JPMorgan Chase Bank, N.A.

Patent Trials and Appeals Board

Sep 9, 2020

2019002121 (P.T.A.B. Sep. 9, 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.
14/254,114 04/16/2014 Brian Lynn 72167.001499 5942
162030 7590 09/09/2020
JPMorgan Chase / Greenberg Traurig
77 West Wacker Drive
Suite 3100
Chicago, IL 60601
EXAMINER
LEMIEUX, JESSICA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/09/2020 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):
cadanoc@gtlaw.com
clairt@gtlaw.com
gtipmail@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN LYNN and LAWRENCE MILLER
Appeal 2019-002121
Application 14/254,114
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
NABEEL U. KHAN, Administrative Patent Judges.
MacDONALD, 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 32–36, 40–44, and 46–58. Claims 1–
31, 37–39, and 45 were cancelled. 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 JPMorgan Chase
Bank, N.A. Appeal Br. 3.
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2
CLAIMED SUBJECT MATTER
Claim 32 is illustrative of the claimed subject matter (formatting and
bracketed material added):
32. A computer-implemented method for performing online
trading of financial instruments, the method comprising:
[A]. storing an order submission application in a
computer memory, the order submission
application including rules for implementing an
investment strategy encompassing multiple types
of financial instruments;
[B]. facilitating trading of the financial instruments by
executing programming of the order submission
application with at least one computer processor
and performing steps including;
[C]. receiving and processing real time updates
from a financial instrument server coupled
to external pricing sources, the real time
updates transmitted over the Internet from
the financial instrument server through a
dynamic data exchange interface coupled to
the order submission application and an
Internet browser, the dynamic data exchange
interface enabling the financial instrument
server and the order submission application
to share data; and
[D]. applying the investment strategy to the real
time updates to determine if an order should
be generated for a selected one or more of
the financial instruments;
[E]. generating an order for the one or more
selected financial instruments when the
investment strategy indicates an order
should be generated, the order submission
application automatically assigning an order
identifier to the order when the order is
generated by the order submission
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application;
[F]. transmitting the order through the dynamic
data exchange interface over the Internet to
the financial instrument server for
execution;
[G]. saving the order identifier at the financial instrument
server and generating a new and unique server
identifier for placement in the order to a trading
engine;
[H]. correlating, at the financial instrument server, the
order identifier with the server order identifier
upon receipt of an update from the trading engine;
and
[I]. updating the order submission application by
transmitting updates from the financial instrument
server over the Internet upon execution of the
order.
REJECTION
The Examiner rejects claims 32–36, 40–44, and 46–58 under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter. Ans.
3–6.
Appellant argues for the patent-eligibility of independent claims 32,
42, and 52. Appellant does not present separate arguments for claims 33–36,
40–41, 43–44, 46–51, and 53–58. Thus, the rejection of these claims turns
on our decision as to one of claims 32, 42, and 52. Except for our ultimate
decision, we do not discuss the rejection of claims 33–36, 40, 41, 43, 44, 46–
51, and 53–58.
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We concur with the conclusions
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reached by the Examiner. We highlight the following points.
A. Section 101
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 U.S. 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. 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 Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate 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
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 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. (citation omitted)
(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 part
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (internal quotation marks omitted). “A claim that
recites an abstract idea must include ‘additional features’ to ensure ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
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B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “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”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

2 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.pdf).
3 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 2019 Revised Guidance – Section III(A)(2), 84
Fed. Reg. at 54–55.
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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:
(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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. Examiner’s § 101 Rejection Alice/Mayo – Steps 1 and 2
C.1. 2019 Revised Guidance Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner determines that
independent claims 32, 42, and 52 recite an abstract idea.
Regarding independent claims 32, 42, and 52, the claimed
invention is not directed to patent eligible subject matter because
the claimed invention is directed to a judicial exception (i.e., a
law of nature, a natural phenomenon, or an abstract idea) without
significantly more (Alice Corp. Pty. V. CLS Bank International
(Supreme Court, 2014)). The claim is directed to (i) a
fundamental economic practice, (ii) a method of organizing
human activities, and/or (iii) an idea, in and of itself.
