Jacob Pechenik et al.

Patent Trials and Appeals Board

Jun 2, 2020

2018005790 (P.T.A.B. Jun. 2, 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.
13/312,004 12/06/2011 Jacob Pechenik YJI-08-1292DIV 7678
35811 7590 06/02/2020
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
06/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pto.phil@us.dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JACOB PECHENIK, GREGORY CAMPBELL,
and BLAKE BARNES
____________

Appeal 2018-005790
Application 13/312,0041
Technology Center 3600
____________

Before MICHAEL W. KIM, MURRIEL E. CRAWFORD, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
Non-final rejection of claims 1–27. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM.

1 Appellant identifies “YellowJacket, Inc.” as the real party in interest.
Appeal Br. 1.
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THE INVENTION
Appellant’s application covers converting a trade transaction
agreement into allowable structured products. Title.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method of electronically
converting a data set into a plurality of data subsets that are
each compatible for processing by at least one from among
multiple processing facilities, the method comprising:
receiving, electronically by at least one computing
device, the data set comprising trade information defining a
trade transaction agreement between a first party and a second
party, said at least one computing device including a non-
transitory memory storing computer-readable instructions and a
processor executing said computer-readable instructions, said
computer-readable instructions causing the at least one
computing device to perform the steps of:
converting the data set into a plurality of data subsets that
define a plurality of structured products based on the trade
information, each of the plurality of structured products being
defined to comply with product specifications of one or more
processing facilities such that at least two of the defined
structured products are defined according to different product
specifications associated with different processing facilities,
said converting comprising:
electronically receiving a selection of a pre-defined
grouping of one or more structured product types,
identifying, based on the selected pre-defined
grouping, additional information needed to define each of the
plurality of structured products,
electronically receiving a subset of the additional
information to define each individual structured product in the
plurality of structured products;
comparing the received subset of the additional
information to product specifications of one or more of the
multiple processing facilities to identify any further information
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still needed to define each individual structured product;
electronically receiving the further information
needed to define each individual structured product in the
plurality of structured products;
defining, based on the received additional
information, the individual structured products such that each is
compatible to be received and processed by at least one of the
multiple processing facilities, and
defining at least two of the individual structured
products according to different product specifications of at least
two different processing facilities such that said at least two of
the individual structured products are compatible for processing
by the at least two different processing facilities;
determining a sequence for submission of each
individual structured product to at least one of the multiple
processing facilities, the sequence comprising one of submitting
the structured products individually or as a bundle; and
electronically submitting, according to the
determined sequence, to the multiple processing facilities for
processing, each individual structured product including
identification information of at least one of the first party to the
trade transaction agreement, or a representative thereof, and the
second party to the trade transaction agreement, or a
representative thereof.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Glinberg US 2006/0059069 A1 Mar. 16, 2006
Pinkava US 2006/0224494 A1 Oct. 5, 2006
Wyatt US 2007/0022093 A1 Jan. 25, 2007
The following rejections are before us for review.23

2 The Examiner withdrew the rejection of claims 1 and 22 under 35 U.S.C. §
112, second paragraph. (Answer 3).
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Claims 1-27 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to a judicial exception without significantly more.
Claims 1-27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pinkava in view of Glinberg in further in view of Wyatt.

FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 3–8 in the
Non–final Office Action4 and on pages 5–23 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 Rejection.

35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1–27 under 35 U.S.C. § 101.
The Appellants argue claims 1–27 as a group. (Appeal Br. 8). We
select claim 1 as the representative claim for this group, and so the
remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)
(2016).

3 The Non–final on page 2 included an Objection to the Specification.
Appellant responds to the Objection on pages 6–7 of the Appeal Brief. On
pages 4–5 of the Answer, the Examiner re–asserts the Objection and
responds to Appellant’s arguments. But, an Objection to the Specification is
not an appealable to PTAB. This relates to a petitionable matter and not to
an appealable matter. See In re Schneider, 481 F.2d 1350, 1356–57 (CCPA
1973) and In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See also the
MPEP § 1002.02(c), item 4. Thus, the relief sought by the Appellant would
have been properly presented by a petition to the Commissioner under 37
C.F.R. § 1.181 instead of by appeal to this Board. Accordingly, we will not
further consider this issue.

