Philip M. Ginsberg et al.

Patent Trials and Appeals Board

Jan 2, 2020

12883683 - (D) (P.T.A.B. Jan. 2, 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.
12/883,683 09/16/2010 Philip M. Ginsberg 00-1019-C4 5326
63710 7590 01/02/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
01/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP M. GINSBERG, ANDREW C. GILBERT, and
HOWARD W. LUTNICK
Appeal 2018-004618
Application 12/883,683
Technology Center 3600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Philip M. Ginsberg et al.,
appeals from the Examiner’s decision rejecting claims 1–4, 6–10, 12, 14
and 15, which are all claims pending in the application. Appellant has
canceled claims 5, 11, and 13. See generally, Appeal Br. 22 et seq. (“Claims
Appendix”). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as BGC
PARTNERS, INC. Appeal Br. 3.
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CLAIMED SUBJECT MATTER2
The claims are directed to a systems and methods for anonymous
electronic trading. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention “relate[] to systems and methods for
electronic trading that enable traders to remain anonymous with each other
while still allowing those traders to monitor counterparty risk.” Spec. 1,
ll. 17–19.
Claims 1 and 8, reproduced below, are representative of the subject
matter on appeal (emphases added to contested prior-art limitations):
1. An electronic trading system comprising:
a first apparatus;
a second apparatus;
wherein the first apparatus is configured to:
receive a first indication of an order associated
with a counterparty through a communication network, in
which the order includes at least one of an order to buy a
financial instrument and an order to sell a financial
instrument, in which the order is defined by a plurality of
order characteristics;
in response to receiving the first indication of the
order, transmit, through the communication network, a
second indication of the order to the second apparatus;
and

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Dec. 14, 2017); Reply Brief (“Reply Br.,” filed Mar. 27, 2018); Examiner’s
Answer (“Ans.,” mailed Feb. 1, 2018); Final Office Action (“Final Act.,”
mailed July 17, 2017); and the original Specification (“Spec.,” filed
Sept. 16, 2018) (ultimately claiming benefit of US 60/223,028 filed
Aug. 4, 2000). We note Appellant does not make any substantive arguments
in the Reply Brief.
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in response to the first apparatus detecting an
indication from the second apparatus over the
communication network that a trade should be executed
between the first apparatus and the second apparatus,
facilitate execution of the trade automatically, wherein
the second apparatus is configured to:
receive a counterparty setting associated with the
counterparty;
switch the counterparty setting on to indicate that
trades with the counterparty are permitted or off to
indicate that trades with the counterparty are not
permitted;
receive an indication of at least one order
characteristic;
receive, through the communication network from
the electronic trading system, the second indication of the
order;
in response to receiving the second indication of
the order, determine whether the order satisfies a total
dollar amount threshold;
in response to determining that the order satisfies
the total dollar amount threshold, render a graphical user
interface with the order on a display device;
in response to determining that the order does not
satisfy the total dollar amount threshold, withhold
rendering the order on the display device; and
in response to determining that the at least one
characteristic satisfies the total dollar amount threshold
and the counterparty setting is switched on, transmit,
through the communication network to the electronic
trading system, the indication that the trade should be
executed automatically.
8. An apparatus comprising:
a display device;
at least one processor to:
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receive a counterparty setting associated with a
counterparty;
switch the counterparty setting on to indicate that
trades with the counterparty are permitted or off to
indicate that trades with the counterparty are not
permitted;
receive an indication of at least one order
characteristic;
receive, through a communication network from
an electronic trading system, an indication of an order
associated with the counterparty, in which the order
includes at least one of an order to buy a financial
instrument and an order to sell a financial instrument, in
which the order is defined by a plurality of order
characteristics;
in response to receiving the indication of the order,
determine whether the order satisfies a total dollar
amount threshold;
in response to determining that the order satisfies
the total dollar amount threshold, render a graphical user
interface with the order on the display device; and
in response to determining that the order does not
satisfy the total dollar amount threshold, withhold
rendering the order on the display device; and
in response to determining that the order satisfies
the total dollar amount threshold and the counterparty
setting is switched on, transmit, through the
communication network to the electronic trading system,
an indication that the trade should be executed
automatically.
REFERENCES
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Silverman et al. (“Silverman”) US 5,136,501 Aug. 4, 1992
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5
Togher et al. (“Togher”) US 6,014,627 Jan. 11, 2000
Murcko, Jr. (“Murcko”) US 6,578,014 B1 June 10, 2003
Foley et al. (“Foley”) US 7,475,046 B1 Jan. 6, 2009
REJECTIONS
R1. Claims 1–4, 6–10, 12, 14, and 15 stand rejected under 35
U.S.C. § 101 as being directed to a judicial exception (abstract idea) without
significantly more. Final Act. 2.
R2. Claims 8–10, 12, 14, and 15 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over the combination of Foley,
Murcko, and Silverman. Final Act. 4.
R3. Claims 1–4, 6, and 7 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Foley, Murcko,
Silverman, and Togher. Final Act. 8.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 9–20) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible
subject matter Rejection R1 of claims 1–4, 6–10, 12, 14, and 15 on the basis
of representative claim 1; we decide the appeal of obviousness Rejection R2
of claims 8–10, 12, 14, and 15 on the basis of representative claim 8; and we
decide the appeal of obviousness Rejection R3 of claims 1–4, 6, and 7 on the
basis of representative claim 1.3

