Nasdaq Technology AB

Patent Trials and Appeals Board

Jun 17, 2020

2019003398 (P.T.A.B. Jun. 17, 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.
15/238,746 08/17/2016 Johan BERGENUDD JRL-4010-360 2985
23117 7590 06/17/2020
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
LIU, CHIA-YI
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHAN BERGENUDD and HENRIK ROSÉN
____________

Appeal 2019-003398
Application 15/238,746
Technology Center 3600
____________

Before CAROLYN D. THOMAS, ADAM J. PYONIN, and
IFTIKHAR AHMED, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–7, and 9–12. Claims 2 and 8 are
canceled. See Claim Appendix. We have jurisdiction over the appeal 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. Appellant identifies the real party in interest as Nasdaq
Technology AB. Appeal Br. 3.
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The present invention relates generally to processing electronic data
transaction messages. See Spec. ¶ 2.
Independent claim 7, reproduced below, is representative of the
appealed claims:
7. A method for processing electronic data transaction
messages, comprising:
determining by a backend computer server a first limit
parameter associated with a user and a second limit parameter
associated with the user;
receiving by a frontend server from user devices
electronic data transaction request messages and from the backend
computer server the first limit parameter associated with the user and
the second limit parameter associated with the user;
storing in a non-transitory storage medium electronic
data transaction request message information associated with the user,
the first limit parameter associated with the user, and the second limit
parameter associated with the user;
calculating by the frontend server at a first time a net data
transaction request parameter based on a combination of multiple
different data transaction requests associated with the user;
calculating by the frontend server at the first time a
transactional rate parameter associated with the user that is based on
the second limit amount parameter divided by the net data transaction
request parameter;
between the first time and a second later time, the
frontend server monitoring data transaction request messages received
from one or more client computers associated with the user;
adjusting by the frontend server the transactional rate
parameter based on data transaction requests associated with the user
that are received between the first time and a second later time;
calculating by the frontend server a transactional limit
parameter using the net data transaction request parameter, the
transactional rate parameter, and the first limit parameter;
determining by the frontend server that the transactional
limit parameter is exceeded; and
the frontend server suspending execution of further data
transactions of a first type requested by the user between the first time
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and the second later time when the transactional limit parameter is
exceeded including removing from a portion of the memory one or
more data transaction messages of the first type received from the one
or more client computers associated with the user while still
permitting storage in that portion of the memory and execution of
further data transaction requests of a second different type received
from the one or more client computers associated with the user
between the first time and a later time when the transactional limit
parameter is exceeded.

