Lutnick, Howard W. et al.

Patent Trials and Appeals Board

Jul 23, 2020

13613862 - (D) (P.T.A.B. Jul. 23, 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.
13/613,862 09/13/2012 Howard W. Lutnick 08-2206-C1 7246
63710 7590 07/23/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
MILEF, ELDA G
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07/23/2020 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
mcatarino@cgolaw.com
patentdocketing@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HOWARD W. LUTNICK, MARK MILLER,
DEAN P. ALDERUCCI, BILL RICE,
KEVIN FOLEY, ANDREW FISHKIND,
PHILIP MARBER, and BRIAN GAY
____________

Appeal 2019-001517
Application 13/613,862
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
AMEE A. SHAH, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2019-001517
Application 13/613,862

2

STATEMENT OF THE CASE1
Howard W. Lutnick, Mark Miller, Dean P. Alderucci, Bill Rice,
Kevin Foley, Andrew Fishkind, Philip Marber, and Brian Gay (Appellant2)
seeks review under 35 U.S.C. § 134(a) of a final rejection of claims 49–59,
63–74, 78, and 79, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a way of allowing electronic commerce
marketplaces and order management systems to support securities trading.
Specification 1:13–15.
An understanding of the invention can be derived from a reading of
exemplary claim 49, which is reproduced below (bracketed matter and some
paragraphing added).
49. A method comprising:
[1] receiving, by at least one processor from at least one order
management system, data indicative of non-binding open
orders;
[2] converting, by the at least one processor, the data indicative
of the non-binding open orders into a standardized format;
[3] broadcasting, by the at least one processor, the data
indicative of the non-binding open orders to a plurality of
recipient trading device graphical user interfaces in accordance

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed July 26, 2018) and Reply Brief (“Reply Br.,” filed November 30,
2018), and the Examiner’s Answer (“Ans.,” mailed October 1, 2018), and
Final Action (“Final Act.,” mailed February 15, 2018).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as CFPH,
LLC (Appeal Br. 3).

Appeal 2019-001517
Application 13/613,862

3

with a respective filter received from each recipient trading
device graphical user interface;
[4] determining, by the at least one processor, that a first order
of the open orders matches a second order of the open orders;
[5] in response to determining that the first order matches the
second order, transmitting, from the at least one processor to a
trading device graphical user interface, data indicative of a
request for acceptance of a trade fulfilling at least part of the
first order and at least part of the second order;
[6] receiving, by the at least one processor, data indicative of an
acceptance by the trading device;
[7] in response to receiving the acceptance, facilitating
execution of the trade, by the at least one processor, by
preventing a negotiation until execution of the trade is
complete;
and
[8] suppressing, by the at least one processor, evidentiary data
indicative of the second order matching the first order and
evidentiary data indicative of the acceptance, until execution of
the trade is complete.
The Examiner relies upon the following prior art:

Name Reference Date
Buist US 6,408,282 B1 June 18, 2002
Gerhard US 6,952,683 B1 Oct. 4, 2005
Waelbroeck US 7,428,506 B2 June 23, 2008
Kim US 7,689,495 B1 Mar. 30, 2010
Merrin US 7,747,515 B1 June 29, 2010
Ford US 2009/0018945 A1 Jan. 15, 2009

Appeal 2019-001517
Application 13/613,862

4

Claims 49–59, 63–74, 78, and 79 stand rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.
Claims 49–59, 63–74, 78, and 79 stand rejected under 35 U.S.C.
§ 112, first paragraph as lacking a supporting written description within the
original disclosure.
Claims 49–59, 63–74, 78, and 79 stand rejected under 35 U.S.C.
§ 112, second paragraph as failing to particularly point out and distinctly
claim the invention.
Claims 49–53, 55–59, 63–65, 70, 72, 74, 78, and 79 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Merrin, Ford, and
Waelbroeck.
Claim 54 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Merrin, Ford, Waelbroeck, and Kim.
Claims 66–69 and 73 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Merrin, Ford, Waelbroeck, and Gerhard.
Claim 71 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Merrin, Ford, Waelbroeck, and Buist.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of written description matter turn primarily on whether
there is support for limitation 7.
The issues of indefiniteness matter turn primarily on whether one of
ordinary skill would understand the metes and bounds of the claims.
The issues of obviousness turn primarily on whether the art describes
the claim limitations.
Appeal 2019-001517
Application 13/613,862

