy order and at least one
sell order for the financial instrument during the IPL period,
thereby generating at least one matched trade having a trade
price, said trade price comprising a price that is independent of
the anchor price;
[(e)] comparing the trade price to the anchor price upon
completion of said matching of the at least one buy order and the
at least one sell order;
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[(f)] determining that the trade price is within the IPL
amount of the anchor price for a first of the at least one matched
trade and executing the first of the at least one matched trade;
[(g)] determining that the trade price is not within the IPL
amount of the anchor price for a second of the at least one
matched trade;
[(h)] initiating a hold period having a predetermined hold
time;
[(i)] generating an alert message;
[(j)] transmitting the alert message, over a network, to
one or more trading terminals in communication with the
exchange server;
[(k)] preventing the second of the at least one matched
trade from executing during said hold period, said executing and
preventing both occurring during the IPL period; and
[(l)] after said IPL period, establishing an updated IPL
and an updated anchor price by determining an updated current
market value or price level of the particular financial instrument.
REJECTION
Claims 1–24 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 5–16).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, “[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.” 35 U.S.C.
§ 101. The Supreme Court, however, has long interpreted § 101 to include
an implicit exception: “[l]aws of nature, natural phenomena, and abstract
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ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019, for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7,
2019) (the “2019 Revised Guidance”). 2 That guidance revised the

2 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates
the revised guidance and subsequent updates at Section 2106 (9th ed.
Rev. 10.2019, rev. June 2020).
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USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding 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 first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, apply,
rely on, or use 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. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
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amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
Here, in rejecting the pending claims under § 101, the Examiner
determined that claim 1 recites “establishing price limits and time intervals,
and prevent[ing] matched trades that fall outside the price limits within the
time intervals from executing, . . . while generating a notification alert”; that
“[f]acilitating the use of price limits on matched trades in financial
instrument trading is a basic economic practice and, thus, an abstract idea”;
and that the recited abstract idea is not integrated into a practical application
(Final Act. 12–15). The Examiner also determined that claim 1 does not
include additional elements sufficient to amount to significantly more than
the abstract idea itself (id. at 15–16). And the Examiner determined that the
remaining claims are patent ineligible for substantially similar reasons (id.
at 16).
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
We are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 5–12). 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 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 (including
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the claim language) that claim 1 focuses on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is titled “INTERVAL PRICE LIMIT,” and
describes, in the Background section, that “[s]harp price movements (either
on the buy side or sell side) of financial instruments over relatively short
periods of time can adversely affect financial markets, and even cause a
market to crash” (Spec. ¶ 3). “Accordingly, there is a need for a system and
method of recognizing and limiting such unwanted price movements, all
without unduly hindering trading activities” (id.).
The claimed invention is ostensibly intended to satisfy this need by
providing a system and method of limiting price movement of a financial
instrument (Spec. ¶ 4). In accordance with the disclosed method, an interval
price limit (“IPL”) period, which defines a predetermined length of time
commencing at a start time, is established, along with an IPL amount that
defines a permissible increase or decrease in an anchor price of a financial
instrument during the IPL period (id.). Buy and sell orders received for the
financial instrument during the IPL period are matched to generate at least
one matched trade having a trade price; the trade price is compared to the
anchor price, and only if the trade price is within the IPL amount of the
anchor price, is the at least one matched trade executed (id.).
Consistent with this disclosure, claim 1 recites a method for limiting
price movements in an electronic server system comprising the following
steps performed by an exchange server comprising at least one matching
engine module and at least one processor: (1) establishing an interval price
limit (IPL) period, i.e., “establishing an interval price limit (IPL) period that
defines a predetermined length of time commencing at a start time”
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(step (a)); (2) establishing an anchor price of a financial instrument, i.e.,
“establishing an anchor price that defines a benchmark value of a financial
instrument by communicating with one or more market participant terminals
to determine a current market value or price level of the particular financial
instrument” (step (b)); (3) “establishing an IPL amount that defines a
permissible increase or decrease in the anchor price of the financial
instrument during the IPL period” (step (c)); (4) receiving buy and sell
orders during the IPL period and generating at least one matched trade
having a trade price, i.e.,
receiving and matching, via the at least one matching engine
module, at least one buy order and at least one sell order for the
financial instrument during the IPL period, thereby generating at
least one matched trade having a trade price, said trade price
comprising a price that is independent of the anchor price
(step (d)); (5) comparing the trade price to the anchor price and executing
the matched trade if the trade price is within the IPR amount of the anchor
price, i.e.,
comparing the trade price to the anchor price upon completion of
said matching of the at least one buy order and the at least one
sell order; [and]
determining that the trade price is within the IPL amount of the
anchor price for a first of the at least one matched trade and
executing the first of the at least one matched trade
(steps (e) and (f)); (6) if the trade price is not within the IPL amount of the
anchor price, generating and transmitting an alert message to one or more
trading terminals, and preventing the matched trade from executing during a
predetermined hold period, occurring during the IPL period, i.e.,
determining that the trade price is not within the IPL amount of
the anchor price for a second of the at least one matched trade;
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initiating a hold period having a predetermined hold time;
generating an alert message;
transmitting the alert message, over a network, to one or more
trading terminals in communication with the exchange server;
[and]
preventing the second of the at least one matched trade from
executing during said hold period, said executing and preventing
both occurring during the IPL period
(steps (g) through (k)); and (6) “after said IPL period, establishing an
updated IPL and an updated anchor price by determining an updated current
market value or price level of the particular financial instrument” (step (l)).