Appellant appeals the following rejection:
Claims 1, 3–7, and 9–12 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to patent-ineligible subject matter. Final
Act. 2–4.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Rejection under § 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 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 Supreme Court’s two-step 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 the framework,
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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.”). For example, 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,
69 (1972)).
The USPTO published revised guidance on the application of
35 U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”), updated by
USPTO, October 2019 Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf) (jointly referred to as “Revised Guidance”); see
also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942
(Oct. 18, 2019) (notifying the public of the availability of the October
update).
Under the Revised Guidance “Step 2A,” the office first looks 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); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). 84 Fed. Reg. at
51–52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) look 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. 84 Fed. Reg. at 56.
Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claim 7, and similarly, system
claim 1, the Examiner determines that the claims are directed to “calculating
and adjusting parameters based on received data . . . such as receiving and
processing transaction request (BuySAFE), mitigating settlement risk
(ALICE)[,] and collecting and analyzing transaction information and storing
data (FairWarning)” (Final Act. 3), which the Examiner further concludes,
and we agree, are fundamental economic principles including mitigating
risk, i.e., certain methods of organizing human activity (see Ans. 4), which is
a type of abstract idea.
We also determine that because claim 7 broadly recites various
“calculating” steps, claim 7 also recites mathematical concepts, another type
of abstract idea. As drafted, these calculating limitations, under the broadest
reasonable interpretation, and according to the Guidance, recites
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mathematical concepts because calculating “a net data transaction request
parameter . . . a transactional rate parameter . . . [and] a transactional limit
parameter” are illustrated in the Specification as mathematical calculations.
See Spec. ¶¶ 35, 52, 54; Fig. 8. See also October 2019 Update: Subject
Matter Eligibility, 4 (Oct. 17, 2019) (“A claim that recites a numerical
formula or equation will be considered as falling within the ‘mathematical
concepts’ grouping. In addition, there are instances where a formula or
equation is written in text format that should also be considered as falling
within this grouping. For example, the phrase ‘determining a ratio of A to
B’ is merely a textual replacement for the particular equation (ratio =
A/B).”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1165, 1167 (Fed.
Cir. 2018) (A claim reciting “performing a resampled statistical analysis”
was directed to a mathematical concept.).
Accordingly, we conclude claim 7 recites plural abstract ideas.
For example, claim 7 recites at least the following limitations:
(1) “determining . . . a first[/second] limit parameter,” (2) “receiving . . .
request messages . . . [and] the first[/second] limit parameter,” (3) “storing
. . . request message information . . . [and] first[/second] limit parameter,”
(4) “calculating . . . a net data transaction request parameter,”
(5) “calculating . . . a transactional rate parameter,” (6) “monitoring data
transaction request messages,” (7) “adjusting . . . the transactional rate
parameter,” (8) “calculating . . . a transactional limit parameter,”
(9) “determining . . . that the transactional limit parameter is exceeded,” and
(10) “suspending execution of further data transactions.” See claim 7.
These limitations, under their broadest reasonable interpretation,
recite fundamental economic practice akin to hedging and mitigating risk
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because the limitations all recite operations that would ordinarily take place
in a commercial environment. Alice, 573 U.S. at 219–20 (concluding that
use of a third party to mediate settlement risk is a “fundamental economic
practice” and thus an abstract idea); id. (describing the concept of risk
hedging identified as an abstract idea in Bilski as “a method of organizing
human activity”); Bilski, 561 U.S. at 611–612 (concluding that hedging is a
“fundamental economic practice” and therefore an abstract idea); buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (transaction guaranty).
Appellant challenges the Examiner’s determinations on the ground
that the Examiner “fails to make a prima facie case that the claims are
directed to an abstract idea” and “the conclusory assessment . . . runs afoul
of the USPTO memo . . . dated May 4, 2016 . . . [because] [t]he FOA does
not compare any claim language” from the cited cases to claims presented
here. Appeal Br. 9.
We disagree with Appellant. Here, in rejecting the claims under
35 U.S.C. § 101, the Examiner analyzed the claims using the Mayo/Alice
two-step framework. Thus, the Examiner notified Appellant of the reasons
for the rejection “together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of [the]
application.” 35 U.S.C. § 132. Therefore, contrary to Appellant’s
assertions, in doing so, the Examiner set forth a prima facie case of
unpatentability such that the burden shifted to Appellant to demonstrate that
the claims are patent-eligible.
Under the Revised Guidance, the office must first look to whether the
claim recites any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
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activity such as a fundamental economic practice, or mental processes), and
here, the Examiner properly equated the claim language to “certain methods
of organizing human activity (fundamental economic principles or practices;
mitigating risk).” See Ans. 4, 6. Moreover, “[e]ligibility-related guidance
issued prior to the Ninth Edition, R–08.2017, of the MPEP (published Jan.
2018) should not be relied upon.” 2019 Revised Guidance, 84 Fed. Reg. at
51. As such, we find unavailing Appellant’s contention that the Examiner
“fails to make a prima facie case that the claims are directed to an abstract
idea” given the Examiner’s aforementioned determinations.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that claim 7 recites an abstract idea, which we conclude is a
fundamental economic practice, i.e., certain methods of organizing human
activity.
Step 2A—Prong 2 (integration into Practical Application) 2
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Here, we consider the claim as a whole, i.e., “the limitations
containing the judicial exception as well as the additional elements in the
claim besides the judicial exception . . . evaluated together to determine
whether the claim integrates the judicial exception into a practical