5

FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Merrin
01. Merrin is directed to electronic commerce marketplaces and
order management systems for supporting securities trading.
Merrin 1:17–20.
02. Merrin describes a negotiation module that supports
negotiations between traders. An indications module transmits
orders among the traders based upon filtering criteria. These
orders are transmitted among the traders in the form of non-
binding indications. Based upon these indications, traders at one
institution can enter into negotiations with traders at other
institutions. In one embodiment, at least parts of the negotiations
are conducted anonymously. Merrin 3:1–10.
03. Merrin describes an OMS data integration module (ODIM).
The ODIM receives and processes data representative of orders
received from the OMS databases in the trading systems. In a
preferred embodiment, the data from the OMS databases are
provided to the ETM in a standardized format that requires little
processing by the ODIM. In an alternative embodiment, the data
from the OMS databases are provided to the ETM in one or more
different formats depending upon factors such as the type of OMS
used by the trading systems, the types of interfacing links
supplying the data to the ETM, the type of security or orders to
Appeal 2019-001517
Application 13/613,862

6

which the data pertains, and the like. In this latter embodiment,
the ODIM preferably converts the data into a standardized format
for use by other modules. Merrin 6:59–7:5.
Ford
04. Ford is directed to using an electronic trading market to match
orders received by a number of order input systems. Ford para. 2.
05. Ford describes pricing a transaction in any manner. It may set
the transaction price as the midpoint of a price spread determined
from publicly available best bid/offer information. In this manner,
the transaction may be completed without requiring pricing
negotiation between the parties. Ford para. 84.
Waelbroeck
06. Waelbroeck is directed to managing certified trading
information to direct and execute confidential trading interests
over a computer network such as the Internet. Waelbroeck 1:16–
19.
07. Waelbroeck describes executing a query against a confidential
database to determine which other MPID (identified market
participant) is most likely to take the contra to that order when a
user sends a preferenced order to this MPID. It then issues a new
preferenced SelectNet order to this second MPID. For illustration
purposes we will assume that the originating party’s MPID is
AAAA, the system is given the MPID SSSS and the target’s
MPID is BBBB. The first participant (AAAA) will issue an order
preferenced to SSSS, following which SSSS executes a query
against the CTI information database and determines that the
Appeal 2019-001517
Application 13/613,862

7

optimum recipient for this order is BBBB. SSSS then issues a
preferenced order to BBBB. If BBBB chooses to accept (execute)
this order, SSSS in turn attempts to execute the order entered by
AAAA. When both orders have been successfully executed, the
system (SSSS) issues a message containing the details of the trade
such as price, side of each party, etc. This message locks in the
trade and triggers the clearing process. In this embodiment there
is a possibility of a race condition wherein AAAA had issued a
cancel request message at the same time that BBBB had executed
the order. This creates a possibility of SSSS being left with a
liability with BBBB that does not match a negating liability with
AAAA, so the execution from BBBB cannot be processed until
the market has been successfully notified that AAAA’s order is
matched and not cancelable. This new difficulty arises because a
market negotiation system (in this case SelectNet) normally does
not contemplate the possibility of an intermediary entering an
order on behalf of another party where said intermediary does not
accept liability for the order. The normal workflow of a market is
one wherein a party entering an order is liable for the order,
independently of whether another order has been previously
entered by another party (here, AAAA). To link the two legs of
the trade into a single transaction, the market systems must be
modified so that messages that would lead to processing of the
first leg of the trade are suppressed until the second leg of the
trade can be executed. An enabling solution is described next.
Preferably, the market’s normal processing is modified so that the
Appeal 2019-001517
Application 13/613,862