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1–4,
6–10, 12, 14 and 15 and, unless otherwise noted, we incorporate by
reference herein and adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner’s Answer in response to
Appellant’s arguments. We highlight and address specific findings and
arguments regarding claims 1 and 8 for emphases as follows.
1. § 101 Rejection R1 of Claims 1–4, 6–10, 12, 14, 15
Issue 1
Appellant argues (Appeal Br. 9–12) the Examiner’s rejection of claim
1 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter
is in error. These contentions present us with the following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?

dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);

4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
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the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an “‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
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of organizing human activity such as a fundamental economic
practice, or mental processes);5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).6
See Revised Guidance 52–53.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then 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.7
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;

5 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
6 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there

8 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,9
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.

9 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.10 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).11 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).12
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,

10 See, e.g., Diehr, 450 U.S. at 187.
11 See, e.g., Amdocs, Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300,
1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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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,
Section III.B.13
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .

13 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
Analysis
Step 1 – Statutory Category
Claim 1, as a system (device) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 “describes sending and
receiving orders (for financial instrument) using a device via a network, and
counterparty rules for displaying and/or executing such orders. This concept
is a type of ‘organizing human activity’ similar to those found by the courts
to be abstract.” Final Act. 2.
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We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses
“[t]he present invention relates to systems and methods for anonymous
electronic trading. More particularly, the present invention relates to
systems and methods for electronic trading that enable traders to remain
anonymous with each other while still allowing those traders to monitor
counterparty risk.” Spec. 1, ll. 15–19.
Appellant’s Abstract describes the invention as:
Systems and methods for anonymous electronic trading
that allow a trader to hide his or her identity and inhibit trading
interactions are provided. Using these systems and methods, a
trader can, using various trading interfaces, control a level of
trading anonymously and configure warnings that are provided
to protect against inadvertent completion of potential-risk-
involved trades.
Spec. 19 (Abstract).
In TABLE 1 below, we identify in italics the specific claim
limitations in claim 1 that we conclude recite an abstract idea. We
additionally identify in bold the additional (non-abstract) claim limitations
that are generic computer components and techniques, and underline
limitations representing extra or post-solution activity:
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TABLE 1
Independent Claim 1 Revised Guidance
An electronic trading system
comprising:
A system (device) is a statutory subject
matter class. See 35 U.S.C. § 101.
[L1] a first apparatus;
[L2] a second apparatus;[14]
wherein the first apparatus is
configured to:
[L3] receive a first indication
of an order associated with a
counterparty through a
communication network,
in which the order includes at
least one of an order to buy a
financial instrument and an
order to sell a financial
instrument, in which the
order is defined by a plurality
of order characteristics;

Receiving information, i.e., data
gathering, is merely insignificant extra-
solution activity that does not add
significantly more to the abstract idea to
render the claimed invention patent-
eligible. Revised Guidance 55, n.31.
in response to receiving the
first indication of the order,
[L4] transmit, through the
communication network, a
second indication of the order
to the second apparatus; and