Appellant describes that the invention is “generally directed to a
system that monitors real-time market data, uses that data to control price
movements . . . to within a permissible range, and most notably,
automatically generates and transmits alerts to user systems when the system
detects impermissible shifts caused by inbound pricing data” (Appeal Br. 5).
Appellant summarily asserts, “[t]here is nothing abstract or fundamental
about this combination of features and functions; and as a result, the
Appellant’s invention does not fall within any articulated category of
judicial exception” (id.). But, Appellant does not explain why, and we fail
to see why, the claim limitations, when given their broadest reasonable
interpretation, do not recite “facilitating the use of price limits on matched
trades in financial instrument trading,” and cannot be characterized
reasonably as reciting a fundamental economic practice and, therefore, an
abstract idea, as the Examiner determined.
We also are not persuaded by Appellant’s argument that claim 1 is not
“directed to” an abstract idea because the claim includes additional elements
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that integrate any recited abstract idea into a practical application (Appeal
Br. 6–12).
The 2019 Revised Guidance references MPEP, Ninth Edition
(rev. Jan 2018) (available at https://mpep.uspto.gov/RDMS/MPEP/
E9_R-08.2017.) § 2106.05(a)–(c) and (e) in non-exhaustively listing
considerations indicative that an additional element or combination of
elements may have integrated the recited judicial exception into a practical
application. 2019 Revised Guidance, 84 Fed. Reg. at 55. In particular, the
Guidance describes that an additional element may have integrated the
judicial exception into a practical application if the additional element
(1) reflects an improvement in the functioning of a computer or an
improvement to other technology or technical field; (2) applies or uses the
judicial exception to effect a particular treatment or prophylaxis for a disease
or medical condition; (3) implements the judicial exception with, or uses the
judicial exception with, a particular machine or manufacture integral to the
claim; (4) effects a transformation or reduction of an article to a different
state or thing; or (5) applies or uses the judicial exception in some other
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. Id. At the
same time, the Guidance makes clear that merely including instructions to
implement an abstract idea on a computer, or merely using a computer as a
tool to perform an abstract idea; adding insignificant extra-solution activity
to the judicial exception; or only generally linking the use of the judicial
exception to a particular technological environment or field are not sufficient
to integrate the judicial exception into a practical application. Id.
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Appellant asserts that “the claims describe reconfiguring a server to
operate differently from conventional systems” by “establishing an interval
price limit (IPL) amount that defines permissible price movements during a
particular period”; “assessing matched trades in view of the IPL amount;”
“determining whether prices of the matched trade violates the IPL amount;”
and “executing those trades that do not violate the IPL amount while at the
same time preventing execution of trades that are in violation of the IPL
amount” (Appeal Br. 6). Appellant also asserts that “the server is
specifically configured to automatically generate and transmit alerts to user
systems when the server detects impermissible shifts caused by inbound
pricing data” (id.).
Appellant argues that “[u]nder any standards, the act of reconfiguring
a server to execute differently from every other server in the field of
endeavor certainly amounts to a practical application under the 2019
Guidance” (Appeal Br. 6). Yet, the 2019 Revised Guidance could not be
clearer that merely using a computer (here, a server) as a tool to perform an
abstract idea is not sufficient to integrate the judicial exception, i.e., the
recited abstract idea, into a practical application. 2019 Revised Guidance,
84 Fed. Reg. at 55.
We also are not persuaded of Examiner error to the extent Appellant
maintains that claim 1 is patent eligible because the claim does not attempt
to “monopolize the Examiner-defined alleged abstract idea (i.e., limiting
price variations on matched trades in a [sic] financial instrument trading)”
(Appeal Br. 8). Although the Supreme Court has described “the concern
that drives [the exclusion of abstract ideas from patent-eligible subject
matter] as one of pre-emption,” Alice Corp., 573 U.S. at 216, characterizing
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preemption as a driving concern for patent eligibility is not the same as
characterizing preemption as the sole test for patent eligibility. “The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability” and “[f]or this reason, questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility.” Id.