8

first execution message received from BBBB does not trigger an
execution confirm message back to BBBB or the corresponding
clearing report that would otherwise have locked in that trade for
clearing. Instead, only the execution message notifying SSSS of
the execution by BBBB is allowed to proceed. SSSS then
executes the originator’s order, whereupon once again the market
system modification suppresses notification of the execution to
AAAA and clearing, leaving only the execution confirm message
back to SSSS. At this point neither AAAA nor BBBB are able to
cancel their orders, since both have been executed as far as the
market system is concerned. Upon receipt of the second execution
SSSS triggers a trade report that locks in the trade for clearing
purposes. Preferably, the anonymity is maintained permanently
by having SSSS intermediate the transaction in the same way as
an agency broker would intermediate a transaction between two
other brokers without the benefit of a spread. So both AAAA and
BBBB are trading with SSSS, and the trade will clear as two
trades where SSSS's clearing responsibilities net to zero.
Waelbroeck 22:30–23:21.
ANALYSIS
We initially construe the limitation “preventing a negotiation until
execution of the trade is complete.” Claim 49, limitation 7. The
Specification does not describe preventing a negotiation as such. Appellant
does not cite to where the Specification specifically supports this limitation,
instead citing the entirety of the Specification and Drawings as support for
all claim limitations. Appeal Br. 5. The closest the Specification comes to
Appeal 2019-001517
Application 13/613,862

9

supporting this limitation is “evidence that a first party’s order matches a
second party’s order may be suppressed from the first party until and unless
the second party decides to proceed with the order and/or until the execution
of the order is facilitated.” Spec. 30:29–31. This describes suppressing
communication of evidence between parties until after execution. Thus
“preventing a negotiation until execution of the trade is complete” is
construed to mean suppressing some communication between the parties
until execution of the trade is complete. We apply this construction for the
purpose of proceeding with the closest interpretation we can determine.
That we make such a construction does not negate or counter our analysis
and conclusion as to the written description rejection infra regarding whether
support for the limitation is adequate, as this construction stems from
inadequate original filing support.
Claims 49–59, 63–74, 78, and 79 rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more
STEP 13
Claim 49, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
Appeal 2019-001517
Application 13/613,862

10

determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question, .
. . consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as 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 Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “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.” Revised Guidance, 84 Fed. Reg.
at 54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
Appeal 2019-001517
Application 13/613,862

11

STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 49 recites receiving, converting, and broadcasting order data,
determining order data matching, transmitting and receiving acceptance
data, preventing data negotiation, and suppressing data. Broadcasting data is
transmitting data. Converting, determining, preventing, and suppressing
data are rudimentary data analyses. Thus, claim 49 recites receiving,
analyzing, and transmitting data. None of the limitations recite
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 49 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
Appeal 2019-001517
Application 13/613,862

12

of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 49 recites the concept of
managing financial securities trading. Specifically, claim 49 recites
operations that would ordinarily take place in advising one to match and
execute open orders prior to negotiation by suppressing order
communication data. The advice to match and execute open orders prior to
negotiation by suppressing order communication data involves a request for
acceptance of a trade, which is an economic act, and receiving order
acceptance, which is an act ordinarily performed in the stream of financial
trading commerce. For example, claim 49 recites a “request for acceptance
of a trade,” which is an activity that would take place whenever one is
managing financial securities trading. Similarly, claim 1 recites “receiving
. . . data indicative of an acceptance by the trading device,” which is also
characteristic of commercial trading.
The Examiner determines the claims to be directed to securities
trading and order management. Final Act. 5. The preamble to claim 49 does
not recite what it is to achieve, but the steps in claim 49 result in managing
financial securities trading by matching and executing open orders prior to
negotiation by suppressing order communication data absent any
technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitations 1 and 6 recite receiving data.
Limitations 2–5, 7, and 8 recite generic and conventional analyzing, and
transmitting of order data, which advise one to apply generic functions to get
to these results. The limitations thus recite advice for matching and
executing open orders prior to negotiation by suppressing order
communication data. To advocate matching and executing open orders prior
Appeal 2019-001517
Application 13/613,862