. . . .
In the instant case, the claim(s) is/are directed towards
trading financial instruments, which is a fundamental
economic practice and is not meaningfully different than those
commerce and economic concepts that have been identified as
abstract by the courts as explained in detail below. . . .
Claim 32, 42, and 52 recites, in part, a method for
performing the steps of: storing order submissions, facilitating
trading, processing real time updates, applying investment
strategies, generating orders, transmitting orders and updating
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order submission upon trade execution. These steps describe the
concept of trading financial instruments. These steps are
analogous to “generating a second menu from a first menu and
sending the second menu to another location” (Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229 Fed. Cir. 2016) collecting
information, analyzing it, and displaying certain results of the
collection and analysis (Electric Power Group v Alstom S.A., 830
F.3d 1350, 1354 Fed. Cir. 2016) and “organizing information
through mathematical correlations” (Digitech Image Techs. LLC
v Electronics for Imaging Inc.), which are all examples of
abstract ideas. The elements of the Applicant’s claims are
similar to these exemplary abstract ideas. In addition the claims
as a whole are directed to trading financial instruments which
is a “fundamental economic practice” (Alice Corp. Pty. Ltd. v.
CLS Bank lnt’l, Bilski v. Kappos, buySAFE Inc. v. Google Inc.,
Ultramercial Inc. v. Hulu, LLC).
Ans. 3–5 (emphasis added).
C.2. 2019 Revised Guidance Step 2A – Prong Two
Further applying the Alice/Mayo analysis, the Examiner determines
that independent claims 32, 42, and 52 are directed to an abstract idea:
The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the additional element(s) or combination of
elements in the claim(s) other than the abstract idea per se
amount(s) to no more than: . . . mere instructions to implement
the idea on a computer . . . .
. . . The claims do not include limitations or additional
elements that are sufficient to amount to significantly more than
the abstract idea because the claims do not include an
improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. . . .
. . . .
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. . . There is nothing stated within the claims that is an
improvement to a technical field, nor that illustrates what is
superior about the particular processors that are recited. . . .
. . . Examiner notes that looking at the elements as a
combination does not add anything more than the elements
analyzed individually nor does interpreting the claims in view of
the specification. There is no indication that the combination of
elements improves the functioning of a computer or improves
any other technology. . . .
. . . .
. . . Here, the claimed invention is a mere administrative
mechanism for providing a business solution to a non-
technical problem. Any problems which are addressed do not
appear to require a technical, but rather an administrative
business solution or a business plan enhanced by common
generic hardware. . . .
. . . .
. . . Applying software and computers to abstract ideas as
claimed is not significantly more. Utilizing a GUI to display and
submit trade information and orders is not a technical solution
but an economic one. . . . Applicant’s claims are not focused on
improving computer capabilities but on placement of a trade.
Placing trades using an interface is solving a business not
technical problem. Using computers to do so is not improving
computer processing. Examiner further notes that programming
computers with software to display specialized interactive
trading screens is solving a business problem using computers.
The processing of a computer itself is not improved by the
programming, if there is a benefit, it is to traders, not to
computer technology. In other words, the benefit is to order
entry, not computer processing.
Ans. 3–4, 6, 8, 10, 13–14 (emphasis added).
C.3 2019 Revised Guidance Step 2B
Applying the Alice/Mayo analysis, the Examiner determines:
The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
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exception because the additional element(s) or combination of
elements in the claim(s) other than the abstract idea per se
amount(s) to no more than: . . . recitation of generic computer
structure that serves to perform generic computer functions
that are well-understood, routine, and conventional activities
previously known to the pertinent industry.
. . . The claim recites the additional elements of a
computer memory/processor to perform the claimed steps. The
computer memory/processor is recited at a high level of
generality and only performs generic functions that are well-
understood, routine and conventional activities previously
known to the industry. . . .
. . . The Alice decision noted that generic structures that
merely apply the abstract ideas are not significantly more than
the abstract ideas, and Applicant’s specification reinforces the
premise that the computer of the claim language is general
purpose (paragraphs [0017 & 0018]). . . .
. . . .
