Otto, Matthew et al.

Patent Trials and Appeals Board

Jun 29, 2020

13022420 - (D) (P.T.A.B. Jun. 29, 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.
13/022,420 02/07/2011 Matthew Otto 107945.000048 6649
145584 7590 06/29/2020
Prince Lobel Tye LLP
One International Place
Suite 3700
Boston, MA 02110
EXAMINER
ALLADIN, AMBREEN A
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
06/29/2020 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):
docketing@princelobel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW OTTO and JOSEPH WEITEKAMP
____________

Appeal 2018-007121
Application 13/022,420
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 6 and 21–26. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed March 6, 2018) and Reply Brief (“Reply Br.,” filed July 3, 2018), and
the Examiner’s Answer (“Ans.,” mailed May 4, 2018), and Final Office
Action (“Final Act.,” mailed May 4, 2017). Appellant identifies ITG
SOFTWARE SOLUTIONS, INC. as the real party in interest (Appeal Br. 2).
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CLAIMED INVENTION
The claimed invention “generally relates to systems and methods for
providing electronic access to financial trading services” and, more
particularly, to systems and methods for providing access to financial trading
services via electronic networks “through the use of multiple service buses
that can be individually configured to optimize access to financial trading
services of diverse technical implementations without the need for bridging”
(Spec. ¶ 1).
Claim 6, reproduced below with bracketed notations added, is the sole
independent claim, and representative of the subject matter on appeal:
6. A computer-implemented method for providing
access to financial trading services, comprising:
[(a)] identifying financial trading services that will be
accessible to an end user, wherein the end user is associated with
an interface component;
[(b)] determining performance requirements for each
financial trading service, wherein the performance requirements
relate to at least one of latency and reliability for each financial
trading service;
[(c)] creating, by a computer, at least a first service bus
and a second service bus, wherein the first service bus and the
second service bus are both associated with the interface
component, wherein the first and second service buses have
performance characteristics related to at least one of latency and
reliability, and wherein a performance characteristic of the first
service bus differs from a performance characteristic of the
second service bus;
[(d)] determining a first group of financial trading
services that will be accessible via the first service bus and a
second group of financial trading services will be accessible via
the second service bus; and
[(e)] attaching, by the computer, the first group of
financial trading services to the first service bus and the second
group of financial trading services to the second service bus;
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[(f)] wherein the step of determining which financial
trading services will be accessible via the first service bus and
which financial trading services will be accessible via the second
service bus further includes:
assigning the financial trading services to the first
and second service buses based at least in part on the
performance requirements of each financial trading
service and the performance characteristics of the first and
second service buses.
REJECTION
Claims 6 and 21–26 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 6–13).
We select independent claim 6 as representative. The remaining claims
stand or fall with claim 6. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
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directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that independent claim 6 is directed to “providing access to
financial services,” i.e., to an abstract idea similar to other concepts that the
courts have held abstract (Final Act. 2–5), and that the claim does not
include additional elements sufficient to amount to significantly more than
the abstract idea itself (id. at 5–7). The Examiner determined that dependent
claims 21–26 are patent ineligible for substantially the same reasons (id.
at 7–9).
After Appellant’s briefs were filed and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
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idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2,3
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
3 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to public comments.
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additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that 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 (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded here by Appellant’s argument that the Examiner
erred in determining that claim 6 is directed to an abstract idea (Appeal
Br. 10–12). Claim 6, reproduced above, recites a method for providing
access to financial trading services, comprising: (1) identifying financial
trading services accessible to an end user and determining performance
requirements for each financial trading service, i.e.,
identifying financial trading services that will be
accessible to an end user, wherein the end user is associated with
an interface component; [and]
determining performance requirements for each financial
trading service, wherein the performance requirements relate to
at least one of latency and reliability for each financial trading
service
(limitations (a) and (b)); (2) creating at least a first service bus and a second
service bus, having different performance characteristics related to latency
and/or reliability, i.e.,
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creating, by a computer, at least a first service bus and a
second service bus, wherein the first service bus and the second
service bus are both associated with the interface component,
wherein the first and second service buses have performance
characteristics related to at least one of latency and reliability,
and wherein a performance characteristic of the first service bus
differs from a performance characteristic of the second service
bus
(limitation (c)); (3) determining a first group of financial trading services
that will be accessible via the first service bus and a second group of
financial trading services accessible via the second service bus, and
assigning the financial services to the first and second service buses based
on the performance requirements of the trading service and the performance
characteristics of the service bus, i.e.,
determining a first group of financial trading services that
will be accessible via the first service bus and a second group of
financial trading services will be accessible via the second
service bus;
wherein the step of determining which financial trading
services will be accessible via the first service bus and which
financial trading services will be accessible via the second
service bus further includes:
assigning the financial trading services to the first
and second service buses based at least in part on the
performance requirements of each financial trading
service and the performance characteristics of the first and
second service buses
(limitations (d) and (f)); and (4) “attaching, by the computer, the first group
of financial trading services to the first service bus and the second group of
financial trading services to the second service bus” (limitation (e)).
We agree with the Examiner that these limitations, when given their
broadest reasonable interpretation, recite providing access to financial
services, i.e., a fundamental economic practice, which is a method of
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organizing human activity and, therefore, an abstract idea. See
2019 Revised Guidance, 84 Fed. Reg. at 52.
Having concluded that claim 6 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
The only additional elements recited in claim 6, beyond the abstract
idea, are “a computer”; “a first service bus”; “a second service bus”; and “an
interface component” — elements that, as the Examiner observes, “are
recited at a high level of generality and recited as performing generic
computer functions routinely used” (Final Act. 5). We find no indication in
the Specification, nor does Appellant direct us to any indication, that the
operations recited in claim 6 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
allegedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
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invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.4
Appellant argues that claim 6 is “technological in nature,” not abstract
(Appeal Br. 10–12). And, citing paragraphs 6, 7, 10, and 12 of the
Specification, Appellant asserts that the Specification “makes clear that the
invention is an improvement in technology” (id. at 10), i.e., that “the claims
result in a system that improves over the conventional SOA architecture by,
inter alia, increasing reliability and latency” (id. at 11).
The difficulty with Appellant’s argument, as the Examiner observes
and we agree, is that claim 6 does not “reflect the potential technological
improvements over the prior art that are discussed” in Appellant’s
Specification, i.e., providing access to financial trading services through the
use of multiple service buses without the need for bridging (Ans. 13).
The Specification is titled “SYSTEMS AND METHODS FOR
PROVIDING ACCESS TO FINANCIAL TRADING SERVICES,” and
describes, in the Background section, that speed and reliability are of
paramount importance in the financial trading services industry where a
failure on the part of a provider to deliver trading services to its customers at
acceptable levels of speed and/or reliability can result in significant financial
losses (Spec. ¶ 2). The Specification describes that the financial industry has

4 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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improved the speed and reliability of its networks through the use of
proprietary messaging techniques and services, and that SOA is a way to
organize distributed computing resources across enterprise systems (id. ¶ 3).
The Specification describes in paragraph 6, on which Appellant relies, that
SOA implementations typically employ a single common service bus,
through which all available services are accessed; however, there are
situations where at least one service is not accessible via the implemented
service bus technology (id. ¶ 6). To accommodate these situations, an SOA
may be implemented using multiple service buses (id. ¶ 7). But, according
to the Specification, this multi-bus approach introduces additional latency
into the system, and in sensitive applications (e.g., security trading systems),
this additional latency can disrupt the system and lead to unacceptable
outcomes, e.g., the additional latency could lead to situations where the
information being acted on by trading clients is inaccurate (id. ¶ 10).
The Specification, describes that this deficiency in existing SOA
systems is overcome “through the use of multiple service buses that can be
individually configured to optimize access to financial trading services of
diverse technical implementations without bridging” (id. ¶ 12). As such, it
is clear from a fair reading of the Specification that the alleged improvement
to SOA systems is achieved by providing a multi-bus system in which end
users have access to service buses and available financial trading services,
via interface components that communicate directly with the multiple
service buses, i.e., there is no need for the service buses to be connected via
a bridge (see, e.g., Spec. ¶ 22)
Appellant argues here that “[t]he claims include numerous
limitation[s] that provide for the technological improvements over the prior
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art,” (e.g., “service buses are created to be associated with the interface
component, [and] . . . have performance characteristics related to at least one
of latency and reliability, and the performance characteristic of the first
service bus and the second service bus are different” and “[s]ervices are
attached to the first and second service buses based on the performance
requirements of each service and the performance characteristics of the first
and second service buses”) and that the claims, thus, “result in a system that
improves over the conventional SOA architecture” (Appeal Br. 11).
Appellant, thus, maintains that “the claims . . . include limitations that are
tied to the improvement and the words ‘without bridging’ are unnecessary”
(Reply Br. 2).
Appellant notes that “it was common practice to allow a service
consumer to access the multiple service buses via only one of the service
buses by, for example, utilizing a bridge from that bus to other buses” — an
arrangement that creates latency (id. at 3). And Appellant argues that “[t]he
claimed invention solves the problem by providing direct access to multiple
buses without the need to go through a single bus to a second bus, e.g.,
through a bridge” (id.).
Appellant posits that claim 6 “achieves this through the association of
each bus with the interface component. Services then are attached to the
buses based on the service’s characteristics” (id.). And Appellant asserts,
“[a]s a result, services can be directly accessed from the proper bus” (id.
(citing Spec., Fig. 2)).
Although claim 6 recites that “the first service bus and the second
service bus are both associated with the interface component” and further
recites “attaching . . . the first group of financial trading services to the first
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service bus and the second group of financial trading services to the second
service bus,” we agree with the Examiner that there is nothing in claim 6,
when given its broadest reasonable interpretation, to require that the
interface component communicate directly with the service buses — the
feature that Appellant acknowledges provides the purported technological
improvement (see Ans. 13 (“The current claim language, under a broadest
reasonable interpretation, does not require the absence of a bridge, which is
the feature that corresponds to the argued for improvement.”)).5
We conclude, for the reasons outlined above, that claim 6 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than generic
components used as tools to perform the recited abstract idea. As such, they
do not integrate the abstract idea into a practical application. See Alice
Corp., 573 U.S. at 223–24 (“[W]holly generic computer implementation is
not generally the sort of ‘additional featur[e]’ that provides any ‘practical
assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, we agree with the Examiner that claim 6 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 6 is directed to an abstract idea, we next consider under Step 2B of the

5 During prosecution the USPTO gives claims their “broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). Limitations appearing in the specification but not
recited in the claim are, however, not read into the claim. E-Pass Techs.,
Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
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2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 6 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Appellant argues that claim 6 includes “substantially more and,
therefore, passes the second part of the Alice test” because the claim
“includes numerous limitations that provide for the technological
improvements over the prior art” (Appeal Br. 12). But, that argument is not
persuasive for the reasons set forth above.
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are “a computer”; “a first service bus”; “a
second service bus”; and “an interface component,” i.e., generic computer
components used to perform generic computer functions. Appellant cannot
reasonably maintain, nor does Appellant, that there is insufficient factual
support for the Examiner’s determination that the operation of these
components is well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 6 require any specialized hardware or inventive computer components
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions, e.g.,
determining, analyzing, and outputting information. Indeed, the Federal
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Circuit, in accordance with Alice, has “repeatedly recognized the absence of
a genuine dispute as to eligibility” where claims have been defended as
involving an inventive concept based “merely on the idea of using existing
computers or the Internet to carry out conventional processes, with no
alteration of computer functionality.” Berkheimer v. HP Inc., 890 F.3d
1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (Moore, J., concurring)
(citations omitted); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d
1281, 1291 (Fed. Cir. 2018) (“BSG Tech does not argue that other, non-
abstract features of the claimed inventions, alone or in combination, are not
well-understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 6 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 6, and claims 21–26, which fall
with claim 6.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
6, 21–26 101 Eligibility 6, 21–26
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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