13

to negotiation by suppressing order communication data is conceptual advice
for results desired and not technological operations.
The Specification, at page 1, lines 13–15, describes the invention as
relating to electronic commerce marketplaces and order management
systems for supporting securities trading. Thus, all this intrinsic evidence
shows that claim 49 recites managing financial securities trading. This is
consistent with the Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because managing financial
securities trading is a commercial interaction for exchanging financial assets.
The concept of managing financial securities trading by matching and
executing open orders prior to negotiation by suppressing order
communication data is one idea for identifying one order among others for
trading. The steps recited in claim 49 are part of how this might
conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. See buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed.Cir.2014) (creating a transaction performance
guaranty for a commercial transaction on computer networks such as the
Internet); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1338 (Fed.Cir.2013) (generating rule–based tasks for processing
an insurance claim); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of
Canada (U.S.), 687 F.3d 1266, 1278 (Fed.Cir.2012) (managing a stable
value protected life insurance policy); Dealertrack, 674 F.3d at 1333
(processing loan information through a clearinghouse); Smart Systems
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1372 (Fed.
Appeal 2019-001517
Application 13/613,862

14

Cir. 2017) (collection, storage, and recognition of data); Alice, 573 U.S. at
221 (intermediated settlement); Bilski, 561 U.S. at 611–6112 (risk hedging);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1367 (2015) (tracking financial transactions).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing, and
transmitting data mimic human thought processes of observation, evaluation,
judgment, and opinion, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016). Claim 49, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, analysis, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claim 49 recites receiving, analyzing, and transmitting data, and not
a technological implementation or application of that idea.
From this we conclude that at least to this degree, claim 49 recites
managing financial securities trading by matching and executing open orders
prior to negotiation by suppressing order communication data, which is a
commercial and legal interaction, one of certain methods of organizing
human activity identified in the Revised Guidance, and, thus, an abstract
idea.
Appeal 2019-001517
Application 13/613,862

15

STEP 2A Prong 2
The next issue is whether claim 49 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e., integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1 and 6 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Steps 2
and 5 are insignificant activity, such as storing, transmitting, or displaying
the results. Steps 3, 4, 7, and 8 recite generic computer processing expressed
in terms of results desired by any and all possible means and so present no
more than conceptual advice. All purported inventive aspects reside in how
the data is interpreted and the results desired, and not in how the process

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
Appeal 2019-001517
Application 13/613,862

16

physically enforces such a data interpretation or in how the processing
technologically achieves those results.
Viewed as a whole, Appellant’s claim 49 simply recites the concept of
managing financial securities trading by matching and executing open orders
prior to negotiation by suppressing order communication data as performed
by a generic computer. This is no more than conceptual advice on the
parameters for this concept and the generic computer processes necessary to
process those parameters, and do not recite any particular implementation.
Claim 49 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The Specification only spells out different
generic equipment8 and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of managing financial securities trading by matching and
executing open orders prior to negotiation by suppressing order
communication data under different scenarios. It does not describe any
particular improvement in the manner a computer functions. Instead, claim
49 at issue amounts to nothing significantly more than an instruction to
apply managing financial securities trading by matching and executing open
orders prior to negotiation by suppressing order communication data 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 225–26.

8 The Specification describes a general or specific-purpose computer system.
Spec. 14:33–15:2.
Appeal 2019-001517
Application 13/613,862

17

None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 49 is directed to achieving the result of
managing financial securities trading by advising one to match and execute
open orders prior to negotiation by suppressing order communication data,
as distinguished from a technological improvement for achieving or
applying that result. Under Mayo step one, this amounts to commercial or
legal interactions, which fall within certain methods of organizing human
activity that constitute abstract ideas. The claim does not integrate the
judicial exception into a practical application.
STEP 2B
The next issue is whether claim 49 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
Appeal 2019-001517
Application 13/613,862

18

the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[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.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, and transmitting data amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. See
Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
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
Appeal 2019-001517
Application 13/613,862

19

by any general purpose computer without special programming”). None of
these activities is used in some unconventional manner nor does any produce
some unexpected result. Appellant does not contend it invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 49 add nothing that is not already present when the steps
are considered separately. The sequence of data reception, analysis, and
transmission is equally generic and conventional. 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) (sequence of data
retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d
1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling,
and monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 49 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
Appeal 2019-001517
Application 13/613,862

20

REMAINING CLAIMS
Claim 49 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of managing financial securities trading by advising one to
match and execute open orders prior to negotiation by suppressing order
communication data, without significantly more.
Appeal 2019-001517
Application 13/613,862

21

APPELLANT’S ARGUMENTS
We are not persuaded by Appellant’s argument that
the Final Action does not cite an appropriate court decision that
supports the identification of the subject matter recited in the
claim language as an abstract idea, nor does the Final Action
cite to a court decision that is reasonably tied to the facts of the
case to avoid relying upon language taken out of context.
App. Br. 11 (emphasis omitted). Such decisions are cited with supporting
analysis supra. Appellant goes on to contend that buySafe and Bilski (both
supra) are inapplicable. Id.
Appellant argues that the instant claims recite the use of a computer,
unlike Bilski. Simply placing an invention in a computer context does not
confer eligibility. “The Supreme Court and this court have repeatedly made
clear that merely limiting the field of use of the abstract idea to a particular
existing technological environment does not render the claims any less
abstract.” Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253,
1258 (Fed. Cir. 2016).
Appellant then argues that the instant claims recite converting data
into a common format, unlike buySafe. This is no more than the electronic
analog of translating the language used in a message. Simply reciting the
conceptual idea for doing so does not confer eligibility because it fails to
recite any technological implementation details.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Appeal 2019-001517
Application 13/613,862

22

Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed.
Cir. 2016).
Appellant cites to Trading Technologies International, Inc. v.
CQG, Inc., 875 Fed. Appx. 1001 (Fed. Cir. 2017). Appeal Br. 12. First,
this case is non-precedential and two related precedential cases with user
interfaces had the claims held ineligible. Trading Techs. Int’l, Inc. v. IBG
LLC, 921 F.3d 1084 (Fed. Cir. 2019) and Trading Techs. Int’l, Inc. v. IBG
LLC, 921 F.3d 1378 (Fed. Cir. 2019). Second, the claims do not recite and
the Specification does not describe structure associated with the argued
filtering, only data content. In the latter precedential Trading Technologies,
in response to a similar argument that the claims “provide a particular
graphical user interface that improves usability, visualization, and
efficiency,” the Federal Circuit determined that “the claims are focused on
providing information to traders in a way that helps them process
information more quickly, not on improving computers or technology. . . .
The tool for presentation’ here . . . is simply a generic computer.” Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F.3d at 1384–85 (citations omitted).
Similarly, here the claims are not focused on an interface, but on providing
information to users in a way that helps them process information more
quickly, not on improving computers or technology, and the tool for
presentation is a generic computer.
We are not persuaded by Appellant’s argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit’s findings in BASCOM
(BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). App. Br. 12–13. Initially, we remind Appellant that BASCOM did
Appeal 2019-001517
Application 13/613,862

23

not find claims eligible on the substance, but rather that the Appellees did
not provide sufficient evidence to support a 12(b)(6) motion to dismiss in
which facts are presumed in the non-movant’s favor.
The key fact in BASCOM was the presence of a structural change in
“installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server.” BASCOM, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
Claims 49–59, 63–74, 78, and 79 rejected under 35 U.S.C. § 112, first
paragraph as lacking a supporting written description within the original
disclosure
The Examiner determines there is no support in the originally filed
disclosure for “in response to receiving the acceptance, facilitating execution
of the trade, by the at least one processor, by preventing a negotiation until
execution of the trade is complete.” Final Act. 3; Claim 49. Appellant does
not cite specific support in the Appeal Brief’s Summary of Claimed Subject
Matter. Appellant instead cites the entirety of the Specification and
Drawings without further analysis. Appellant cites Specification paras. 26,
107, and 110 from the Published Application in the arguments. Appeal
Br. 8–9. The portions cited correspond to originally filed Specification
7:12–14; 29:9–13; and 29:31–33. We are not persuaded by Appellant’s
argument. The first citation only describes automation. The last citation
only describes orders fulfilled according to a standard pricing mechanism.
Neither describes preventing negotiation. The middle citation describes no
negotiation being started, but, rather, a trade being facilitated without a
Appeal 2019-001517
Application 13/613,862