4 All references to the Non-Final Office Action refer to the Non–final Office
Action mailed on Apr. 7, 2017.
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An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See id. at 219 (“On their face, the claims before us are drawn to the concept
of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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.
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252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
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 (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.
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In January 2019, 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)
(“Guidance”).5 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6
Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
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(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.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, 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 Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate 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.” Guidance, 84
Fed. Reg. at 53; see also MPEP § 2106.05(a)–(c), (e)–(h).
Accordingly, we find the following:
The Specification states:
Submission and processing at a post-trade processing
facility of a trade transaction agreement between a first party
and a second party may be a complicated and time consuming
process based upon various features of the trade transaction
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agreement. For example, trade transaction agreements executed
Over-the-Counter (OTC) may often be composed of bundles of
“vanilla” products such as a swap, call, or put. Post-trade
processing facilities, such as clearing houses, often do not list
or accept submission of these complex bundles, instead
requiring that the bundles be decomposed prior to submission
and submitted as one or more listed products.
Specification ¶ 3.
Manually submitting the products independently, instead of as a
package/bundle, introduces a number of potential problems.
First, the submission is time consuming due to the necessity to
separate, analyze, and individually submit and process the
various components of the transaction agreement. Second, the
existing process is highly manual and as such leads to a large
number of mistakes due to human error. Third, reconciliation is
confusing and complicated because a single trade transaction
agreement may necessitate reviewing multiple responses from
the post-trade processing facilities.
Id. ¶ 4.
Claim 1 recites in pertinent part:
receiving, . . . [a] data set comprising trade information
defining a trade transaction agreement between a first party and
a second party,

. . .

converting the data set into a plurality of data subsets that
define a plurality of structured products based on the trade
information, each of the plurality of structured products being
defined to comply with product specifications of one or more
processing facilities such that at least two of the defined
structured products are defined according to different product
specifications associated with different processing facilities,
said converting comprising: . . . receiving a selection of a
pre-defined grouping of one or more structured product types,
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identifying, based on the selected pre-defined grouping,
additional information needed to define each of the plurality of
structured products,
. . . .receiving a subset of the additional information to
define each individual structured product in the plurality of
structured products;
comparing the received subset of the additional
information to product specifications of one or more of the
multiple processing facilities to identify any further information
still needed to define each individual structured product;
. . .receiving the further information needed to define
each individual structured product in the plurality of structured
products;
defining, based on the received additional information,
the individual structured products such that each is compatible
to be received and processed by at least one of the multiple
processing facilities, and
defining at least two of the individual structured products
according to different product specifications of at least two
different processing facilities such that said at least two of the
individual structured products are compatible for processing by
the at least two different processing facilities;
determining a sequence for submission of each individual
structured product to at least one of the multiple processing
facilities, the sequence comprising one of submitting the
structured products individually or as a bundle; and
. . . submitting, according to the determined sequence, to
the multiple processing facilities for processing, each individual
structured product including identification information of at
least one of the first party to the trade transaction agreement, or
a representative thereof, and the second party to the trade
transaction agreement, or a representative thereof.

The Examiner found that the claims are directed to “converting a
trade transaction agreement into one or more structured products for
submission to a post-trade processing facility.” (Non-Final Act. 3).
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Therefore, we find that claim 1 recites processing a trade transaction
of a plurality of structured products defined by an agreement to comply with
product specifications of one or more processing facilities, and thus
constitutes, 1) a certain method of organizing human activity, namely
commercial or legal interactions (agreements in the form of contracts), and
2) a mental process.
Concerning item 1, claim 1 recites, “trade information defining a trade
transaction agreement between a first party and a second party,” and
“determining a sequence for submission of each individual structured
product to at least one of the multiple processing facilities, . . . each
individual structured product including identification information of at least
one of the first party to the trade transaction agreement, or a representative
thereof, and the second party to the trade transaction agreement, or a
representative thereof.” Identifying parties to an agreement, enumerating the
terms of the agreement and how the agreement is to be executed, are
fundamental elements of contract formation, which is one of certain methods
of organizing human activity that are judicial exceptions. Guidance, 84 Fed.
Reg. at 52, citing Alice, 573 U.S. at 219–20.
As to item 2, the mental process aspect of claim 1, we find that the
following steps mimic human thought processes, particularly, the italicized
functions of: converting the data set into a plurality of data subsets that
define a plurality of structured products based on the trade information, . . .
receiving a selection of a pre-defined grouping of one or more structured
product types, identifying, based on the selected pre-defined grouping,
additional information needed to define each of the plurality of structured
products, receiving a subset of the additional information to define each
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individual structured product in the plurality of structured products;
comparing the received subset of the additional information to product
specifications of one or more of the multiple processing facilities to identify
any further information still needed to define each individual structured
product; . . . receiving the further information needed to define each
individual structured product in the plurality of structured products; defining,
based on the received additional information, the individual structured
products such that each is compatible to be received and processed by at
least one of the multiple processing facilities, and defining at least two of the
individual structured products according to different product specifications
of at least two different processing facilities such that said at least two of the
individual structured products are compatible for processing by the at least
two different processing facilities; determining a sequence for submission of
each individual structured product to at least one of the multiple processing
facilities . . . .
The Federal Circuit has held similar concepts to be abstract. Thus, for
example, the Federal Circuit has held that abstract ideas include the concepts
of collecting data, analyzing the data, and reporting the results of the
collection and analysis, including when limited to particular content. See,
e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340–41 (Fed. Cir. 2017) (identifying organizing, displaying, and
manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016) (characterizing collecting information, analyzing
information by steps people go through in their minds, or by mathematical
algorithms, and presenting the results of collecting and analyzing
information, without more, as matters within the realm of abstract ideas).
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Thus, under the first prong, claim 1 also recites the patent ineligible judicial
exception of a mental process. See also, Guidance, 84 Fed. Reg. at 52.
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “at least one computing device,” “non-transitory
memory,” and “ a processor.” These components are described in the
specification at a high level of generality. See Spec. ¶¶ 17–19. We fail to
see how the generic recitations of these most basic computer components
and/or of a system so integrates the judicial exception as to “impose[] a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance, 84
Fed. Reg. at 53.
Thus, we find that the claims recite the judicial exceptions of a certain
method of organizing human activity and a mental process that are not
integrated into a practical application.
That the claims do not preempt all forms of the abstraction or may be
limited to structured products based on the trade information, does not make
them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362–63 (Fed. Cir. 2015) (“And that the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
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Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at
72–73).
Concerning this step, the Examiner found the following:
The claim(s) do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional computer elements, which are
recited at a high level of generality, provide conventional
computer functions that do not add meaningful limitations to
practicing the abstract idea.
Non–Final Act. 4. We agree with the Examiner. “[T]he relevant question is
whether the claims here do more than simply instruct the practitioner to
implement the abstract idea . . . on a generic computer.” They do not. Alice,
573 U.S. at 225.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, convert, identify, compare, define, submit, and apply
decision criteria to data amounts to electronic data query and retrieval—one
of the most basic functions of a computer. All of these computer functions
are well-understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp., 830 F.3d 1354; see also In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
2011) (“Absent a possible narrower construction of the terms ‘processing,’
‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any
general purpose computer without special programming”). In short, each
step does no more than require a generic computer to perform generic
computer functions. The claims do not, for example, purport to improve the
functioning of the computer itself. In addition, as we stated above, the
claims do not affect an improvement in any other technology or technical
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field. The Specification spells out different generic equipment and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
information access under different scenarios (see, e.g., Spec. ¶¶ 17–19).
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract idea using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–226.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (receive,
convert, identify, compare, receive, define, submit, and determine data) and
storing is equally generic and conventional or otherwise held to be abstract.
See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(holding that sequence of data retrieval, analysis, modification, generation,
display, and transmission was abstract), Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding
sequence of processing, routing, controlling, and monitoring was abstract).
The ordering of the steps is, therefore, ordinary and conventional.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (Appeal Br. 8–19, Reply Br. 3–10). We find that
our analysis above substantially covers the substance of all the arguments,
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which have been made. But, for purposes of completeness, we will address
various arguments in order to make individual rebuttals of same.
Citing to Bascom Global Internet v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016) and Enfish, Appellant argues:
In summary, the instant claims are patent-eligible in view
of both Enfish and BASCOM because, at a minimum, the
claimed step of converting a data set defining trade information
into data subsets defining plural structured products that are
each compatible for processing by different processing facilities
both improves the functioning of the computer (Enfish) and
provides a technical solution to overcome the problem of the
inability of more than one processing facility to process
multiple and/or different types of structured products derived
from a single agreement (BASCOM).
Appeal Br.8.

We are not persuaded by the Appellant’s arguments because “these
benefits, however, are not improvements to database [/computer]
functionality. Instead, they are benefits that flow from performing an
abstract idea in conjunction with a well-known database [/computer]
structure.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1288 (Fed.
Cir. 2018). Even if the advance over the prior art is to eliminate the problem
of “of having to structure an entire agreement and its underlying products to
comply with pre-defined requirements of a single processing facility”
(Appeal Br. 16 see also p. 12), that purported advance is an abstract idea
itself. That is, it is an improvement to contract formation and not a
technological improvement. The alleged improvement lies in the abstract
idea itself, not to any technological improvement. See id. at 1287–88.
As discussed above, the functions of the software are directed to
abstract ideas and not technical improvements, and the functions are
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performed using a generic computer. And, as discussed in BSG Tech LLC v.
Buyseasons, Inc., “[i]f a claim’s only ‘inventive concept’ is the application
of an abstract idea using conventional and well-understood techniques, the
claim has not been transformed into a patent-eligible application of an
abstract idea.” Id. at 1290–1291 (citing Berkheimer v. HP Inc., 881 F.3d at
1370 (holding claims lacked an inventive concept because they “amount to
no more than performing the abstract idea of parsing and comparing data
with conventional computer components”).
In Enfish, the invention at issue was directed at a wholly new type of
logical model for a computer database: a self-referential table that allowed
the computer to store many different types of data in a single table and index
that data by column and row information. Enfish, 822 F.3d at 1330–32. In
finding the claims “not directed to an abstract idea,” but “to a specific
improvement to the way computers operate,” the Federal Circuit noted that
“the claims are not simply directed to any form of storing tabular data, but
instead are specifically directed to a self-referential table for a computer
database.” Id. at 1336–37 (emphasis in original). We find nothing in the
claims before us arising to this level of technical improvement in the
claimed “at least one computing device,” “non-transitory memory,” and “ a
processor” which arises to the level of technical proficiency as found in
Enfish. Instead, we find the claims are focused on “economic or other tasks
for which a computer is used in its ordinary capacity.” Id. at 1336. More
specifically, the claims here focus on processing a trade transaction of a
plurality of structured products defined by an agreement to comply with
product specifications of one or more processing facilities.
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We also fail to see how the instant claims are similar to those in
Bascom. There, an intermediary is inserted between two otherwise
conventional computer nodes to move the location where a process is
otherwise ordinarily executed. In Bascom, it was the location of the filtering
element which was determinative, whereas in the instant claims there is no
such specific location determinative in the ordered combination elements.
Appellant argues that,
. . ., the structured products derived from a single trade
transaction agreement may be processed by any number of
processing facilities, even if the processing facilities each
require different product specifications. In this manner, the
claimed invention provides a novel mechanism that enables
processing of a single trade transaction agreement across
multiple processing facilities, which is both faster and more
efficient.