. . . The generically recited computer elements such as
computer memory/processor do not add a meaningful limitation
to the abstract idea because they would be routine in any
computer implementation.
Ans. 3–6, 9 (emphasis added).
D. Appellant’s § 101 Arguments and Board’s Analysis
D.1. 2019 Revised Guidance Step 2A, Prong 1
Appellant contends:
In applying the two-step subject matter eligibility
standard, the Examiner has determined that the claims are
“directed towards trading financial instruments, which is a
fundamental economic practice.....” Appellant respectfully
submits that the error in the Examiner's analysis lies most
significantly in this dramatic oversimplification of the claimed
subject matter. . . . The error made by the district court in Enfish
is precisely the same as the Examiner’s error here; indeed, this
“high level” description of the claims as “trading financial
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instruments” is completely untethered from the actual
language of the claims. . . .
. . . .
Additionally, the characterization of the claims as being
directed to “trading financial instruments” is not only an over-
generalization, but an inaccurate overgeneralization. While the
invention is utilized in the field of trading of financial
instruments, the invention itself is not directed to the concept of
trading. Appellant acknowledges that “trading” is known.
Rather, the invention involves a computing technique that can
be used to facilitate trading.
Appeal Br. 13–15 (Appellant’s citations omitted; panel’s emphasis added);
see also Reply Br. 2–3, 5–6.
Independent claim 32 recites the following steps:
[A] “storing an order submission application . . ., the order submission
application including rules for implementing an investment strategy
encompassing multiple types of financial instruments”;
[B] “facilitating trading of the financial instruments . . . and
performing steps including”;
[C] “receiving and processing real time updates from a financial
instrument server coupled to external pricing sources”;
[D] “applying the investment strategy to the real time updates to
determine if an order should be generated for a selected one or more of the
financial instruments”;
[E] “generating an order for the one or more selected financial
instruments when the investment strategy indicates an order should be
generated”; and
[F] “transmitting the order . . . to the financial instrument server for
execution.”
Independent claims 42 and 52 recite similar elements. Consistent
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with the Examiner’s findings, the steps ([A]–[F]) recite a method of trading
financial instruments involving receiving and processing real time updates,
applying an investment strategy to the real time updates, generating an order
for financial instruments, and transmitting the order. See Non-Final Act. 4,
6. The trading of financial instruments is a well-known and prevalent
economic practice, as admitted by Appellant in Appellant’s Specification:
Online trading of financial instruments such as equities
(i.e., stocks) has become increasingly popular. In order to
facilitate such trading, systems have been developed to provide
data streams of real time exchange market data . . . . Systems
have further been developed to accept this exchange data into
electronic spreadsheets and to provide a link from the
spreadsheet to exchange trading systems.
Spec. ¶ 2. Thus, like the concept of mitigating settlement risk in Alice, and
the concept of hedging against risk in Bilski v. Kappos, 561 U.S. 593, 611
(2010), the concept of trading financial instruments “is a fundamental
economic practice long prevalent in our system of commerce.” Alice, 573
U.S. at 219. Accordingly, we conclude claims 32, 42, and 52 recite a
fundamental economic practice, which is one of certain methods of
organizing human activity, where certain methods of organizing human
activity is one of the enumerated categories of abstract ideas in the 2019
Revised Guidance.
Appellant’s argument that claims 32, 42, and 52 are not directed to an
abstract idea because the Examiner has oversimplified claim elements in
describing the claims as “trading financial instruments” is not persuasive
because the inquiry at Step 2A, Prong 1 of the 2019 Revised Guidance is not
whether the claims are directed to an abstract idea, but rather whether the
claims recite an abstract idea. As the Examiner has identified the respective
elements of claims 32, 42, and 52, that the Examiner concludes recite the
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abstract idea of trading financial instruments (see Ans. 6), we do not find
error in the Examiner’s finding that the claims recite an abstract idea.
D.2. 2019 Revised Guidance Step 2A, Prong 2
Having determined that claims 32, 42, and 52 recite an abstract idea,
we now turn to whether claims 32, 42, and 52 are directed to that abstract
idea, or instead integrate the judicial exception into a practical application.