Transmitting information, e.g., for
display, is insignificant extra-solution
activity. Revised Guidance 55, n.31; and
see buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014)
(computer receives and sends
information over a network).
in response to the first
apparatus detecting an
indication from the second

14 We determine the claimed first and second “apparatus” comprises generic
computer components and techniques based upon Appellant’s disclosure.
See Appeal Br. 5 (“Summary of Claimed Subject Matter”) (citing Spec. 5,
ll. 10–25; 6, ll. 1–15; and Fig. 1).
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Independent Claim 1 Revised Guidance
apparatus over the
communication network that
a trade should be executed
between the first apparatus
and the second apparatus,
[L5] facilitate execution of
the trade automatically,

“Facilitating execution of [a] trade” is an
abstract idea, i.e., a certain method of
organizing human activity in the form of
a commercial interaction that includes
sales activities and business relations. See
Revised Guidance 52.
wherein the second apparatus
is configured to:
[L6] receive a counterparty
setting associated with the
counterparty;

Receiving information, i.e., data
gathering, is merely insignificant extra-
solution activity that does not add
significantly more to the abstract idea to
render the claimed invention patent-
eligible. Revised Guidance 55, n.31.
[L7] switch the counterparty
setting on to indicate that
trades with the counterparty
are permitted or off to
indicate that trades with the
counterparty are not
permitted;
Selecting whether to permit or not permit
trades with a counterparty is an abstract
idea, i.e., a certain method of organizing
human activity in the form of a
commercial interaction that includes
sales activities and business relations. See
Revised Guidance 52. Alternatively, this
function could be viewed as a mental
process, i.e., an “observation, evaluation,
judgment, opinion” which could be
performed as a mental process. See
Revised Guidance 52.
[L8] receive an indication of
at least one order
characteristic;
Receiving information such as an
indication, i.e., data gathering, is merely
insignificant extra-solution activity that
does not add significantly more to the
abstract idea to render the claimed
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Independent Claim 1 Revised Guidance
invention patent-eligible. Revised
Guidance 55, n.31.
[L9] receive, through the
communication network from
the electronic trading system,
the second indication of the
order;
Receiving information, such as an
indication of the order, i.e., data
gathering, is merely insignificant extra-
solution activity that does not add
significantly more to the abstract idea to
render the claimed invention patent-
eligible. Revised Guidance 55, n.31.
Communicating or transmitting
information is insignificant post-solution
activity. Revised Guidance 55, n.31; see
also MPEP § 2106.05(g); and see
buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (computer
receives and sends information over a
network).
in response to receiving the
second indication of the
order,
[L10] determine whether the
order satisfies a total dollar
amount threshold;

Determining is an abstract idea, i.e., an
“observation, evaluation, judgment,
opinion” which could be performed as a
mental process. See Revised Guidance
52.
in response to determining
that the order satisfies the
total dollar amount threshold,
[L11] render a graphical
user interface with the order
on a display device;

Transmitting or rendering information
such as a GUI for display is insignificant
extra-solution activity. Revised Guidance
55, n.31.
As claimed, a graphical user interface
(GUI) is a generic computer component.
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Independent Claim 1 Revised Guidance
[L12] in response to
determining that the order
does not satisfy the total
dollar amount threshold,
withhold rendering the order
on the display device; and
Withholding rendering a display based
on a determination that a condition has or
has not been met is an abstract idea, i.e.,
an “observation, evaluation, judgment,
opinion” which could be performed as a
mental process. See Revised Guidance
52.
in response to determining
that the at least one
characteristic satisfies the
total dollar amount threshold
and the counterparty setting
is switched on,
[L13] transmit, through the
communication network to
the electronic trading
system, the indication that
the trade should be executed
automatically.