Appeal Br. 12.
We are unpersuaded because again the alleged improvement lies in
the abstract idea itself, not to any technological improvement. See BSG
Tech, 899 F.3d 1287–88. Although the claims purport to efficiently
facilitate both faster and more efficient processing of a single trade
transaction agreement across multiple processing facilities, our reviewing
court has held that speed and accuracy increases stemming from the ordinary
capabilities of a general purpose computer “do[] not materially alter the
patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v.
Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir.
2012).
Moreover, as described above, the only claim elements beyond the
abstract idea are the “at least one computing device,” “non-transitory
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memory,” and “ processor.” Appellant cannot reasonably deny, nor does
Appellant deny, 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, processing, and transmitting
information. Here as found above, we find no evidence before us that the
claims recite implementation of the abstract idea involving “more than the
performance of ‘well-understood, routine, [and] conventional activities
previously known to the industry.” The claim simply recites functional
results to be achieved by any means. See, e.g., Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014).
Appellant next argue,
Appellants’ invention clearly effects a transformation of a
particular article (a single trade transaction agreement with
particular trade information) to a completely different state
(multiple individual structured products associated with
multiple processing facilities and defined according to the
multiple processing capabilities of the respective processing
facilities).
Appeal Br. 15. Appellant also argues,
the invention goes on to transform the initial information (e.g.,
the data set) into multiple subsets (e.g., data defining multiple
individual structured products, with each individual product
separately defined according to (downstream) processing
facility compatibility).
Id.
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We disagree with Appellant. Appellant seeks eligibility based on a
transformation which is only perceivable by the human mind, i.e., contract
formation. In Diehr, the Court established eligibility under § 101 for claims
containing mathematical formulas when the claim “implements or applies
that formula in a structure or process which, when considered as a whole,”
causes or performs “(e.g., transforming or reducing an article to a different
state or thing) . . . .” Diehr, 450 U.S. at 192–193. In contrast, we fail to see
how parsing data into multiple subsets constitutes transforming or reducing
an article into a different state or thing. The information of the data remains
unchanged. Even if the information could change, any such change of data
from initial to a downstream representation of that data is still an abstraction,
intelligible only to the human mind. See In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004).
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 v. HP
Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (citations
omitted).
We also disagree with Appellant, that the
claims are patent-eligible under McRO because they explicitly
include and execute a novel set of rules that transform a single
data set (transaction agreement) into plural individual products
that are each individually compatible for submission and
processing by multiple processing facilities in parallel.
Appeal Br. 17. Appellant also argues,
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Here, there is similarly no evidence whatsoever (or even an
allegation) that the claimed process was some long-existing
process that was merely automated. Instead, the Examiner is
merely asserting (without any evidence) that the claimed
process could be performed by a human. Under McRO,
however, the test is whether the process was actually long-
existing, not whether it theoretically could be performed by
humans.
Appeal Br. 19.
Appellant’s attempt to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016) is misguided. In McRO, “it was the incorporation of the
claimed rules, not the use of the computer, that improved the existing
technology process,” because the prior process performed by humans “was
driven by subjective determinations rather than specific, limited
mathematical rules.” McRO, 837 F.3d at 1314 (internal quotation marks,
citation, and alterations omitted). In contrast, the claims of the instant
application merely implement the legal practice of offering processing
agreements to plural processing facilities. Appellant has not argued that
this is practiced in a manner technologically different from those which
humans used, albeit with less efficiency, before the invention was claimed.
Merely offering redundancies for processing products after sale is time
practiced, and itself, abstract. By contrast,
[t]he claims in McRO were not directed to an abstract idea, but
instead were directed to “a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type.” We explained that “the claimed improvement
[was] allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’
that previously could only be produced by human animators.”
The claimed rules in McRO transformed a traditionally
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subjective process performed by human artists into a
mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from
those in McRO).
The question is whether the claims as a whole “focus on a specific
means or method that improves the relevant technology” or are “directed to
a result or effect that itself is the abstract idea and merely invoke generic
processes and machinery.” McRO, 837 F.3d 1314. In this case, claim 1 as a
whole is focused on satisfying certain contingencies for extracting selected
data related to a financial transaction and not a particular way of
programming or designing the software or a computer circuit. In other
words, nothing in claim 1 purports to improve computer functioning or
“effect an improvement in any other technology or technical field.” Alice,
134 S.Ct. at 2359.
Appellant also argues, the “claims provide a novel system architecture
that follows a novel and very specific set of rules that addresses the inability
of existing systems to break down and process a transaction agreement data
into ‘units’ that are compatible for processing by multiple processing
facilities.” Appeal Br. 18.
We disagree with Appellant because the question in step two of the
Alice framework is not whether an additional feature is novel, but whether
the implementation of the abstract idea involves “more than the performance
of ‘well-understood, routine, [and] conventional activities previously known
to the industry.’” Content Extraction and Transmission LLC, 776 F.3d at
1347–48.
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Appellant argues that the Examiner “grossly overgeneralizing the
claims and jumping directly to conclusions (with no analysis or explanation
as to how such conclusions were reached).” Appeal Br. 21.
We disagree with Appellants because “[a]n abstract idea can generally
be described at different levels of abstraction.” See Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). We further disagree that the
Examiner provided “no analysis or explanation” for his findings. The record
below proves otherwise as shown by the Examiner’s element by element
analysis of claim language on pages 5–8 of the Non–final action.
Appellants’ argument is not persuasive as to error in the rejection
because Appellant’s other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. (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.”))).
For the reasons identified above, we determine there are no
deficiencies in the Examiner’s prima facie case of patent ineligibility of the
rejected claims.

35 U.S.C. § 103(a) REJECTION
Each of independent claims 1 and 22 require in one form or another,
converting the data set into a plurality of data subsets that
define a plurality of structured products based on the trade
information, each of the plurality of structured products being
defined to comply with product specifications of one or more
processing facilities such that at least two of the defined
structured products are defined according to different product
specifications associated with different processing facilities,
Appellant argues the following:
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Wyatt does not teach converting or transforming data
into a plurality of data sub-sets, at least two of which are
defined according to different specifications associated with
different processing facilities (as recited by Appellants’ claims).
Glinberg, which is a system for risk analysis, does not make up
for the deficiencies of Pinkava and Wyatt because it merely
discloses sending information (see, e.g., Glinberg Fig. 3).
Furthermore, whether Glinberg in fact teaches “the terms of the
specified product is designated by the Exchange” is irrelevant.
There is nothing in [¶10-15], [¶35-36], [¶171] and [¶102] , or
the remainder of Glinberg, that makes up for the deficiencies of
Pinkava and Wyatt. Further, there is nothing in the above-
identified paragraphs of Glinberg that teaches “terms of the
specified product is designated by the Exchanges” (plural).
Appeal Br. 24).
The Examiner found, concerning these limitations that Glinberg
disclose them at paragraphs, 10, 35, 36, 71 and 102. (Non-Final Act. 11).
We have reviewed the paragraphs cited by the Examiner above
concerning Glinberg, and on balance, agree with Appellant. Glinberg at best
in paragraph 35 states the following:
combining the positions of joint or affiliated clearing members
in certain broad-based equity index futures and options into a
single portfolio, and utilizing the sophisticated risk based
systems of each clearing organization, a single performance
bond requirement across both markets is determined.
While Glingberg discloses the use of a single performance bond across
plural markets, it is not apparent, and the Examiner does not explain
adequately, how the disclosure of a common performance bond equates to
the claimed structured products which must be based on the trade
information and each of the plurality of structured products is defined to
comply with product specifications of one or more processing facilities.
That a performance bond may exist across plural markets does not mean that
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it has attached to it trade information because the bond is a security against
“sophisticated risk” and is not a product, such as described as readily traded
OTC. See Specification ¶ 3. Thus, we will not sustain the obvious rejection
of independent claims 1 and 22.
Since claims 2–21 and 23–26 depend from claims 1 and 22,
respectively, and since we cannot sustain the rejection of claims 1 and 22,
the rejection of the dependent claims likewise cannot be sustained.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–27 under
35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 1–27 under
35 U.S.C. § 103.
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DECISION
In summary:
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1)(2016).

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed

1–27 101 Eligibility 1–27
1–27 103 Glinberg, Pinkava,
Wyatt
1–27
Overall
Outcome
1–27

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