Appellant’s further argument that the claimed invention improves the
functioning of a computer or other technology (Appeal Br. 7–10) is similarly
unavailing.
Referencing paragraph 10 of the Specification, Appellant notes that
with the near instantaneous execution of orders in electronic trading systems,
it is possible for prices to move sharply in very short periods of time; and
Appellant describes that such drastic and rapid price movements can
adversely affect financial markets, and may even cause a market to crash
(Appeal Br. 8). Appellant, thus, explains that unlike conventional electronic
server systems that either stop all trading activity once a violation is
detected, or continue to permit all activity despite the existence of a
violation, and, thereby, either reduce system efficiency and throughput
capacity (i.e., by stopping all activity, including activity that does not
constitute a violation) or perform excess operations (e.g., executing
transactions that violate permissible limits; initiating corrective actions to
remedy the violating transactions, etc.), which unnecessarily deplete system
resources (id. at 7), the claimed invention only suspends trading activity that
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violates the systematic limits imposed by the system, and once a violation is
detected, prevents further violations and generates and transmits an alert to
user systems, thereby providing real-time notice of the violation(s) (id. at 9).
Appellant asserts that this combination of features and functions
constitutes an improvement to technology (Appeal Br. 9). But we are not
persuaded that limiting price movement violations without fully suspending
all operations, and automatically generating and issuing alerts when
violations are detected is a technological improvement as opposed to an
improvement to the abstract idea of limiting price variations on matched
trades in financial instrument trading, which is not enough for patent
eligibility. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed.
Cir. 2018) (“[P]atent law does not protect such claims[, i.e., claims to an
asserted advance in the realm of abstract ideas], without more, no matter
how groundbreaking the advance.”). This is particularly so where, as here,
we find no indication in the Specification, nor, for that matter, does
Appellant direct us to any indication, that the operations recited in claim 1
require any specialized computer hardware or other inventive computer
components, invoke any allegedly inventive programming, or that the
claimed invention is implemented using other than generic computer
components as tools operating in their normal, routine, and ordinary
capacity. Considered in light of the Specification, the claimed invention
clearly appears focused on eliminating and/or significantly reducing the
adverse effects on financial markets that can be caused by drastic and rapid
price movements, and not on any claimed means for achieving that goal that
improves technology.
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We also note for the record that the relevant question under Step 2A,
Prong 2 is not whether the claimed invention itself is a practical application;
instead, the question is whether the claim includes additional elements
beyond the judicial exception that integrate the judicial exception into a
practical application. The Examiner determined here, and we agree, that the
only additional element recited in claim 1 beyond the abstract idea is “an
exchange server comprising at least one matching engine module. . . [and] at
least one processor,” i.e., generic computer components (Final Act. 14; see
also Spec. ¶¶ 12, 26, 27). “And, after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.” See DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
Appellant attempts to draw an analogy between claim 1 and
hypothetical claim 1 of Example 42 of the USPTO’s 2019 Subject Matter
Eligibility Examples: Abstract Ideas (the “Eligibility Examples”) as
supporting its position (Appeal Br. 10–12).3 Yet, we can find no parallel
between hypothetical claim 1 of Example 42 and pending claim 1 here at
issue.
The USPTO describes in the “Background” section of Example 42
that patients with chronic or undiagnosed illnesses often must visit several
different medical providers for diagnosis and treatment, and that these
physicians may be physically separate from, and unaware of each other.
Eligibility Examples 17. During a visit, each medical provider records
information about the patient’s condition in the provider’s local patient

3 Available at https://www.uspto.gov/sites/default/files/documents/
101_examples_37to42_20190107.pdf
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records. Id. However, because these records often are stored in a non-
standard format (i.e., a format based on the particular hardware or software
platform in use in the medical provider’s office), it is difficult for a medical
provider to share updated information about a patient’s condition with other
health care providers. Id. To address this problem, the hypothetical
appellant in Example 42 invented a network-based patient management
method that “collects, converts[,] and consolidates patient information from
various physicians and health-care providers into a standardized format,
stores [the information] in network-based storage devices, and generates
messages notifying health care providers or patients whenever that
information is updated.” Id.
Applying the 2019 Revised Guidance, the Office determines that
hypothetical claim 14 recites a method of organizing human activity and,

4 Claim 1 of Example 42 recites:
A method comprising:
a) storing information in a standardized format about a patient’s
condition in a plurality of network-based non-transitory storage devices
having a collection of medical records stored thereon;
b) providing remote access to users over a network so any one of
the users can update the information about the patient’s condition in the
collection of medical records in real time through a graphical user
interface, wherein the one of the users provides the updated information
in a non-standardized format dependent on the hardware and software
platform used by the one of the users;
c) converting, by a content server, the non-standardized updated
information into the standardized format,
d) storing the standardized updated information about the
patient’s condition in the collection of medical records in the
standardized format;
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therefore, an abstract idea, i.e., that “[t]he claimed invention is a method that
allows for users to access patients’ medical records and receive updated
patient information in real time from other users, which is a method of
managing interactions between people.” Id. at 18. However, the Office
determines that claim 1 is nonetheless patent eligible because it integrates
the recited abstract idea into a practical application, i.e.,
[t]he claim recites a combination of additional elements
including storing information, providing remote access over a
network, converting updated information that was input by a user
in a non-standardized form to a standardized format,
automatically generating a message whenever updated
information is stored, and transmitting the message to all of the
users. . . . Specifically, the additional elements recite a specific
improvement over prior art systems by allowing remote users to
share information in real time in a standardized format
regardless of the format in which the information was input by
the user.