Appellant contends:
In the analysis set forth in the Office Action, the Examiner
has also failed to evaluate the claim as a whole. . . . Here, the
Office Action does not provide any convincing explanation on
how the pending claims, as a whole, are directed to an abstract
idea. Instead, the Office repeats its mistake from Step 2A,
overgeneralizing the claims and drawing conclusions based on
the overgeneralization. . . .
. . . The Examiner has cited multiple cases, all of which
included claims that are readily distinguishable from the claims
currently pending. For example, the Examiner repeatedly cites
Electric Power Group, Ultramerical, and buySafe. In Electric
Power Group, the claims were directed to only to “collecting
information, analyzing it, and displaying certain results of the
collection and analysis”. In contrast, the pending claims include
steps that go far beyond collection, analysis, and display. The
claims contain technical components performing operations
such as transmitting orders, executing orders, and performing
updates. With respect to Ultramercial, the claims in
Ultramercial were devoid of computing components and were
not technical in nature. In contrast, the pending claims contain
multiple computing components and are indeed technical in
nature. Likewise, in BuySafe, the claims included generic
computer functionality only. Specifically, the word “computer”
was included in a claim that was directed to an otherwise
commercial practice. In contrast, the pending claims are
fraught with particular and specific computer functionality
required to perform the claimed method and specific system
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components that go far beyond “generic” computing
components.
Appeal Br. 16–17 (Appellant’s citations omitted; panel’s emphasis added).
We are not persuaded by Appellant’s argument. In addition to
reciting a method of trading financial instruments, claim 32 further recites:
[1] the order submission application is stored “in a computer
memory”;
[2] the trading of financial instruments is facilitated by “executing
programming of the order submission application with at least one computer
processor”;
[3] the real time updates are “transmitted over the Internet from the
financial instrument server through a dynamic data exchange interface
coupled to the order submission application and an Internet browser, the
dynamic data exchange interface enabling the financial instrument server
and the order submission application to share data”;
[4] “the order submission application automatically assigning an order
identifier to the order when the order is generated by the order submission
application”;
[5] the order is transmitted “through the dynamic data exchange
interface over the Internet”;
[6] “saving the order identifier at the financial instrument server and
generating a new and unique server identifier for placement in the order to a
trading engine”;
[7] “correlating, at the financial instrument server, the order identifier
with the server order identifier upon receipt of an update from the trading
engine”; and
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[8] “updating the order submission application by transmitting updates
from the financial instrument server over the Internet upon execution of the
order”.
Independent claims 42 and 52 recite similar elements. Consistent
with the Examiner’s findings, the recitation of “a computer memory,” “at
least one computer processor,” “Internet,” “a dynamic data exchange,” and
“an Internet browser,” merely generally link the method of trading financial
instruments recited in claim 32 to a computer to perform the method of
trading financial instruments. See Ans. 3–4, 8–9.
We further agree with the Examiner that there is no indication (either
in the claims or in Appellant’s Specification) that the elements of claims 32,
42, and 52 (whether considered individually or in combination) improve the
functioning of a computer or any other technology. See Ans. 8. As correctly
found by the Examiner, the claimed invention merely provides a business
solution to a business problem, where the implementation of the business
solution on a general-purpose computer improves a business problem related
to the trading of financial instruments. See Ans. 10.
Further, we conclude the recitations of “automatically assigning an
order identifier to the order,” “saving the order identifier,” “generating a new
and unique server identifier,” “correlating . . . the order identifier with the
server order identifier,” and “transmitting updates . . . upon execution of the
order,” merely recite required electronic recordkeeping functionality to
facilitate the trading of financial instruments. Such electronic recordkeeping
is similar to computer-implemented functionality, that courts have
previously held constitutes insignificant extra-solution activity that does not
provide significantly more than the underlying abstract idea.” See Alice, 573
U.S. at 225 (“Using a computer to create and maintain ‘shadow’ accounts
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amounts to electronic recordkeeping—one of the most basic functions of a
computer.”).
Appellant further contends:
Appellant directs the Board's attention to the Federal
Circuit decision in Trading Technologies International Inc., v.
CQG, Inc. . . . has recognized that specific technologic
modifications to solve a problem or improve the functioning of
a known system generally produce patent-eligible subject
matter”, citing DDR Holdings LLC v. Hotels.com. L.P.
Similarly, the pending claims require a real time computerized
trading system with no pre-existing analog. The order
submission application, DDE server, financial instruments
server, and trading engines are connected in a very specific
manner and use a particular algorithm to exchange
information that improves the speed and tracking capability of
orders.
. . . As defined in Meriam Webster’s dictionary, an
algorithm is “a set of steps that are followed in order to solve a
mathematical problem or to complete a computer process.” With
respect to the specification, paragraphs 25-49, for example, are
entirely devoted to the disclosure of algorithms. The algorithms
are further expressed in claim language in the pending claims.
Additionally, the Federal Circuit in DDR Holdings held
that claims that address a business challenge (e.g., of retaining
website visitors) are patent eligible under 35 U.S.C. §101. . . .
The claimed invention here is analogous to the claims in DDR
Holdings that were found to recite patent-eligible subject matter
because the claims address the specific business problem of
effectively automatically trading financial instruments of
various types online using a submission application, dynamic
data exchange interface and financial instrument server
communicating with one another over a network. Indeed, as in
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DDR Holdings, the claimed solution is necessarily rooted in
computer technology.
Appeal Br. 21–23 (Appellant’s citations omitted; panel’s emphasis added).
Appellant’s argument that the claims are similar to the claims at issue
in Trading Technologies International, Inc. v. CQG, Inc., 675 F. App’x 1001
(Fed. Cir. 2017) is not persuasive. The scope of the claims is not
commensurate with the argued improvement of increased speed and tracking
capability of orders. More specifically, the claimed “order submission
application,” “dynamic data exchange,” “financial instrument server,” and
“trading engine” are not recited at a level of specificity that address and
resolve the specifically identified problem of reduced speed and tracking
capability in prior online trading systems. In contrast, in Trading
Technologies, the court determined the claims did not “simply claim
displaying information on a graphical user interface” but rather “require[d] a
specific, structured graphical user interface paired with a prescribed
functionality directly related to the graphical user interface’s structure,” and
it was the specifically structured graphical user interface with prescribed
functionality that “addressed . . . and [resolved] a specifically identified
problem in the prior state of the art.” Trading Technologies, 675 F. App’x at
1004.
Appellant’s argument that the claims recite, and the Specification
discloses, a specific algorithm is also not persuasive. While the claims do
recite, and the Specification does disclose, steps of an algorithm performed
by the at least one processor, Appellant does not sufficiently explain how the
recited steps achieve the argued improvement of increased speed and order
tracking capability beyond the mere linking of the method of trading
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financial instruments to a computer to perform the method of trading
financial instruments.
Further, we are not persuaded by Appellant’s argument that the claims
are similar to the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014). Unlike the claims at issue in DDR
Holdings, the claims fail to recite the technical details that distinguish the
claimed process of trading financial instruments from prior processes of
trading financial instruments.
Appellant additionally contends:
The Interim Guidance states that meeting one of the following
would “appear to be required to meet patentability for an abstract
idea”: “. . . [3] meaningful limitations beyond generally linking
the use of an abstract idea to a particular technological
environment; [4] applying the judicial exception with, or by use
of, a particular machine.” . . .
. . . .
. . . [T]he claims provide meaningful limitations beyond
generally linking the use of an allegedly abstract idea to a
particular technological environment, thereby fulfilling
condition (3) above. . . .
. . . .
Furthermore, the claims satisfy condition (4) above, by
applying the judicial exception with, or by use of, a particular
machine. With respect to both the system and method claims, the
particular machine imposes a meaningful limit on the scope of
the claim and the use of the machine is not directed to
insignificant extra-solution activity.
Appeal Br. 23–26 (Appellant’s citations omitted; panel’s emphasis added).
These arguments are not persuasive either. We agree with the
Examiner that the recited “computer memory,” “computer processor,”
“Internet,” “dynamic data exchange,” and “Internet browser” are recited at a
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high level of generality and do not either go beyond linking the method of
trading financial instruments to a technological environment or apply the
method of trading financial instruments with a specific machine. See
Ans. 14–15.
In light of the above, and consistent with the Examiner’s
determinations, we conclude that claims 32, 42, and 52 do not integrate the
judicial exception into a practical application. We determine claims 32, 42,
and 52 do not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h). We agree with the Examiner that
claims 32, 42, and 52 are directed to a judicial exception, and do not
integrate the judicial exception into a practical application.
D.3. 2019 Revised Guidance Step 2B
Appellant contends:
The Interim Guidance states that meeting one of the following
would “appear to be required to meet patentability for an abstract
idea”: . . . “[6] adding a specific limitation other than what is
well-understood, routine and conventional in the field, or
adding unconventional steps that confine the claim to a
particular useful application.”
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It is worth noting that the claims have not been rejected
under 35 U.S.C. §§102 or 103 and therefore contain multiple
steps that are not routine or conventional in the field, thereby
satisfying condition (6).
Appeal Br. 23–24 (Appellant’s citations omitted; panel’s emphasis added).
Consistent with the Examiner’s findings, we agree with the Examiner
that the claims merely recite generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the relevant industry. See
Ans. 3–4, 9–11. As the Examiner correctly found, evidence of the well-
understood, routine, and conventional nature of the claimed elements can be
found in Appellant’s Specification, which describes that the claimed system
is executed on a general-purpose computer and includes any electronic
spreadsheet application known to a person of ordinary skill in the art. See
Ans. 5 (citing Spec. ¶¶ 17–18).
Appellant’s argument that the lack of rejections under 35 U.S.C.
§§ 102 and 103 is evidence that the claims contain steps that are not well-
understood, routine, or conventional is not persuasive. This argument
conflates the anticipation test under 35 U.S.C. § 102 and the obviousness test
under 35 U.S.C. § 103 with the patent-eligibility test under 35 U.S.C. § 101.
As the Examiner correctly found, these tests are separate and distinct tests,
and passing one or both of the anticipation and obviousness tests does not
equate to passing the patent-eligibility test. See Ans. 14.
In light of the above, and consistent with the Examiner’s
determinations, we determine that beyond the abstract idea, claims 32, 42,
and 52 do not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity in the field or
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unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
E. Other § 101 Arguments
Appellant also contends:
The Examiner cannot dispute that the present claims, if
allowed, pose no risk of preemption for the field of “trading
financial instruments”, or any other field of human endeavor.
. . .
Further, even if the claims are directed to an abstract idea
as alleged by the Office, then the particular, detailed steps in the
remainder of the claim are certainly enough to escape the
conclusion that the claims would preempt an entire field.
Appeal Br. 18–19 (Appellant’s citations omitted; panel’s emphasis added).
This argument is not persuasive. The Federal Circuit has made clear
that “the absence of complete preemption does not demonstrate patent
eligibility” of a claim. Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also Ans. 11–12.
Appellant further contends:
Additionally, Appellant respectfully submits that the
Examiner’s approach amounts to a de facto ban on software
patents.
. . . The Examiner’s application of the Mayo/Alice
framework, however, has virtually guaranteed a ban of any and
all software and business method patents. By impermissibly
stripping the claim in question of all known technological
elements and/or distilling the claimed invention to an
oversimplified concept (rather than treating the entire claim as a
whole . . .), the Examiner has ensured that Step 2A of the
Mayo/Alice framework always results in finding the software
or business method claim as being directed to an abstract idea,
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and that Step 2B amounts to nothing more than a simple search
for hardware improvement.
Appeal Br. 20–21 (Appellant’s citations omitted; panel’s emphasis added);
see also Reply Br. 4–5.
This argument is not persuasive either. For the reasons previously
discussed, the Examiner’s findings are consistent with the framework
described in the 2019 Revised Guidance.
CONCLUSION
The Examiner has not erred in rejecting claims 32–36, 40–44, and 46–
58 as failing to recite patent-eligible subject matter under 35 U.S.C. § 101.
The Examiner’s rejection of claims 32–36, 40–44, and 46–58 as
failing to recite patent-eligible subject matter under 35 U.S.C. § 101 is
affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
32–36, 40–
44, 46–58
101 Eligibility 32–36, 40–
44, 46–58

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