2 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

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application.” October 2019 Patent Eligibility Guidance Update, at 12,
available at http://www.uspto.gov/PatentEligibility.
We discern no additional element (or combination of elements)
recited in Appellant’s representative claim 1 that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong 2”). For example, Appellant’s claimed additional elements
(e.g., “backend computer server,” “frontend server,” “user devices,” “non-
transitory storage medium,” “client computers,” “memory,” “processing
system,” and “a processor”) do not: (1) improve the functioning of a
computer or other technology; (2) are not applied with any particular
machine (except for a generic computer); (3) do not effect a transformation
of a particular article to a different state; and (4) are not applied in any
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. See
MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellant contends that “Claim 1 does not simply recite a generic
server or processor” (Appeal Br. 12) and “[t]he specific configuration . . . is
considerably more than a generic processor and a generic memory.” Id. at
13.
However, Appellant’s Specification states:
In other instances, detailed descriptions of well-known methods,
devices, techniques, etc. are omitted so as not to obscure the
description with unnecessary detail. Individual function blocks are
shown in the figures. Those skilled in the art will appreciate that the
functions of those blocks may be implemented using individual
hardware circuits, using software programs and data in conjunction
with a suitably programmed microprocessor or general purpose
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computer, using applications specific integrated circuitry (ASIC),
and/or using one or more digital signal processors (DSPs).
Spec. ¶ 28. In other words, Appellant’s Specification suggests that the
claimed invention can be implemented using well-known methods, devices,
and techniques, and explicitly states that functions are performed using a
general purpose computer.
Furthermore, Appellant fails to direct our attention to anything in the
Specification to indicate that the invention provides an improvement in any
computer technical functionality. Instead, the claimed process appears to
merely improve economic tasks, i.e., manage risks. That is, here the
arguably innovative technique of the appealed claims is inextricably a part of
the abstract idea of “calculating and adjusting parameters based on received
data.” Moreover, nothing in the claims, understood in light of the
Specification, requires anything other than an off-the-shelf, conventional
computer used for processing information/data. Therefore, the claims are
directed not to improvement in computer capabilities, but to the results of
applying an abstract idea.
For at least the reason noted supra, we determine that claim 7
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application. Thus, representative claim 7 is directed to the
aforementioned abstract idea.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, we now look to
whether claim 7 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
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Guidance, an “inventive concept” under Alice step 2 can be evaluated based
on whether an additional element or combination of elements:
(1) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field,
which is indicative that an inventive concept may be present; or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.
See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d).
Appellant contends that “no 102/103 rejections is provided[,] [and]
[t]his is also a clear recognition that claim [7] recites computer functions that
are not well-understood, routine, or conventional.” Appeal Br. 13.
However, a finding of novelty or non-obviousness does not require the
conclusion that the claimed subject matter is patent-eligible. Although the
second step in the Mayo/Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or
nonobviousness, but, rather, is a search for “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 216. “[G]roundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass’n. for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) ( “The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
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subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
Appellant also contends that the claimed memory and processing
system are “not just [] generic” but instead are configured to perform
specific functions “that are not generic or well known” (Appeal Br. 14) and
“[t]he FOA fails to provide evidence that each feature of claim [7] . . . is
well-known and conventional.” Id. at 15. Appellant further notes that “[t]he
problem with the Examiner’s citation to Versata, Alice, and several other
[court] cases is that the few words attributed to each case of a computer’s
‘normal, basic functions’ fail to address the complete recitation of computer
operations recited in claim [7].” Id. (citing USPTO, Memorandum on
Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (Apr.
19, 2018)).
In essence, Appellant contends that although the Examiner does cite
to various court decisions for illustrating normal basic functions of
computers, the Examiner has not addressed all the operations recited in the
claims.
However, “the relevant inquiry is not whether the claimed invention
as a whole is unconventional or non-routine.” BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Instead, the
question under step two of the Mayo/Alice framework is whether the claim
includes additional elements, i.e., elements other than the abstract idea itself,
that “‘transform the nature of the claim’ into a patent-eligible application.”
Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78).
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Alice is clear that under step two of the Mayo/Alice framework, the
elements of each claim are considered both individually and “as an ordered
combination” to determine whether the additional elements, i.e., the
elements other than the abstract idea itself, “transform the nature of the
claim” into a patent-eligible application. Alice, 573 U.S. at 217; see also
Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses upon the use
of a natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself”).
In other words, the inventive concept under step two of the
Mayo/Alice framework cannot be the abstract idea itself: “It is clear from
Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and
Berkheimer . . . leave[s] untouched the numerous cases from this court
which have held claims ineligible because the only alleged ‘inventive
concept’ is the abstract idea.” Berkheimer v. HP Inc., 890 F.3d 1369, 1374
(Fed. Cir. 2018) (Moore J., concurring) (discussing Berkheimer v. HP Inc.,
881 F.3d 1360, 1370 (Fed. Cir. 2018)); see also BSG Tech, 899 F.3d at 1290
(“It has been clear since Alice that a claimed invention's use of the ineligible
concept to which it is directed cannot supply the inventive concept that
renders the invention ‘significantly more’ than that ineligible concept.”)
(citation omitted).
Here, as discussed above, the elements other than the abstract idea,
i.e., “backend computer server,” “frontend server,” “user devices,” “non-
transitory storage medium,” “client computers,” “memory,” “processing
system,” and “a processor,” which are recited at a high level of generality,
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are used in their ordinary and conventional capacities to receive,
communicate, and analyze data, and perform an action based on the
analyses. See Spec. ¶ 28. See also Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1355 (Fed. Cir. 2016) (gathering, sending, monitoring,
analyzing, selecting, and presenting information does not transform the
abstract process into a patent-eligible invention); FairWarning, 839 F.3d at
1095 (generating a rule related to accessing information, applying the rule,
and storing and announcing the result did not transform the abstract idea into
a patent-eligible invention); Alice, 573 U.S. at 226 (“Nearly every computer
will include a ‘communications controller’ and ‘data storage unit’ capable of
performing the basic calculation, storage, and transmission functions
required by the method claims.”). Still further, the MPEP instructs
Examiners that courts recognize that using a computer for performing
repetitive calculations may be well-understood, routine, and conventional
when claimed generically. MPEP § 2106.05(d)(II)(ii) (citing Parker v.
Flook, 437 U.S. 584, 594 (1978); Bancorp, 687 F.3d at 1278).
As such, we find no element or combination of elements recited in
Appellant’s claim 7 that contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application.
Because Appellant’s independent claim 7 is directed to a patent-
ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional,” we sustain the Examiner’s rejection
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of the claims under 35 U.S.C. § 101 as being directed to non-statutory
subject matter in light of Alice, its’ progeny, and the Revised Guidance.

CONCLUSION
The Examiner’s rejection of claims 1, 3–7, and 9–12 under 35 U.S.C.
§ 101 is affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–7, 9–12 101 Eligibility 1, 3–7, 9–12
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED