Jokisch, Philipp T. et al.

Patent Trials and Appeals Board

Feb 3, 2020

14143063 - (D) (P.T.A.B. Feb. 3, 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.
14/143,063 12/30/2013 Philipp T. Jokisch 03-1094-C4 5188
63710 7590 02/03/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
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 PHILIPP T. JOKISCH and MICHAEL SWEETING

Appeal 2019-004087
Application 14/143,063
Technology Center 3600

Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12, 14–26, and 28. 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(a). Appellant identifies the real party in interest as BGC Partners, Inc.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates to systems and methods for
calculating an enhanced volume-weighted average price, and more
particularly to trading systems that allow traders to place orders on average
price contracts based on trades, bids, and offers.” (Spec., para. 2).
Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter:
1. A method of facilitating electronic trading between an
Application Program Interface (API) of one or more
programmed computers and a Graphical User Interface (GUI) of
a workstation over a communication network, the method
comprising:
using one or more programmed computers to iteratively
determine a price when new information becomes available,
wherein the new information includes new
unmatched bids, new unmatched offers, and new
trades, and
wherein the new unmatched bids and the new
unmatched offers are used in determining the price
when the new unmatched bids and the new
unmatched offers are within a predetermined price
range; and
using one or more programmed computers to
communicate messages between the API of the one or more
programmed computers and the GUI of the workstation to
publish to the workstation a final one of the iteratively
determined price.
REFERENCES
The prior art relied upon by the Examiner is:
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Name Reference Date
Lutnick US 6,963,856 B2 Nov. 8, 2005
Jokisch US 8,620,796 B2 Dec. 31, 2013
REJECTIONS
Claims 1–12, 14–26, and 28 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
Claims 1–12, 14–26, and 28 are rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1–9, 11–14, 15–23, and 25–28 of Jokisch and Lutnick.
OPINION
The rejection of claims 1–12, 14–26, and 28 under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
The Appellant argued these claims as a group. See Appeal Br. 8–14.
We select claim 1 as the representative claim for this group, and the
remaining claims 2–12, 14–26, and 28 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
Preliminary comment
Previous Office guidance on patent subject matter eligibility has been
superseded by the 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019), hereinafter “2019 Revised 101 Guidance.”
Id. 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.”)
Accordingly, we will not address arguments on the sufficiency of the
Examiner’s position relative prior guidance but rather our analysis that
follows will comport with the 2019 Revised 101 Guidance. We will address
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in particular Appellant’s arguments made in the Reply Brief which are raised
in the context of the 2019 Revised 101 Guidance.
Introduction
35 U.S.C. § 101 provides that “[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.”
In that regard, claim 1 covers a “process” and is thus statutory subject
matter for which a patent may be obtained.2 This is not in dispute.
However, the § 101 provision “contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 1 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” Id. at 53.
See also sentence bridging pages 53 and 54 (“consider[–] whether the
claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. 101.”).
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Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S. at
218 (emphasis added).
The Examiner determined that claim 1 is directed to “facilitating the
determination of a volume-weighted average price in an automated manner.”
Final Act. 22. The Examiner provides detailed reasoning:
The claim recites the steps of determining a volume-weighted
average price in an illiquid market based on trades and
unmatched bids and offers. The price is iteratively determined
when new information becomes available or at a specific time
interval.

In other words, the claim describes steps for facilitating the
determination of a volume-weighted average price in an
automated manner. The scheme and/or concept is similar to other
concepts that have been identified by the courts as abstract, such
a fundamental economic practice (e.g., concepts relating to the
economy and commerce; performance of financial transactions),
as well as an idea of itself (e.g., mental process (e.g., thinking)
that can be performed in the human mind, or by a human
manually; process of organizing information that can be
performed mentally; obtaining and comparing intangible data
(Cybersource); organizing information through mathematical
correlations (Digitech); data recognition and storage (Content
Extraction)), and Mathematical relationships and/or formulas
(e.g., computing a price (Freddie Mac); concepts relating to a
mathematical relationship or formula performing mathematical
calculations (Flook)).

The reason that the limitations are considered to be an abstract
idea is because the recited steps involve the determination of a
price through an iterative process using a mathematical
algorithm/formula using trading and auction (bid, offer) data
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and/or information that is received and/or transmitted. The
determination of a price as it relates to a trading transaction is a
concept/practice found in the realm of commerce and as such, is
a fundamental economic practice. The use of data/information
comprising trading prices and auction bid-offer prices involves
the recognition and comparison of data and/or information
necessary for the calculation to be made, and the subsequent
retrieval (e.g., obtaining) and transmission thereof. Thus the
process involved is similar and/or not meaningfully different
from an idea of itself. Furthermore, the steps are not
meaningfully different from the abstract concept of an idea of
itself because the process may be performed by a human being
manually and/or mentally despite the computer-related devices
recited which merely facilitates automation of a conventional and
routine process, or in other words, computer implementation of
an abstract concept. As such, the concept described in claim 1 is
not meaningfully different from the concepts found by the courts
to be abstract ideas. Thus, the claim is directed to an abstract idea
. . . .
Final Act. 22–23.
Appellant argues, inter alia, that the claims are not directed to an
abstract idea but rather “is directed to improvements in computer systems
including techniques to communicate messages between the API of the one
or more programmed computers and the GUI of the workstation to publish
to the workstation a final one of the iteratively determined price.” Appeal
Br. 9 (emphasis omitted).
Accordingly, there is a dispute over whether claim 1 is directed to an
abstract idea. Specifically, is claim 1 directed to “facilitating the
determination of a volume-weighted average price in an automated manner”
(Final Act. 22) or “to improvements in computer systems” (Appeal Br. 9)?
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Claim Construction3
We consider the claim as a whole4 giving it the broadest reasonable
construction5 as one of ordinary skill in the art would have interpreted it in
light of the Specification6 at the time of filing.
Claim 1 sets forth steps to be taken by (a) “one or more programmed
computers” to “facilitat[e] electronic trading between” two devices: (b) “an
Application Program Interface (API) of one or more programmed

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).

4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).

5 2019 Revised 101 Guidance, page 52, footnote 14 (“If a claim, under its
broadest reasonable interpretation . . . .”)

6 “First, it is always important to look at the actual language of the claims. . .
. Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part), citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among others.

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computers” and (c) “a Graphical User Interface (GUI) of a workstation over
a communication network.” The steps generally call for (a) to
1. “iteratively determine a price when new information
becomes available;” and,
2. “communicate messages . . . to publish . . . a final one of
the iteratively determined price.”
More specifically, step 1. of claim 1 requires the “new information”
to “include[] new unmatched bids, new unmatched offers, and new trades, . .
. wherein the new unmatched bids and the new unmatched offers are used in
determining the price when the new unmatched bids and the new unmatched
offers are within a predetermined price range.” For step 2., claim 1 more
specifically requires “communicat[ing] “between [(b)] and [(c)]” and
“publish[ing]” “to the workstation” (i.e., of [(b)]).
Given all this claim 1 is reasonably broadly construed as facilitating
electronic trading through communication of an iteratively determined price.
The Specification states that “[e]lectronically based trading systems
have gained widespread popularity over the years.” Spec., para. 3.
“Historically, traders use benchmarks to evaluate their trades. Determining
the volume-weighted average price (hereinafter the ‘VWAP’) is one of the
most common trade evaluation benchmarks.” Id. at para. 4. “However, the
conventional VWAP may not be calculated for an illiquid market or a
temporarily illiquid market which has little or no volume of trades.” Id. at
para. 6. “[I]t would be desirable to provide traders with an opportunity to
evaluate instruments traded in illiquid markets or temporarily illiquid
markets using an approach for calculating an enhanced VWAP price.” Id. at
para. 7. To meet this objective,
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systems and methods [ ] provide traders with an eVWAP price
that uses unmatched bid and offer prices to support or back up
traded price volumes over a predetermined sampling period or
trading period, thereby alleviating the above-mentioned
difficulties. Such an approach may be used for illiquid markets
or temporarily illiquid markets where there may be little or no
actual trades. The approach for calculating the eVWAP price
may include adjusting the eVWAP price using data (e.g., price
and size information) from unmatched bids and offers.
Unmatched bids and offers may be those bids and offers that
have not been hit or lifted.
Id. at para. 9.
Given the method as claimed as reasonably broadly construed above
and in light of the Specification’s more particular description of the
invention involving adjusting a calculated eVWAP price (which claim 1 is
not limited to), based on the record before us, we reasonably broadly
construe claim 1 in line with our construction; that is, as being directed to
facilitating electronic trading through communication of an iteratively
determined price.
The Abstract Idea7
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea. Based on our claim
construction analysis (above), we determine that the identified limitations
describe facilitating electronic trading through communication of an
iteratively determined price.

7 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry. Id. at 53.

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Facilitating electronic trading through communication of an iteratively
determined price is a commercial interaction. It falls within the enumerated
“[c]ertain methods of organizing human activity” as grouping of abstract
ideas set forth in the 2019 Revised 101 Guidance.8
Improvement In the Functioning of a Computer9 (Appellant’s
Argument)
The Examiner’s characterization of what the claim is directed to set
forth in the Answer is similar to ours, albeit at lower level of abstraction.

8 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” Id. at 54. This case implicates subject matter
grouping “(b)”:
(b) Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions between
people (including social activities, teaching, and following rules or
instructions);
Id. at 52.

9 This corresponds to Prong Two [“If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application”] of Step 2A of the 2019 Revised 101 Guidance. “A claim that
integrates a judicial exception into a practical application will 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. One consideration,
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“An abstract idea can generally be described at different levels of
abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). Cf. id. at 1241 (The Board’s “slight revision of its abstract idea
analysis does not impact the patentability analysis.”)
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 1 is directed to.
A central argument Appellant makes is that the claimed subject matter
is not directed to an abstract idea but to improvements in computer
functionality. The argument is expressed in various ways:
• “the claimed subject matter is directed to improvements in
computer systems including techniques to communicate
messages between the API of the one or more
programmed computers and the GUI of the workstation
to publish to the workstation a final one of the iteratively
determined price” (Appeal Br. 9);
• “the claimed subject matter may improve computer
performance by configuring a computer to communicate
messages between the API of the one or more
programmed computers and the GUI of the workstation
to publish to the workstation a final one of the iteratively
determined price. In this manner, the system may help
manage use of computer resources including processor,
memory and network resources such as bandwidth which
thereby helps improve overall computer performance” (id. at
10);

implicated here, that is “indicative that an additional element (or
combination of elements) may have integrated the exception into a practical
application” (id. at 55) is if “[a]n additional element reflects an improvement
in the functioning of a computer, or an improvement to other technology or
technical field” (id. at 55).