24

negotiation. Absence of negotiation is not suppression of negotiation.
Suppression means stopping something. Also, no criteria for stopping such
as the “in response to receiving the acceptance” of claim 49 is described.
Claims 49–59, 63–74, 78, and 79 rejected under 35 U.S.C. § 112, second
paragraph as failing to particularly point out and distinctly claim the
invention
We are persuaded by Appellant’s argument that one of ordinary skill
would understand the claims. App. Br. 10.
Claims 49–53, 55–59, 63–65, 70, 72, 74, and 78–79 rejected under
35 U.S.C. § 103(a) as unpatentable over Merrin, Ford, and Waelbroeck
We are not persuaded by Appellant’s argument that the art fails to
describe “converting, by the at least one processor, the data indicative of the
non-binding open orders into a standardized format.” App. Br. 14; Claim
49. As the Examiner responds, Merrin at column 6, line 59 through
column 7, line 5 says it “converts the data into a standardized format.” FF
03; Ans. 9.
We are not persuaded by Appellant’s argument that the art fails to
describe “suppressing . . . evidentiary data indicative of the second order
matching the first order and evidentiary data indicative of the acceptance.”
Appeal Br. 15; Claim 49. Appellant contends that “one of ordinary skill in
the art would understand that suppressing notification of the order execution
is very different from suppressing evidentiary data indicative of the second
order matching the first order and evidentiary data indicative of the
acceptance.” Id. As the Examiner responds, Waelbroeck at column 22,
line 30 through column 23, line 21 describes this. FF 07; Ans. 10.
Appeal 2019-001517
Application 13/613,862

25

Appellant’s argument is conclusory without supporting evidence and
analysis. The argument also overlooks that order execution encompasses all
of the activities involved in such execution.
None of the remaining claims are separately argued.
Claim 54 rejected under 35 U.S.C. § 103(a) as unpatentable over Merrin,
Ford, Waelbroeck, and Kim
This rejection is not separately argued.
Claims 66–69 and 73 rejected under 35 U.S.C. § 103(a) as unpatentable
over Merrin, Ford, Waelbroeck, and Gerhard
This rejection is not separately argued.
Claim 71 rejected under 35 U.S.C. § 103(a) as unpatentable over Merrin,
Ford, Waelbroeck, and Buist
This rejection is not separately argued.
CONCLUSIONS OF LAW
The rejection of claims 49–59, 63–74, 78, and 79 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more is proper.
The rejection of claims 49–59, 63–74, 78, and 79 under 35 U.S.C.
§ 112, first paragraph as lacking a supporting written description within the
original disclosure is proper.
The rejection of claims 49–59, 63–74, 78, and 79 under 35 U.S.C.
§ 112, second paragraph as failing to particularly point out and distinctly
claim the invention is improper.
The rejection of claims 49–53, 55–59, 63–65, 70, 72, 74, 78, and 79
under 35 U.S.C. § 103(a) as unpatentable over Merrin, Ford, and
Waelbroeck is proper.
Appeal 2019-001517
Application 13/613,862

26

The rejection of claim 54 under 35 U.S.C. § 103(a) as unpatentable
over Merrin, Ford, Waelbroeck, and Kim is proper.
The rejection of claims 66–69 and 73 under 35 U.S.C. § 103(a) as
unpatentable over Merrin, Ford, Waelbroeck, and Gerhard is proper.
The rejection of claim 71 under 35 U.S.C. § 103(a) as unpatentable
over Merrin, Ford, Waelbroeck, and Buist is proper.
CONCLUSION
The rejection of claims 49–59, 63–74, 78, and 79 is affirmed.

In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
49–59, 63–74,
78, 79
101 Eligibility 49–59, 63–74,
78, 79

49–59, 63–74,
78, 79
112, first
paragraph
Written
Description
49–59, 63–74,
78, 79

49–59, 63–74,
78, 79
112, second
paragraph
Indefiniteness 49–59, 63–74,
78, 79
49–53, 55–59,
63–65, 70, 72,
74, 78, 79
103 Merrin, Ford,
Waelbroeck
49–53, 55–59,
63–65, 70, 72,
74, 78, 79

54 103 Merrin, Ford,
Waelbroeck,
Kim
54
66–69, 73 103 Merrin, Ford,
Waelbroeck,
Gerhard
66–69, 73
71 103 Merrin, Ford,
Waelbroeck,
Buist
71
Overall Outcome 49–59, 63–74,
78, 79

Appeal 2019-001517
Application 13/613,862

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) (2011).

AFFIRMED