Communicating or transmitting
information is insignificant post-solution
activity. Revised Guidance 55, n.31; see
also MPEP § 2106.05(g); and see
buySAFE, 765 F.3d at 1355 (computer
receives and sends information over a
network).
Claims App.
Under the broadest reasonable interpretation standard,15 we conclude
limitations L1 through L13 recite functionality that would ordinarily occur
when carrying out certain methods of organizing human activity, including

15 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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commercial agreements in the form of sales activities or business relations
such as order processing involving a counterparty. See Final Act. 2–3. For
example, providing an option or indication that trades with a counterparty
are permitted, or an indication that trades with the counterparty are not
permitted is an operation that generally occurs whenever counterparty
trading is contemplated. Further, determining whether the order satisfies a
total dollar amount threshold or not, and predicating the approval or
withholding of the order execution is commonly done when executing
trades, whether initiated person-to-person, on paper, or using a computer.
We determine that claim 1, overall, while reciting mental steps, also
recites a certain method of organizing human activity. This type of activity,
i.e., facilitating execution of a trade, is an abstract idea, i.e., a certain method
of organizing human activity in the form of a commercial interaction that
includes sales activities and business relations. We conclude each of
limitations L1 through L13, for example, and aside from any computer-
related aspects, includes longstanding conduct that existed well before the
advent of computers and the Internet, and could be carried out by a human
with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”).16

16 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
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Therefore, under Step 2A(i), we agree with the Examiner that
claim 1’s electronic trading system recites an abstract idea, e.g., the
combination of abstract steps recited in each of limitations L5, L7, L10,
and L12. We conclude claim 1, under our Revised Guidance, recites a
judicial exception of facilitating execution of a trade, i.e., a certain method
of organizing human activity in the form of a commercial interaction that
includes sales activities and business relations, and thus is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a judicial exception, as we conclude above, we
proceed to the “practical application” Step 2A(ii) in which we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
As to the specific limitations, we find limitations L3, L6, L8, and L9
recite insignificant data gathering. See MPEP § 2106.05(g). Data gathering,
as performed by the steps or function in Appellant’s claims, is a classic
example of insignificant extra-solution activity. See, e.g., In re Bilski, 545
F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski v. Kappos,
561 U.S. 593 (2010).

Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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We also find limitations L4, L11, and L13 recite insignificant post
solution activity. The Supreme Court guides that the “prohibition against
patenting abstract ideas ‘cannot be circumvented’ [by] adding ‘insignificant
postsolution activity.’” Bilski, 561 U.S. at 610–11 (quoting Diehr, 450 U.S.
at 191–92). On this record, we are of the view that Appellant’s claims do
not operate the recited generic computer components (see limitations L1, L2,
and L3) in an unconventional manner to achieve an improvement in
computer functionality. See MPEP § 2106.05(a).
In addition to the steps L3 through L13, i.e., abstract steps identified
in Step 2A(i), supra, and the data gathering and extra/post-solution activity
also identified above, claim 1 further recites L1 “a first apparatus,” L2 “a
second apparatus,” a portion of L3 recites “a communication network,” and
limitation L11 recites “a graphical user interface” and “a display device.”
We find these limitations merely recite generic computer components
(see Step 2B, infra), and none of these limitations integrate the judicial
exception of facilitating execution of a trade into a practical application as
determined under one or more of the MPEP sections cited above. The claim
as a whole merely uses instructions to implement the abstract idea on a
computer or, alternatively, merely uses a computer as a tool to perform the
abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
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also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Thus, on this record, Appellant has not
shown an improvement or practical application under the guidance of MPEP
section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e)(“Other
Meaningful Limitations”).
Accordingly, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
an ‘inventive concept’ in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs, 838 F.3d at 1258.
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
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715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea17; mere instructions to implement an
abstract idea on a computer18; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.19
Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
facilitating execution of a trade into a patent-eligible application of that
abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and