Id. at 18–19 (emphasis added).
Appellant maintains here that, “[s]imilar to Example 42, Claim l,
Appellant’s Claim 1, as a whole, integrates the alleged judicial exception
(i.e., limiting price variations on matched trades in a financial instrument
trading) into a practical application that provides a particular improvement
over prior art systems” (Appeal Br. 11). Appellant, thus, asserts that

e) automatically generating a message containing the updated
information about the patient’s condition by the content server
whenever updated information has been stored; and
f) transmitting the message to all of the users over the computer
network in real time, so that each user has immediate access to up-to-
date patient information.
Eligibility Examples 18.
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“similar to Example 42, Claim 1, Appellant’s claimed invention includes
automatic generation (e.g., establishing steps) performed to establish the
claimed (dynamic) IPL amount, which is what enables the claimed invention
to both reject violations and at the same time accept/ execute non-violating
transactions” (id.). Appellant further asserts that claim 1 “generates and
transmits an alert once violations are detected, which is also similar to
Example 42” (id. (citing Spec. ¶¶ 20, 22–26, 30, 43)). Yet, the difficulty
with Appellant’s argument is that hypothetical claim 1 of Example 42 was
deemed patent eligible because it provided a specific improvement over
prior systems by allowing remote users to share information in real time in a
standardized format regardless of the format in which the information was
originally input (see Eligibility Examples 18–19). Hypothetical claim 1,
thus, addressed technological difficulties related to incompatible computer
formats, disparate geographic locations, and the untimely sharing of
information (see id. at 17). We are not persuaded that a comparable
improvement is present here.
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim beyond the abstract idea are no more
than generic computer components used as tools to perform the recited
abstract idea. As such, they do not integrate the abstract idea into a practical
application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly generic
computer implementation is not generally the sort of ‘additional featur[e]’
that provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
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566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is
directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Referencing steps (b) and (g) through (l), as recited in claim 1,
Appellant charges that the § 101 rejection cannot be sustained because these
limitations “certainly amount to significantly more than any abstract idea,
and none can possibly be construed as well-understood, routine, and
conventional in this art. As such, the Appellant’s claims indeed provide an
inventive concept” (Appeal Br. 12). But, that argument is not persuasive at
least because the features that Appellant identifies, i.e., steps (b) and (g)
through (l), are part of the abstract idea itself; they are not additional
elements to be considered in determining whether claim 1 includes
additional elements or a combination of elements sufficient to amount to
significantly more than the judicial exception.
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It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72–73
(requiring that “a process that focuses upon the use of a natural law also
contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”
(emphasis added) (citation omitted)). In other words, the inventive concept
under step two of the Mayo/Alice test cannot be the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”).
Here, the Examiner determined and we agree, that the only additional
element recited in claim 1 beyond the abstract idea is “an exchange server
comprising at least one matching engine module. . . [and] at least one
processor,” i.e., generic computer components (Final Act. 14) — a
determination amply supported by and fully consistent with the Specification
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(see, e.g., Spec. ¶¶ 12, 26, 27).5 Appellant cannot reasonably maintain that
there is insufficient factual support for the Examiner’s determination that the
operation of these components is well-understood, routine, or conventional,
where, as here, there is nothing in the Specification to indicate that the
operations recited in claim 1 require any specialized hardware or inventive
computer components or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions, e.g., receiving and processing information. Indeed, the Federal
Circuit, in accordance with Alice, has “repeatedly recognized the absence of
a genuine dispute as to eligibility” where claims 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, 890 F.3d at 1373
(Moore, J., concurring) (internal citations omitted); see also BSG Tech LLC,
899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract
features of the claimed inventions, alone or in combination, are not well-
understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we

5 The Berkheimer Memorandum expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is well-understood, routine or conventional with “[a] citation to an express
statement in the specification . . . that demonstrates the well-understood,
routine, conventional nature of the additional element(s)” (id. at 3).
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sustain the Examiner’s rejection of claim 1, and claims 2–24, which fall with
claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–24 101 Eligibility 1–24
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)(1)(iv).
AFFIRMED