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• “the claimed subject matter is also drawn to an improved
interface which provides advantages over the prior art
systems which improves the efficiency of the electronic
devices, thereby overcoming disadvantages of prior
systems. In the present case, the above highlighted
paragraphs of Appellants’ published disclosure emphasized
problems and disadvantages of prior systems and some of
the advantages provided by Appellants’ disclosed techniques
[i.e., paras. 59 and 60 of Appellant’s U.S. Patent Publication
2014–0114835]” (id. at 11);
• “the claimed invention, in one example, recites an improved
interface to communicate messages between the API of the
one or more programmed computers and the GUI of the
workstation to publish to the workstation a final one of the
iteratively determined price. . . . [T]he presently claimed
invention provides an interface which may improve the
efficiency of using the electronic devices” (id.);
• “In one example, these techniques may help control activity
over the network and control computer workload
including computer resources such as memory resources,
processor resources, and network resources such as network
bandwidth. This allows the computer to perform a function
not previously performable by a computer. The claimed
subject matter allows the computer to perform a function not
previously performable by a computer” (Reply Br. 3);
• “directed to improvements in computer performance
particularly by communicating messages between the API
of the one or more programmed computers and the GUI
of the workstation to publish to the workstation a final one
of the iteratively determined price over a network. Such
techniques help control the number of commands and
transactions being transmitted over the network and control
computer workload including computer resources such as
memory resources, processor resources, and network
resources such as network bandwidth” (id. at 4);
• “claimed subject matter is also drawn to an improved
interface which provides advantages over the prior art
systems which improves the efficiency of the electronic
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devices, thereby overcoming disadvantages of prior
systems. . . . [T]he claimed invention provides an improved
interface which helps increase the efficiency of using the
electronic devices . . . [or] which may improve the efficiency
of using the electronic devices” (id. at 5); and,
• “may help improve computer performance by
communicating messages between the API of the one or
more programmed computers and the GUI of the
workstation to publish to the workstation a final one of
the iteratively determined price over a network. In turn, this
helps control traffic over the network, and which may help
manage computer workload including computer
resources such as memory resources processor resources,
and network resources such as network bandwidth” (id. at
6).
However, we do not find that the record adequately supports the argument
however it is expressed.
A major difficulty with the argument is that claim 1 does not reflect
any of the improvements in computer functionality said to be associated with
the claimed process. For example, there is no mention of computer
workloads including computer resources such as memory resources
processor resources, and network resources such as network bandwidth, that
the process is said to help manage. Nor have we found the Specification to
describe any of the alleged improvements to an interface, let alone that the
claimed process as broadly as it is claimed necessarily leads the “computer
to perform a function not previously performable by a computer” (Reply Br.
3). In our view, the argument is unpersuasive as to error in the Examiner’s
determination under step one of the Alice analytical framework because it is
not commensurate in scope with what is claimed. Cf. In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“Many of appellant’s arguments fail from the
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outset because, . . . they are not based on limitations appearing in the
claims.”)
Appellant cites paragraphs 46 and 47 in the instant Specification (i.e.,
paragraphs 59 and 60 of the U.S. Patent Publication No. 2014-0114835
specification) as evidence that the claimed subject matter is “drawn to an
improved interface which provides advantages over the prior art systems
which improves the efficiency of the electronic devices, thereby overcoming
disadvantages of prior systems” (Appeal Br. 11) (emphasis omitted). The
disclosures are reproduced below:
[0058] eVWAP trading application 210 may preferably include
an application program interface (not shown), or, as described
above, eVWAP trading application 210 may be resident in the
memory of server 110. In this embodiment, the electronic trading
application may contain eVWAP trading application 210 and an
application program interface (not shown) as a discrete
application from the electronic trading application which also
may be included therein. The only distribution to the trader may
then be a Graphical User Interface which allows the trader to
interact with eVWAP trading application 210 resident at server
110.

[0058] Processor 202 uses the workstation program to present on
display 204 the electronic trading application and trading
information relating to market conditions received through
communication link 104 and trading commands and values
transmitted by a trader of workstation 102. Furthermore, input
device 206 may be used to manually enter commands and values
in order for these commands and values to be communicated to
the electronic trading application.
Id. at 9–10 (emphasis omitted). Notwithstanding these passages describe
subject matter (e.g., an eVWAP trading application) that claim 1 is not
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limited to, we are unable to discern from these passages the technical
problem the process as claimed is alleged to overcome. Nor do we see any
indication that the claimed process “improves the efficiency of the electronic
devices, thereby overcoming disadvantages of prior systems” (id. at 11)
(emphasis omitted).
We have carefully reviewed the claim. Per our previous claim
construction analysis, claim 1 is reasonably broadly construed as covering a
scheme for facilitating electronic trading through communication of an
iteratively determined price. We see no specific asserted improvement in
computer capabilities recited in the claim. Nor does the Specification discuss
anything in the context of a method as broadly as claim 1 currently presents
it. Rather than being directed to any specific asserted improvement in
computer capabilities, the claim and Specification support the opposite view
– that the claimed subject matter is directed to facilitating electronic trading
through communication of an iteratively determined price employing
generic devices.
Claim 1 mentions (a) “one or more programmed computers”; (b) “an
Application Program Interface (API) of one or more programmed
computers”; and, (c) “a Graphical User Interface (GUI) of a workstation
over a communication network” but the claim does not otherwise provide
any structural details10 that would distinguish them from what was well-

10 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (non-precedential). “Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”
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known at the time the application was filed. See, e.g., Spec., para. 39 (“It
will be understood that the electronic trading application may be any
suitable, software, hardware, or both configured to implement the
features of the present invention.”). See also paras. 41–49.
With respect to the “using . . . to iteratively determine” and “using . . .
to communicate messages . . . to publish” steps performed by (a) (i.e., “one
or more programmed computers”), the Specification attributes no special
meaning to any of these operations, individually or in the combination as
claimed. In our view, consistent with the Specification, these are common
computer processing functions that one of ordinary skill in the art at the time
of the invention would have known generic computers were capable of
performing and would have associated with generic computers. Cf. OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015):
Beyond the abstract idea of offer-based price optimization, the
claims merely recite “well-understood, routine conventional
activit[ies],” either by requiring conventional computer
activities or routine data-gathering steps. Alice, 134 S. Ct. at
2359 (quoting Mayo, 132 S.Ct. at 1294) (alterations in original).
. . . For example, claim 1 recites “sending a first set of
electronic messages over a network to devices,” the devices
being “programmed to communicate,” storing test results in a
“machine-readable medium,” and “using a computerized
system . . . to automatically determine” an estimated outcome
and setting a price. Just as in Alice, “all of these computer
functions are ‘well-understood, routine, conventional
activit[ies]’ previously known to the industry.” Alice, 134 S.Ct.
at 2359 (quoting Mayo, 132 S.Ct. at 1294) (alterations in
original); see also buySAFE[, Inc. v. Google, Inc.], 765 F.3d
[1350,] 1355 [(Fed. Cir. 2014)] (“That a computer receives and
sends the information over a network—with no further
specification—is not even arguably inventive.”).
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At best, the (a) “one or more programmed computers”; (b) “an
Application Program Interface (API) of one or more programmed
computers”; and, (c) “a Graphical User Interface (GUI) of a workstation
over a communication network” distinguish over other generic devices
known at the time the application was filed in the type of electronic
information being processed, such as “a price when new information
becomes available.” But that not alone is not a patentably consequential
distinction. This is so because “[c]laim limitations directed to the content of
information and lacking a requisite functional relationship are not entitled to
patentable weight because such information is not patent eligible subject
matter under 35 U.S.C. § 101.” Praxair Distribution, Inc. v. Mallinckrodt
Hosp. Prods. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018).
Appellant cites Core Wireless Licensing S.A.R.L. v. LG Electronics,
Inc., 880 F.3d 1356 (Fed. Cir. 2018) and argues that the instant claims are
patent-eligible for the reasons given in that decision, namely that, as in that
case, “the claimed subject matter is also drawn to an improved interface
which provides advantages over the prior art systems which improves the
efficiency of the electronic devices, thereby overcoming disadvantages of
prior systems.” Appeal Br. 11; see also Reply Br. 5. We are unpersuaded
for the reasons already discussed. There is insufficient evidence in the
present record showing the claimed process, as broadly as claimed, yields
said technical improvement.
Accordingly, Appellant’s purported technical improvement argument
is unpersuasive as to error in the Examiner’s or our characterization of what
the claim is directed to because claim 1 does not reflect it and the record
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evidence fails to adequately support it for the subject matter as broadly
presented in claim 1.
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration of the abstract idea into a practical
application.
We note the discussion in the Reply Brief (pages 2–7) on this question
of whether there is in claim 1 an integration of the abstract idea into a
practical application. The discussion does not adequately explain in what
way claim 1 integrates the abstract idea (i.e., facilitating electronic trading
through communication of an iteratively determined price) into a practical
application. The discussion repeats the points made in the Appeal Brief to
argue, unpersuasively, that the claimed process is directed to an
improvement in computer technology. Given that claim 1 does not reflect
any such improvement and the record evidence fails to adequately support
such an improvement for the subject matter as broadly presented in claim 1,
we do not see how such the alleged improvement can nevertheless
demonstrate an integration into a practical application.
The question is whether claim 1 goes beyond facilitating electronic
trading through communication of an iteratively determined price in a
“meaningful” way. According to the Guidance, “[a] claim that integrates a
judicial exception into a practical application will 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.” 2019 Revised 101 Guidance 53
(emphasis added). Setting out to facilitate electronic trading through
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communication of an iteratively determined price in the technically–broad
manner claimed (see the analysis in the claim construction section above)
does not “apply, rely on, or use” said scheme so as to impose any
meaningful limit on it. The record evidence weighs in favor of the view that
the claim’s focus is on nontechnical improvements, such as improving order
placement, not technical ones. Cf. Trading Tech. Int’l, Inc. v. IBG LLC, 921
F.3d 1378, 1384 (Fed. Cir. 2019) (“The claims are focused on providing
information to traders in a way that helps them process information more
quickly, ‘556 patent at 2:26–39, not on improving computers or
technology.”)
We have considered Appellant’s other arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 1 is directed to an abstract idea.
Alice step two – Does the Claim Provide an Inventive Concept?11
Step two 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.’” Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).

11 This corresponds to Step 2B of the 2019 Revised 101 Guidance 56:

[I]f a claim has been determined to be directed to a judicial exception
under revised Step 2A, examiners should then evaluate the additional
elements individually and in combination under Step 2B to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).
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In that regard, the Examiner determined, inter alia, that:
the recitation of the additional element(s) considered both
individually and as an ordered combination are not sufficient to
amount to significantly more than the judicial exception, because
the programmed computers, communication network, and
computer interfaces (API, GUI) are recited at a high level of
generality and are recited as performing generic computer
functions routinely used in computer applications. Generic
computer components recited as performing generic computer
functions that are well-understood, routine and conventional
activities amount to no more than implementing the abstract idea
with a computerized system. The use of generic computer
components does not impose any meaningful limit on the
computer implementation of the abstract idea. Merely using
generic computer components to perform the identified basic
functions does not constitute meaningful limitations that would
amount to significantly more than the abstract idea.
Final Act. 24. We agree.
We addressed the matter of whether there were any purported specific
asserted improvements in computer capabilities in our analysis above under
step one of the Alice framework. This is consistent with the case law. See
Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018)
(“We have several times held claims to pass muster under Alice step one
when sufficiently focused on such improvements.”) Such an argument can
also challenge a determination under step two of the Alice framework. See
buySAFE, 765 F.3d at 1354–55. “[R]ecent Federal Circuit jurisprudence has
indicated that eligible subject matter can often be identified either at the first
or the second step of the Alice/Mayo [framework].” 2019 Revised 101
Guidance at 53; see also id. at n. 17.
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Be that as it may, we are unpersuaded that claim 1 presents an element
or combination of elements indicative of a specific asserted improvement in
computer capabilities, thereby rendering the claimed subject matter
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon a scheme for facilitating electronic trading through
communication of an iteratively determined price employing (a) “one or
more programmed computers”; (b) “an Application Program Interface (API)
of one or more programmed computers”; and, (c) “a Graphical User
Interface (GUI) of a workstation over a communication network.”
We have reviewed the Specification and, as explained above, we can
find no suggestion of any technical improvements as a result of performing
the steps as broadly as they are recited.
We cited the Specification in our earlier discussion. It is intrinsic
evidence that the claimed (a) “one or more programmed computers”; (b) “an
Application Program Interface (API) of one or more programmed
computers”; and, (c) “a Graphical User Interface (GUI) of a workstation
over a communication network” as claimed are conventional. In doing so,
we have followed “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
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(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
law.” Id. 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); 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 (a) “one or more
programmed computers”; (b) “an Application Program Interface (API) of
one or more programmed computers”; and, (c) “a Graphical User Interface
(GUI) of a workstation over a communication network” individually and in
the context as claimed were conventional at the time of filing.
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Accordingly, the record adequately establishes the well-understood,
routine, or conventional nature of the (a) “one or more programmed
computers”; (b) “an Application Program Interface (API) of one or more
programmed computers”; and, (c) “a Graphical User Interface (GUI) of a
workstation over a communication network” as broadly recited in claim 1.
Appellant contends that
that the claimed invention, in one example, recites an additional
element (or combination of elements) that are “not well–
understood, routine or conventional” to communicate
messages between the API of the one or more programmed
computers and the GUI of the workstation to publish to the
workstation a final one of the iteratively determined price.
Appeal Br. 11. What that additional element is remains unexplained. Be that
as it may, if, as the Specification suggests, the specific hardware and
software is not critical to the invention, then one of ordinary skill reading the
claim in light of that disclosure would understand the (a) “one or more
programmed computers”; (b) “an Application Program Interface (API) of
one or more programmed computers”; and, (c) “a Graphical User Interface
(GUI) of a workstation over a communication network” of claim 1 as
reasonably broadly covering generic devices. Employing generic devices
adds nothing of significance to the abstract idea so as to transform it into an
inventive concept.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
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We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 1, and claims 2–12, 14–26, and 28
which stand or fall with claim 1, are directed to an abstract idea and do not
present an “inventive concept,” we sustain the Examiner’s conclusion that
they are directed to patent-ineligible subject matter for being judicially-
excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656 F.
App’x 991, 997 (Fed. Cir. 2016) (“We have considered all of LendingTree’s
remaining arguments and have found them unpersuasive. Accordingly,
because the asserted claims of the patents in suit are directed to an abstract
idea and do not present an ‘inventive concept,’ we hold that they are directed
to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g., OIP Techs.,
788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016).

The rejection of claims 1–12, 14–26, and 28 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1–9,
11–14, 15–23, and 25–28 of Jokisch and Lutnick.
Appellant does not address the substance of the rejection. Instead
Appellant contends “that the Final Action rejection under double-patenting
for these claims is too incomplete to raise any rejection.” Appeal Br. 15.
Appellant then makes certain observations, such as “[t]he Final Action does
not show how any specific claim of the present application corresponds
to any specific reference claim” (id.) and “the Final Action does not compare
all of the recitations of any of present claims to any specific claim of the
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’796 patent or the ’856 patent, nor does it set forth the obviousness analysis
required by MPEP § 804(B)(l)” (id. at 16).
We are unpersuaded for the simple reason that a plain reading of the
Final Action shows otherwise. Beginning on page 7 of the Final Action and
continuing for the next 14 pages, the Examiner addresses every claim
showing how each one corresponds to a claim in a cited reference. Here is an
example:
Re Claim 14: (Previously Presented) The method of claim 1,

– wherein the using one or more programmed computers
to publish the final price comprises posting the final price
to a server.

(’796 [Jokisch], [Claim 14]: wherein the using one or more
programmed computers to publish the final price
comprises posting the final price to a server.)
Final Act. 14. And the Examiner does indeed set forth an obviousness
analysis. See, e.g., Final Act. 8:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the invention to include the
teaching(s) of Lutnick for the motivation of better managing the
trading of select classes of assets including securities, financial
instruments, commodities, and their derivatives in accordance
with specific protocols in an auction format which can be
performed readily and easily by any person of ordinary skill in
the art, with neither undue experimentation, nor risk of
unexpected results.
Given the evidence does not support Appellant’s contention that the
rejection is incomplete and the substance of the rejection has not been
addressed, the rejection is sustained.
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CONCLUSION
The decision of the Examiner to reject claims 1–12, 14–26, and 28 is
affirmed.
More specifically:
The rejection of claims 1–12, 14–26, and 28 under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter is affirmed; and,
The rejection of claims 1–12, 14–26, and 28 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1–9, 11–14, 15–23, and 25–28 of Jokisch and Lutnick is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–12, 14–
26, 28
101 Eligibility 1–12, 14–
26, 28

1–12, 14–
26, 28
Nonstatutory
obviousness-type
double patenting
1–12, 14–
26, 28

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)(1)(iv).
AFFIRMED