17 Alice, 573 U.S. at 221–23.
18 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
19 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
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conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited “first apparatus,”
“second apparatus,” “communication network” in system claim 1; “display
device,” “at least one processor,” “communication network,” and “electronic
trading system” in apparatus claim 8; and “memory,” “at least one
processor,” and “communication network” in system claim 14, the
Specification discloses:
Turning first to FIG. 1, an example of hardware 100 that
may be used to implement one embodiment of the present
invention is shown. As illustrated, hardware 100 may include
one or more local workstations 102 and one or more remote
workstations 104 that may be used by traders to view trading
data and enter trading commands. Workstations 102 and 104
may be any suitable means for presenting data and, in preferred
embodiments of this invention, accepting input. For example,
workstations 102 and 104 may be personal computers, laptop
computers, mainframe computers, dumb terminals, data
displays, Internet browsers, Personal Digital Assistants (PDAs),
two-way pagers, wireless terminals, portable telephones, etc., or
any combination of the same.
To orchestrate trading between traders using
workstations 102 and 104, the workstations preferably submit
commands to, and receive data to be displayed from, a
processor 106. In alternative embodiments, however,
workstations may communicate with additional processors, or
include processors to orchestrate trading in a distributed fashion
without requiring processor 106. In yet other embodiments,
processor 106 may be connected to an external trading system
(not shown) that controls trading by the traders. Processor 106,
and any additional processors, may be any suitable circuitry or
devices capable of processing data such as microprocessors,
personal computers, network servers, mainframe computers,
dedicated computer systems, etc.
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Spec. 5, ll. 10–31.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellants’
Specification, as quoted above.20
With respect to this step of the analysis, Appellant argues, “[t]he
claimed features do recite improvement to GUI structures, such as the
‘counterparty switch’ and the rendering of orders. For example, claim 8
recites ‘switch the counterparty setting on to indicate that trades with the
counterparty are permitted or off to indicate that trades with the counterparty
are not permitted.’” Appeal Br. 11. “[C]laim 8, and similarly claim 1,
recites a counterparty switch and different actions that can be executed based
on the counterparty switch setting and the total dollar amount threshold. As
such, the claims are not simply setting, selecting, and displaying data as
alleged by the Examiner. The Examiner oversimplifies the claims by
looking at them generally and failing to account for the specific claimed
requirements.” Appeal Br. 12.
In response, the Examiner concludes, “[t]he claimed invention is not
on an improvement in computers as tools by improving the functioning of
the computer, but on certain independently abstract ideas that use computers
as tools.” Ans. 4. “Nothing in the claims, understood in light of the

20 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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specification, requires anything other than off-the-shelf, conventional
computer, network, and display technology. The Courts have repeatedly
held that such invocations of computers and networks that are not even
arguably inventive are ‘insufficient to pass the test of an inventive concept in
the application’ of an abstract idea.” Id. We agree with the Examiner’s
factual findings and legal conclusions.
We agree with the Examiner, and are not persuaded by Appellant’s
reliance upon Trading Technologies in arguing the claims are directed to
patent-eligible subject matter because of the recitation of a graphical user
interface. Appeal Br. 9 (citing Trading Technologies International, Inc. v.
CQG, INC., 675 Fed.Appx. 1001 (Fed. Cir. 2017) (unpublished decision)).
We are not persuaded because, as the Examiner pointed out in the Final
Action:
Examiner respectfully disagrees. In TTI, the Court
recognized that the focus of the invention was directed to the
“structure” of the GUI that addressed a specific problem in the
state of the art. In the TTI decision, the Court agreed the patents
are directed to improvements in existing graphical user
interface devices that have no “pre-electronic trading analog,”
and recite more than “‘setting, displaying, and selecting’ data or
information that is visible on the [graphical user interface]
device.”
The Court further explained that the claim require
specific, structured GUI paired with a prescribed functionality
directly related to the GUI’s structure that addresses to and
resolves a specifically identified problem in the prior state of
the art.
The instant invention has nothing to do with the
“structure” of a GUI. Rather, the apparatuses are configured to
“receiving data” from counterparties similar to “‘setting,
displaying, and selecting’ data or information that is visible on
the [graphical user interface] device.”
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Therefore, TTI decision does not apply to the claimed
invention.
Final Act. 9–10.
We agree with the Examiner’s analysis. Moreover, in the event of
further prosecution, we invite the Examiner’s attention as to whether there is
adequate written description support under 35 U.S.C. § 112, first paragraph
for the recitation of “render a graphical user interface with the order on a
display device,” as recited in claim 1.21
The MPEP, based upon our precedential guidance, provides additional
considerations with respect to analysis of the well-understood, routine, and
conventional nature of the recited computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. 208,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply

21 Appellant cites the Specification at p. 10, ll. 14–32; p. 11, ll. 15–32; p. 12,
ll. 1–17, and Figures 4–5 of the disclosure for support for the claimed GUI.
Appeal Br. 5 (“Summary of Claimed Subject Matter”). We have reviewed
the cited sections of the Specification, and do not find any disclosure of
rendering a “graphical user interface,” as claimed. Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) 1213.02.
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the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a system including generic components, including rendering a
graphical user interface as recited in claim 1, as argued by Appellants, and
similarly for claims 8 and 14, is simply not enough to transform the patent-
ineligible abstract idea here into a patent-eligible invention under Step 2B.
See Alice, 573 U.S. at 221 (“[C]laims, which merely require generic
computer implementation, fail to transform [an] abstract idea into a patent-
eligible invention.”).
We conclude the claims fail the Step 2B analysis because claim 1, in
essence, merely recites various computer-based elements along with no
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more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s independent claims 1, 8, and 14,
considered as a whole, is directed to a patent-ineligible abstract idea that is
not integrated into a practical application and does not include an inventive
concept. Accordingly, we sustain the Examiner’s § 101 rejection of
independent claim 1, and grouped claims 2–4, 6–10, 12, 14, and 15 which
fall therewith. See Claim Grouping, supra.
2. § 103(a) Rejection R2 of Claims 8–10, 12, 14, and 15
Issue 2
Appellant argues (Appeal Br. 13–16) the Examiner’s rejection of
claim 8 under 35 U.S.C. § 103(a) as being obvious over the combination of
Foley, Murcko, and Silverman is in error. These contentions present us with
the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests an apparatus that includes “at least one processor to,” inter alia,
(1) “switch the counterparty setting on to indicate that trades with the
counterparty are permitted or off to indicate that trades with the counterparty
are not permitted;” and (2) “in response to receiving the indication of the
order, determine whether the order satisfies a total dollar amount threshold,”
as recited in claim 8?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
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references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
Analysis
Limitation (1) – Switch Counterparty Setting
The “Examiner interprets the setting of the switch to either on or off
as simply a selection via a ‘check box’ by a trader to select a counterparty to
trade with.” Final Act. 5 (citing Foley col. 2, ll. 12–37). Foley discloses
“[t]he first party offering to buy shares from or sell shares to one or more
selected counterparties selects the one or more counterparties from the users
identified by the system as engaging in recent trade or order activity in
particular stocks.” Foley col. 2, ll. 30–33.
Appellant contends:
Foley teaches that a user can use an input device to select
anonymous partners from a list. However, Appellants submit
that selecting anonymous partners from a list is not one in
the same as the on or off counterparty switch recited in
claim 8. There is a high degree of separation between selecting
anonymous partners from a list and setting a counterparty
switch on or off. The Examiner is using impermissible
hindsight reasoning to bridge the gap between the claimed
switch and Foley’s list.
Appeal Br. 14.
We are not persuaded by Appellant’s argument because the portion of
Foley cited by Appellant and the Examiner does not teach or suggest that the
counterparties are “anonymous,” just that they are “selected.” We find a
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“selected counterparty” using Foley’s list is not required to be anonymous.
More importantly, the rejection is for obviousness for which the test is what
the reference combination would have suggested to a person of ordinary skill
in the art. See Keller, 642 F.2d at 425.
The Examiner further finds “the nature of the ‘switch’ is not disclosed
in the claim . . . . [because e]ven though[] the Specification and Figures
disclose the ‘switch’ as [a] checkbox, the interpretation . . . [of] the claims is
much broader. Anything can represent a ‘switch’ as recited in the claims.”
Ans. 7.
We agree with the Examiner’s broad but reasonable interpretation that
the recitation of “switch the counterparty switch on to indicate that trades
with the counterparty are permitted or off to indicate that trades . . . are not
permitted” reads on the cited disclosure of Foley, i.e., selecting a
counterparty.
Limitation (2) – Order Satisfies a Total Dollar Amount Threshold
The Examiner finds “Silverman teaches that the at least one order
characteristic is a satisfaction of a total dollar amount threshold; and
automatic execution of order based on order characteristic.” Final Act. 7
(citing Silverman col. 3, ll. 18–38, col. 19, ll. 3–8, col. 20, ll. 26–28). From
this citation, we find Silverman discloses a gross counterparty credit limit.
See, e.g., Foley col. 3, ll. 18–38.
Appellant contends Silverman’s disclosed “credit limit” does not
teach or suggest the recited “total dollar amount threshold.” Appeal Br. 16.
The Examiner responds by finding “the ‘total dollar amount
threshold’ as claimed is simply the ‘warning limits’ as illustrated in [ ] fig. 6
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of the instant application.” Ans. 7. The Examiner offers further explanation
on pages 8 and 9 of the Answer. For example, the Examiner also finds
“[g]iven the broadest reasonable interpretation, Silverman’s gross
counterparty credit limit is equivalent to the total dollar amount threshold as
these limits determines whether or not a trade is executed (and not for
display purposes).” Ans. 9 (citing Silverman col. 3, ll. 18–38, col. 19,
ll. 3–8).
In light of the Examiner’s findings, we are not persuaded by
Appellant’s argument above.
Appellant makes follow-on arguments based upon the assumption that
the reference combination does not teach or suggest either the claimed
“counterparty switch” or the claimed “total dollar amount threshold.” See
Appeal Br. 16. According to Appellant, “[a]s noted above, none of the cited
references teach the counterparty switch. Furthermore, none of the cited
references teach, for example, rendering or not rendering the order based on
a total dollar amount threshold. Finally, none of the references teach, for
example, transmitting a trade with an automatic execution indicator based on
the counterparty switch and the total dollar amount threshold.” Id.
Based on our adopted findings of the Examiner regarding the teaching
or suggestion of a counterparty switch and total dollar amount threshold, as
discussed above, we are not persuaded by Appellant’s additional arguments.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 8, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
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Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 8, and grouped claims 9, 10, 12, 14, and 15, which fall
therewith. See Claim Grouping, supra.
3. § 103 Rejection R3 of Claims 1–4, 6, and 7
Issue 3
Appellant argues (Appeal Br. 17–19) the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of
Foley, Murcko, Silverman, and Togher is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a]n electronic trading system” that includes a first apparatus
and a second apparatus, “wherein the second apparatus is configured to,”
inter alia, (1) “switch the counterparty setting on to indicate that trades with
the counterparty are permitted or off to indicate that trades with the
counterparty are not permitted” and, (2) “in response to receiving the second
indication of the order, determine whether the order satisfies a total dollar
amount threshold,” as recited in claim 1?
Analysis
The Examiner makes similar findings and conclusions with respect to
Rejection R3 of claim 1 to those for Rejection R2 of claim 8, for essentially
identical disputed limitations. Compare Final Act. 8–9 with Final Act. 4–9.
Appellant makes essentially identical arguments concerning claim 1
and for claim 8, with the additional argument that “Togher does not cure the
deficiencies in the other cited references.” Appeal Br. 19.
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Application 12/883,683
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For the same reasons and conclusions set forth with respect to
Rejection R2 of claim 1, we are not persuaded the Examiner erred in
rejecting claim 1 over the combination of Foley, Murcko, Silverman, and
Togher.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, and grouped claims 2–4, 6, and 7, which fall therewith.
See Claim Grouping, supra.
REPLY BRIEF
We note Appellant did not advance any arguments in the Reply Brief.
Reply Br. 1–2.
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 1–4, 6–10, 12, 14, and 15 are patent-ineligible under 35 U.S.C.
§ 101,and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 8–10, 12, 14, and 15 under 35 U.S.C. § 103(a) over the cited
prior art combination of record, and we sustain the rejection.
(3) The Examiner did not err with respect to obviousness Rejection
R3 of claims 1–4, 6, and 7 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
Appeal 2018-004618
Application 12/883,683
37
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis/References Affirmed Reversed
1–4, 6–10,
12, 14, 15
101 Subject Matter
Eligibility
1–4, 6–10,
12, 14, 15

8–10, 12,
14, 15
103 Foley, Murcko,
Silverman
8–10, 12,
14, 15

1–4, 6, 7 103 Foley, Murcko,
Silverman,
Togher
1–4, 6, 7
Overall
Outcome
1–4, 6–10,
12, 14, 15

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED